With the approval of the .xxx domain extension for sexually explicit websites, brand owners are encouraged to block their trademark names to prevent cybersquatters from trying to profit from their names in cyberspace.
.XXX, which is a top-level domain (TLD) that is designed for the adult entertainment industry, has been approved by non-profit group called the Internet Corporation for Assigned Names and Numbers (Icann), which proponents believe will protect children from online porn.
But for business which have nothing to do with adult entertainment, do you know that you may also be affected by this new TLD? IP Mirror, the only Domain Name Registrar which provides direct registration to .XXX for brand owners, provides this list of questions and answers on what brand owners should do to protect their trademarks and brand names in cyberspace.
Q Who can register a .XXX domain?
Individuals, business, entities, and organizations that provide online, sexually-oriented adult entertainment (“Online Adult Entertainment”) intended for consenting adults or for other community members (“Providers”); Represent Providers (“Representatives”); or Provide products or services to Providers and Representatives (“Service Providers”) are eligible to register .XXX domain names.
Q: Why should I, a Trademark Owner block my names? I am not in the adult industry.
As with any current domain name registry, once the landrush and general availability phases are running, the registry will be run on a first come first served basis and there is no pre-emptive rights protection in place. Although there will be post launch rights protection mechanisms in place, we believe that many rights owners will take a prevention is better than cure approach. Especially the only way of recovery is filing UDRP Dispute Complaint which is both costly and tedious.
Trademark holders will need to apply in Sunrise B starting September 7, 2011 for 52 days. IP Mirror, with immediate effect, is collecting pre-order of Trademark Owners registration for submission on Sunrise launch date of September 7, 2011. The registered trademark shall be a trade or service mark registration of any country or international standard issued prior to 1 September 2011.
Q: What if there are contesting applications?
In the event that there is more than one qualified applicant under Sunrise B, the domain name will be reserved in exactly the same way as if there were only a single applicant and there will be no refund or apportionment of fees among such applicants.
If both Sunrise A (from community members) and Sunrise B applicants want the same domain name, priority will be given to the qualified Sunrise A applicant to register the domain name. The Sunrise A applicant will have received notice of Sunrise B applicant's interest in the domain name and cannot claim lack of notice in any subsequent dispute between Sunrise A and Sunrise B applicants.
Q: When it comes to sunrise, does the trademark need to be an exact match or can it be a substantial match?
An exact match is required with reasonable rules for special character transcription. An icon mark can also be used based on its corresponding complete textual component of a graphical or compound registered trademark.
Q: Under Sunrise, are non ASCII characters allowed for Trademark claims?
No. Only A-Z , 0-9 and hyphens. Some other characters are allowed to be transcribed, IP Mirror can be consulted in the exact interpretation of such trademarks.
The minimum number of characters allowed is 3 and the max is 64 . Single character names will be allocated later by special arrangement.
Q: What happens if I don’t have a registered trademark?
Having a registered mark is the only way to secure an opt-out from .XXX in Sunrise. For members of the sponsored community, having a corresponding domain name will be sufficient to qualify under the Sunrise rules.
Q : How do future brands protect themselves?
As long as the name has not already been registered future brand holders can register "non-resolving" or blocked names during and after General Launch.
Q: For a trademark of ABCD XYZ, do I have to submit 2 applications (meaning one for ABCDXYZ.xxx and another for ABCD-XYZ.xxx) or protect the words ABCD XYZ that corresponds to the name of the trademark?
Yes, both domain names should be registered.