At the end of March of this year, ICANN designated ICM Registy LLC, a Delaware registered corporation, as the sole registry operator for a new top level domain name (TLD) .xxx and granted them authority to develop policies for .xxx for the adult entertainment industry, in line with the terms of their agreement with ICM.
Individuals and companies obtaining registration of and then using domain names, which are components of trademarks owned by third parties has been the source of much litigation in the last few years. Very often, trade mark owners do not register the registrable components of their trademarks as domain names. This then sets off the conflict.
Trademark owners should be especially alive to the risks to their brand through it being associated with a .xxx domain name.
The pre-registration process by ICM is currently underway and will be open until the 28th October 2011. There are two ‘sunrise’ periods for pre-registrations, Sunrise A which is for owners of registered trademarks in the adult industry (which does not concern us for the purposes of this article) and Sunrise B for owners of other (non-adult) registered trademarks. Applications under the ‘Sunrise B’ procedure can reserve a domain name related to their brand thereby preventing it being registered and used inappropriately for adult related material. Under the terms of the “Launch Plan/Policy” reservation applications are subject to a one off fee for a permanent reservation subject to certain conditions.
In addition the Government of any country may identify names that match words of cultural/religious significance for review by ICM for inclusion in a list of culturally significant names. Inclusion on this Culturally Significant Names List will result in the name not being available for registration with the TLD .xxx.
Whilst the existing domain name dispute resolution process will continue to apply, preventative action now by trademark owners will avoid potentially lengthy and costly battles in the future.
Recent media reports of celebrities moving to protect their names (presumably on the basis of registered trademarks) highlights the potentially damaging effects of not acting now. In the event that a person does not have trademark protection, there is a general availability period commencing 6th December 2011 for applications that do not qualify under the Sunrise A or Sunrise B pre-registration procedures. This period however may be characterised by ‘gold rush’ type applications which created many cybersquatting issues in relation to previous TLDs such as .com etc.
The best advice for trademark owners would be act now rather than delay, the purpose of registering trademarks and holding intellectual property is to protect the owners investment in its brand.
For more information visit:
http://www.mckr.ie/news.html
FROM IIA MEMBER COMPANY MCKEEVER ROWAN
Click here to Read More of their articles or visit their website.