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How to protect your brand from XXX cybersquatters

​A new top level domain, .xxx, will soon be launched.  Trade mark owners have until 28 October 2011 to take steps to prevent their trademarks from being used in the .xxx domain space.

Background

In March 2011, following successful lobbying from the adult entertainment industry, Internet Corporation for Assigned Names and Numbers (ICANN), agreed to allow the creation of a new top level domain, specifically for the adult entertainment industry.  The domains in this new top level domain space will end with .xxx.  This has implications for every business - your business names and trademarks could be used, or incorporated into websites that will advertise, sell and host adult content.

Top level domains and your website

A domain name is the combination of letters, words and numbers that identify a particular website.  A top level domain, being the last 2 or 3 letters of any website (i.e. .com, .net, or .au) is the highest level in this hierarchical naming system, upon which the internet is based.  Originally, top level domains were relatively limited and generic, such as .com, .net and .gov.  

However, as the internet has become more widely used, these existing top level domains were inadequate to meet the level of demand for new and unique websites.  So, just like adding additional digits to the start of all telephone numbers, ICANN responded by allowing the creation of additional top level domains, including country designations  (like .au or .de), and sponsored top level domains (such as .aero, .mobi and .travel, and now .xxx).  These sponsored top level domains are allocated and managed by a specified body for that particular industry.  For .xxx, the specified body is ICM Registry.  (ICM is expected to make over $200 million a year, with 3 to 5 million domain registrations, as companies are anticipated to defensively register their domains.)

While your business may own and operate your website from the domain, www.yourbusinessname.com, as each domain name is a unique entity, you also need to purchase other domains using your business name or trademarks  if you wish to prevent misleading or fraudulent websites, or websites damaging to your brand.  This is why most companies purchase www.yourbusinessname.net, or www.yourbusinessname.com.au as a matter of course, even if they have no intention of using them.

However, now there will be the ability for any individual or company, including those advertising and selling adult only products and content, to create a website at http://www.yourbusinessname.xxx.  As well as legal issues, there is the possibility that your customers either accidentally visit to this domain, or are re-directed there by malware.  Perhaps most importantly,  there is also the damage that can be done to your brand by having it associated with any aspect of the adult entertainment industry.  

Process for registering .xxx domains

There is a 4 stage process relating to the creation of new .xxx domain names, designed to protect brand owners.  The first two phases, Sunrise A, and Sunrise B, operate concurrently, commencing on 7 September 2011, and closing on 28 October 2011.  

Sunrise A allows certain members of the adult entertainment industry to seek to register .xxx domains before the rest of the industry. 

Under Sunrise B, registered trademark owners are able to lodge applications to prevent their registered trademarks from ever being registered in the .xxx domain.  To qualify for a Sunrise B application, your company must own the trademarks in question (which must have been registered before 1 September 2011), and you must not be a member of the adult entertainment industry.  There is a fee of about $400 per trademark for Sunrise B blocking applications.

Following the completion of Phase A and B, there will be another phase for Sponsored Community members to bid on remaining .xxx websites, before the final phase of general availability.

Brand owners must decide before 28 October 2011 whether to apply for a block as part of Sunrise B or wait until next year and then try to register the domain.

 

Who does this affect?​

Trademark owners.

What do you need to do?​

Decide, in the next 6 weeks, whether to file a blocking application for each of your trademarks to prevent others registering .xxx domain names that incorporate your trademark.

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