In September 2011, registered trade mark owners wishing to avoid an association with the adult entertainment industry online will have a limited opportunity to pre-emptively protect their valuable brands.
In March 2011 the Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for helping preserve the operational stability of the Internet, approved the establishment of the .XXX Top Level Domain (the .XXX TLD).
The introduction of the .XXX TLD is intended to grant individuals, businesses and companies involved in the adult entertainment industry a defined piece of Internet real estate – an online ‘red light district’. There is however no guarantee that adult entertainment websites presently accessible through other domains will migrate to the .XXX TLD.
The .XXX TLD will be launched in 3 stages: a sunrise period of up to 30 days commencing September 2011 with an A and B stream, followed by ‘land rush’ and ‘general availability’ stages.
While ‘Sunrise A’ will be relevant for members of the adult entertainment industry, ‘Sunrise B’ will be of most interest to brand owners that do not consider themselves associated with, and do not wish to be associated with the adult entertainment industry.
Sunrise B applicants will need to be owners of a trade mark registration in a jurisdiction where they are engaged in commerce under the registered trade mark. Trade mark licensees will also be able to apply to “opt-out”, provided written authority has been obtained from the registered trade mark owner. For a one-off fee expected to range between US$200 to US$300, brand owners (or authorised licensees) from outside the adult entertainment industry will be afforded an opportunity to “opt-out” and block the use of their BRAND.XXX as a web address by removing their brand from the pool of names available for registration.
Once the sunrise stage comes to an end and the ‘landrush’ and ‘general availability’ stages are initiated, the registry will run on a ‘first come first served basis’. This means that although brand owners will be able to avail themselves of protection mechanisms such as a rapid takedown service (for bad faith registrations), the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) and the Charter Eligibility Dispute Resolution Policy (CEDRP), if no action is taken during the sunrise period, the opportunity to take pre-emptive action to protect their brands will have missed.
Take Away
Registered trade mark owners not in the adult entertainment industry wishing to protect their brands should seek to take advantage of the limited opportunity to “opt-out”.
Should you have any queries regarding the introduction of the .XXX TLD or about how this is likely to affect your business please contact DibbsBarker’s IPT team.
T +61 2 8233 9554
F +61 2 8233 9555
Stuart Green | Associate
T +61 2 8233 9586
F +61 2 8233 9555
E stuart.green@dibbsbarker.com
