This year, the first domain names ending .xxx will be made available for "adult" websites. A "sunrise" period, planned to start in early September and to last around 30 days, will allow applicants in the adult industry to secure domain names based on their existing domain names or trade marks. Brand owners outside the adult industry will not qualify for .xxx domain names but they will have the opportunity in the sunrise period to apply to block registration of .xxx domain names consisting of their registered trade marks.

The procedure

The details of the sunrise period are still sketchy. The most up-to-date information is found on the website http://www.xxxempt.com (a website owned by the .xxx registry, ICM Registry LLC, but apparently not yet being publicised). This suggests:

  • the owner, licensee or assignee of a subsisting registered trade mark can block the registration of a .xxx domain name corresponding to the entire text of a word mark or to the complete textual component of a device mark;
  • the cost will be set by individual registrars and is expected to be a one-off fee of US$200 to US$300; and
  • blocked domain names will point to a standard page indicating that the domain name is not available for registration (and, therefore, a brand owner will not be able to redirect web users to its main website).

During the sunrise period, if a member of the adult industry applies to register the same .xxx domain name on the basis of its own rights (perhaps on the basis of a word mark in a different country or an existing domain name) then it may register the domain name but will do so on notice of the rights of the brand owner which wished to block the registration. This notice may assist the brand owner if it later tries to object to the registration as abusive.

It appears that brand owners should liaise with a domain name registrar to handle the sunrise period for them. For now, brand owners may pre-register their trade marks at http://domains.icmregistry.com. However, it is unclear whether this has any effect apart from triggering a notification about the need to take part in the sunrise procedure.

Reputational risks of inaction

The .xxx domain has already proved controversial. ICANN (the organization ultimately responsible for top-level domain names such as .com, .org and .xxx) took more than ten years to give .xxx the go ahead and in 2010 an ICANN forum received more than13,000 comments from the public. ICANN is clearly concerned by potential damage to brand owners. For example, its agreement with ICM Registry LLC requires the unusual measure of a rapid takedown mechanism for clear cases of abusive registrations. Brand owners may well feel that abusive .xxx registrations present special reputational risks and any blocking measures are welcome.

Although useful, the blocking procedure has its limits. First, brand owners frequently find their brand names included in .com and other domain names registered by third parties. This is usually either to extort money by pure cyber squatting or to draw the brand owner's customers to sites offering genuine or counterfeit branded goods or services.

Since .xxx domain names will only be available to certified members of the adult industry, these forms of abusive registration may be less likely. Second, the block will only (it seems from the current guidance) prevent the registration of a domain name exactly the same as the text of a registered trade mark. This will not prevent .xxx domain names which also contain other words. Third, although the fee for the block is supposed to be a "one off", ICM has only undertaken to maintain the block "as long as they reasonably can at this stage i.e. for the length of its current ICANN contract (10 years)."

The current proposals suggest that blocks will be available after the sunrise period but that these are "unlikely to be as cost effective as the options offered during sunrise". Such less "cost effective" (i.e. higher) costs may fairly represent the registry's increased administrative costs once it has dismantled the resources established for the sunrise period. However, they may also act as a means for the registry to secure front-end revenue when the level of abusive registrations is not yet known.

However, brand owners who have faced abusive registrations in the past may well feel that $200-300 compares favourably with the costs of repairing any reputational damage done or the costs a full-blown domain name dispute.

The future

There are plans, after the sunrise period, to allow domain name disputes on the basis of unregistered trade marks and personal names. There are also proposals to introduce a rapid takedown procedure for alleged abusive registrations involving well-known or inherently distinctive marks and a domain name for which no conceivable good faith basis exists. So far, only general indications of these procedures have been provided. The ICM Registry has appointed a UK company, IPRota, to assist with the sunrise period. So far IPRota only appears to offer a PO box and an answering machine.

We will provide another update when firm procedures have been put in place.