The ‘sunrise period’ during which trade mark owners can file blocking registrations for corresponding domains under the adult entertainment industry’s new .xxx top level extension is due to close on 28 October 2011.  Here is what you need to know...

As online markets become increasingly valuable, domain names are often how consumers know and research a business or brand. An easily recognisable and memorable domain can be a huge asset to any business. Conversely, the detrimental use of a domain that is similar or identical to a key brand can have very damaging effects. The launch of the new top level domain, .xxx, presents a real risk of such damage by allowing brands to be associated with adult content that may be inconsistent with their image and values.

The Internet Corporation for Assigned Names and Numbers (ICANN) has approved the creation of the .xxx domain for pornographic or adult entertainment sites on the internet. In an attempt to prevent the registration of well known brands, ICANN has specifically created the Sunrise B period for those outside of the pornography industry who do not wish to register any names in the .xxx extension, but would like to block and protect their trade marks from being registered by others as .xxx domains.Any entity wanting to create a blocking registration must hold a relevant trade mark that has been registered (in any country) prior to the start date of the Sunrise B period (ie before 7 September 2011). The domain being blocked must correspond to the entire text of a word mark or to the complete textual component of a device mark. A one-off application fee is also required, but the usual annual maintenance costs for normal registrations will not apply.

Failure to register a brand in the Sunrise B period will mean that anyone can register the brand as a .xxx domain. Once another party has registered the domain, dispute resolution proceedings will need to be brought to stop the registered owner from using the domain. These proceedings can become expensive, and offer no guarantee of success.

Therefore, it is highly recommended that businesses consider registering certain key brands before the Sunrise B period ends on 28 October 2011.