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Client Update: Warning! Your brand may be associated with adult content!

18 May 2011

In brief: .xxx domain names will be available for registration in early September. While .xxx domain names are intended for adult content, trade mark holders in other industries will be able to take advantage of a 'sunrise period' to defensively register their trade marks so as to remove the risk of brand-jacking and cyber-squatting. Partner Andrew Wiseman (view CV), Senior Associate Jesse Gleeson and Law Graduate Andrew Wilcock look at what is involved.

Approval of the .xxx domain name space

The Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for managing top-level domain name spaces (eg .com, .gov and .org) has recently approved .xxx as a top-level domain name space. ICANN intends that .xxx be used by the online adult entertainment industry.

The approval of .xxx gives rise to the possibility that brand-jackers or opportunistic cyber-squatters will register YourBrand.xxx domain names to trade off established brands or extract payments from companies. Alive to these possibilities, ICM Registry, the group responsible for the launch, will operate a unique launch process allowing trade mark owners to defensively register YourBrand.xxx domain names.

Participation in this launch process will allow trade mark holders to effectively and efficiently remove the risk of brand-jacking and cyber-squatting and avoid potential future domain name disputes.

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What are the consequences of defensively registering a .xxx domain name?

Defensive registration of a domain name will not result in the registration of a conventional domain name that resolves to a website nominated by the registrant. Rather, it will result in the reservation and blocking from live use of that domain name. So, for example, if 'widgets' were defensively registered, an Internet user searching for 'widgets.xxx' would not reach a website stating that 'The domain you have requested is currently not in use', nor would they be redirected to widgets.com. Rather, they would reach a generic page indicating that 'widgets.xxx' was reserved from use.

ICM Registry is contractually bound to reserve and block defensively registered domain names for 10 years.

A defensively-registered domain name will not be able to be unblocked and converted into a conventional domain name without being made generally available for registration. So, for example, if the owner of widgets.xxx later decided that it wanted an Internet user searching for 'widgets.xxx' to be redirected to 'widgets.com', it would have to deregister 'widgets.xxx', reapply for it and risk a third party registering that domain name first.

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How and when can I defensively register a .xxx domain name?

The registration process will commence in early September of this year. Trade mark holders will be able to defensively register domain names during the 'Sunrise B' period, before .xxx domain names become generally available. Sunrise B will last for 30 days.

To register under Sunrise B, a person must own and actively use a trade mark with 'national effect' in any jurisdiction. That trade mark must have been registered prior to the submission of any 'Sunrise B' application. A person will be entitled to defensively register only domain names that correspond exactly with word marks or textual portions of a composite marks.

If a person submits a 'Sunrise B' application and the registrar receives no other applications for the requested domain name, that domain name will be reserved and blocked. If two or more people submit 'Sunrise B' applications for the same domain name, that domain name will again be reserved and blocked. However, if a person submits a 'Sunrise B' application and a domain name holder or trade mark owner from within the adult entertainment industry submits a 'Sunrise A' application, the 'Sunrise A' applicant will be informed of the 'Sunrise B' application but will secure the domain name. The provision of notice may be relevant to a future domain name dispute.

Registration will take place through accredited .xxx registrars.

ICM Registry predicts that defensive registration will incur a one-time fee of US$200-300; however, some domain name resellers have announced that they will charge up to US$650.

If you would like any advice, assistance or updates on defensive registration of .xxx domain names, please do not hesitate to contact any of the people listed below.

For further information, please contact:

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