Posted September 9, 2011
Internet Corporation for Assigned Names and Numbers (ICANN) has instituted a new generic top-level domain (gTLD) program that will create a means for prospective registry operators to apply for new gTLDs, and create new options for consumers in the market. Every domain name around the world ends with a top-level domain (TLD); these are the two or more letters that come after the dot following a web address. There are currently two types of TLDs: generic top-level domain (gTLDs) such as .com, .mobi, and .info, and country code top-level domains (ccTLDs) such as .uk, .br, and .cn. One of ICANN’s key commitments is to promote competition in the domain name market while ensuring Internet security and stability. New gTLDs help achieve that commitment by providing more information about the sites visited. For example, ICANN has recently approved “.XXX” as a new gTLD for the adult entertainment industry (next year entrepreneurs, businesses, governments and communities around the world will be able to apply to operate a TLD of their own choosing), which will immediately communicate that the site caters to the adult entertainment industry.
While this process is intended to provide greater security, it also opens the doors for brand abuse. To help thwart misuse, ICM Registry, the company that will act as a registry for all domains ending in .XXX, has developed a comprehensive rights protection mechanism (RPM) for the launch period of these new gTLD’s. To protect non-adult entertainment industry rights holders from trademark infringement, ICM is also providing an opportunity for these rights owners to block their mark from registration. The opt-out effectively blocks names at the .XXX registry and means they cannot be used as conventional web addresses. This feature, provided by ICM for a onetime fee, will only be available to trademark holders during the sunrise period, which began earlier this week on September 7th.
There will be two initial sunrise periods (A and B) for the launch of .XXX, allowing trademark holders and adult entertainment webmasters to secure their .XXX domains. This includes companies that own trademarks outside of the adult entertainment industry that wish to defensively register domains the same way that they register “sucks” sites. Both sunrise periods will run concurrently followed by a landrush period and finally a general availability period:
Sunrise A Sunrise A is dedicated to members of the adult entertainment community with either verifiable trademark rights or owners of exact matching domains in other Internet Assigned Numbers Authority (IANA) TLDs which is also known as “Grandfathering.” This period is open from September 7, 2011 to October 28, 2011.
Sunrise B Sunrise B was created especially for Intellectual Property holders who are non-members of the adult entertainment community with verifiable trademark rights so that they can block their domains in the .XXX sTLD. This period is open from September 7, 2011 to October 28, 2011.
Landrush Landrush is for members of the adult Sponsored Community but NOT on a first come, first served basis. Unlike Sunrise A and Sunrise B, there are no qualification requirements needed for Landrush. Applications for competing names will go to a closed-auction at the end of the Landrush period. This period is open from November 7, 2011 to November 25, 2011.
General Availability General Availability is when members of the adult entertainment community get regular, resolving names on a first come, first served basis. Non-members of the adult Sponsored Community can also get “Non-Resolving” names. The period opens December 6, 2011 and is ongoing.
Please note that to be successful, applications made during the sunrise periods must provide basic trademark particulars such as the mark, registration number and date, designated class(es), the country or region, and the status of the entity submitting the request. Applications are $200-$300 per registered mark, assessed as a one-time fee and will run for the length of ICM’s contract with ICANN (at least 10 years). If you miss the Sunrise Period or want to block others from using a .XXX domain corresponding to an unregistered trademark, you can defensively register .XXX domains once the general availability period opens in December 2011. However, keep in mind that the annual registration fees for .XXX domains are expected to be significantly higher than the annual fees for domains in existing TLDs like .com, .net, etc.
The .XXX registration process requires all registrants to agree to participate in and abide by specific dispute resolution procedures that will provide mechanisms for brand owners to challenge .XXX domains that infringe trademarks. ICM is contracting with the National Arbitration Forum to provide the RES and CEDRP dispute resolution services. ICM estimates that the cost for each service will be US$750 to US$1,500. During these disputes, the domain will be locked against transfers. Decisions will not be published. Statistical information about the process itself will be made available. In the event of a conflict between a trademark rights holder and a member of the adult entertainment industry, the domain will be awarded to the adult entertainment industry member and the Sunrise B applicant will be notified.
Although ICM services have been approved by ICANN, there are legal issues that have not been tested. Participating in this process could limit your legal remedies because of your agreement to participate in and abide by the dispute resolution procedures outlined. Additionally, porn and mainstream businesses alike complain they are being forced to buy domain names they don’t want, don’t need and won’t use. A few companies are refusing to pay, but also demanding that ICM block their domains free of charge. ICM responded to the legal threats with a seven-page report in July, claiming that a registry cannot be sued for trademark infringement. The letters, though, have placed ICM on notice, which increases the potential for liability if ICM sells the trademarked names.
As this exchange indicates, registering domains with ICM is one option but may not be the only option available to companies seeking to protect their trademarks. Cyveillance encourages companies to take a hard look at their brand protection strategy to determine if defensively registering for .XXX gTLDs is the only and best option for their brand protection. The ongoing battle for domain name registration and brand protection is always going to be waged; the key to minimizing losses is tied to a company’s assessment of their true threats and their proactive approach to minimizing those threats.