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Protecting Trademarks from the .xxx Domain

By Elizabeth T Russell • Sep 26th, 2011 • Category: Business Law, Intellectual Property Law, Newest Post
Synopsis
The owners of trademark registrations issued before September 1, 2011 have a short window of time within which to block others from registering their trademarks as .xxx domains.
Background
ICANN (the Internet Corporation for Assigned Names and Numbers) is the nonprofit organization charged with coordinating the internet’s naming system. As the internet evolves, ICANN frequently reviews and adds to the universe of internet identifiers, or “domains.”
Earlier this year, ICANN resolved to introduce a new sTLD (sponsored top level domain) to identify websites in the adult entertainment industry. These new “.xxx” domains will be available globally to registrants in the “Sponsored Community” who provide services in the adult entertainment industry and who agree to adhere to specified online safety and self-regulation practices. The recommended practices are being developed by the International Foundation for Online Responsibility.

ICANN has designated ICM Registry, LLC (“ICM”) as the sole Registry Operator for the .xxx domain. As the Registry Operator, ICM is responsible for establishing and implementing .xxx policies and procedures, and for providing ICANN accredited registrars with the ability to offer this domain to their customers. A list of registrars presently authorized to offer the .xxx domain appears on ICM’s website.


Trademark Registrants Have a Window of Opportunity

Trademark owners who are not members of the .xxx Sponsored Community may apply to opt out of .xxx, thereby preventing others from registering their trademark as a .xxx domain.  The period of time during which this is possible is known as the “Sunrise B” phase of the domain’s overall launch. Sunrise B commenced on September 7, 2011 and runs for 52 days.

Information for Trademark Owners

Q: What should an eligible trademark owner do, to take advantage of Sunrise B?
A: Choose an authorized registrar and follow that registrar’s instructions for obtaining a “Sunrise B” defensive registration.
Q: Are all trademark owners eligible?
A: No. The following restrictions apply:
  • The trademark owner must hold a trade or service mark registration of national effect that issued before September 1, 2011.
  • US Supplemental Register registrations are not eligible.
  • The holders of common law trademark rights are not eligible.
  • Sunrise B eligibility requirements appear in full, here


Q: Can the trademark owner block any domain during Sunrise B?
A: No. The domain sought must correspond exactly to the complete textual component of the registered trademark. For example, if the registration is ABC, the trademark owner may only register ABC.xxx
Q: What if a trademark owner is not eligible, or wishes to register a domain other than the exact trademark, or simply fails to take action during the Sunrise B period?
A: Under any of those circumstances, the trademark owner will need to wait until .xxx becomes available to the general public on December 6, 2011. The trademark owner should then register the desired terms as “nonresolving” .xxx domains.

Q: What if someone else registers the trademark as a .xxx domain before the trademark owner has an opportunity to do so?

A: The trademark owner would have to pursue available remedies using existing methods of domain dispute resolution, i.e., litigation and/or ICANN’s Uniform Domain Dispute Resolution Policy (UDRP).

Copyright 2011 Elizabeth T Russell. Blog content is not legal advice.
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Elizabeth T Russell is is a solo practitioner. Russell Law helps businesses protect their most important assets by focusing on intellectual property issues, specifically copyright, trademark and digital business. Elizabeth also enjoys a vibrant arts and entertainment law practice. You can contact Elizabeth at: Phone: (608) 285-5007 E-mail: [email protected] Website: www.erklaw.com Address: 49 Kessel Court, Suite 200, Madison WI 53711
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