Deadline Approaching to Block Use of Trademarks by .XXX websites

October 2011 | Eve C. Munro

Organizations that do not wish their name to be associated with a .XXX domain name should consider steps that can be taken to prevent this. In particular, a time-limited opportunity is available to enable organizations to block the use of registered trade-marks by websites with a .XXX domain name.

The .XXX domain is a top-level domain designed specifically for the adult entertainment industry.  Registrations of .XXX domain names will be commencing shortly. This raises the possibility that an organization’s name and trade-marks will be used in connection with .XXX websites. For many charities and non-profit organizations, the prospect of having one’s name or marks associated with an adult website would be detrimental to the organization’s brand. Where an organization has a registered trade-mark, however, there are several options available to prevent the use of the trade-mark by a .XXX website.

Generally, the only way for a trade-mark owner to prevent their trade-mark from appearing on a top level domain is to register those domain names themselves. If they do not and they object to the usage made of their trade-mark in a domain name, a domain name dispute resolution process is available.

With the implementation of the .XXX domain, another option is being made available. Holders of registered trade-marks outside the adult entertainment industry who do not wish to register .XXX names, but who want to block and protect their trade-marks from being registered by others in this domain may pursue a process which is called “Sunrise B”. Under the Sunrise B procedure a trade-mark owner does not apply for a .XXX registration for itself. It is simply applying to block others from using the trade-mark in the .XXX domain through a reservation process. The deadline to apply for this protection is October 28, 2011.

There are a number of requirements for this process:

  1. As noted, the Sunrise B procedure is a pre-launch protection mechanism for trade-mark owners and therefore has a limited period. This period ends on October 28, 2011.
  2. Only registered owners, licensees or assignees of trade-marks will be eligible as Sunrise B applicants.  Trade-mark owners will need to supply the following information when submitting their Sunrise B online pre-registration application:
    1. registered trade-mark and number
    2. registration country
    3. application date
    4. application and registration dates
    5. applicant capacity (applicant, licensee or assignee)
    6. registration class
  3. The Sunrise B application is made through a domain name registrar and the cost varies per registrar.  A list of accredited registrars is available here. There will be a register of blocked or “reserved” domain names for which publicly available registry information will state the registry and not any particular Sunrise B applicant.

There is also a Sunrise period for trade-mark and domain name owners that wish to apply for .XXX domain names.  That period also expires on October 28, 2011. The “Sunrise A” procedure is aimed at applicants from the adult entertainment community (the “Sponsored Community”). If both a Sunrise A and Sunrise B applicant apply for the same domain name, priority will be given to the Sunrise A applicant to register the domain name with no refund of fees paid.

Following the Sunrise periods there will be a “Landrush” period which will permit members of the Sponsored Community to compete for names by way of a closed auction. General availability commences on December 6, 2011 with the remaining .XXX domain names allocated on a first come, first served basis. For those who are non-members of the Sponsored Community, accredited registrars will accept applications for non-resolving .XXX domain names. This will permit protection of rights in names and words that do not have qualifying rights under Sunrise A or Sunrise B.

Organizations that wish to avail themselves of Sunrise B protection should move quickly in light of the impending deadline. Miller Thomson’s lawyers can assist organizations in applying for this protection.

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