Owners of registered trade marks have just three months to take advantage of special provisions to allow them to stop pornographic websites using their marks in conjunction with new .xxx domains. .xxx (known as “dot triple-X”) is a Top Level Domain (TLD) intended as a voluntary option for pornographic sites on the Internet. They will be available for general release from 1 December 2011 and allocated on a first come first served basis. However for trade mark owners there is a ‘sunrise period’ commencing 1 September 2011 during which they may apply for registration.
Although a company may have no commercial need for a .xxx domain it would probably not want its brand to have a .xxx domain name under the control of a third party. The best defensive position for trademark owners outside the adult industry is to block their key terms in the .xxx sunrise period. To be eligible for this option applicants need to have a matching trade mark registration. The operators of the .xxx TLD have developed a package for IP owners, where the identity of the domain name holder will be hidden and anyone clicking on the .xxx domain name will find a white label site without any connection to you with a standard message to the effect of: “This name has been reserved from registration under the registry IP protection program.”
The launch date for the special rights period is Sept 1 2011, and the general availability phase will be 90 days later. A blocking registration will last for ten years and there are no annual renewal costs.
The operators of the .xxx TLD has over one million advance registrations from members of the adult entertainment industry. Brand owners who have not blocked their key terms could find themselves in a very embarrassing position. Although there will be post launch rights protection mechanisms in place, a “prevention is better than cure” approach is always advisable.
As European Trade Mark attorneys based in the UK, Brookes Batchellor specializes in helping clients protect their brands and trading names from misuse – and these days misuse on the internet can be both damaging and more difficult to control. If you would like further information on this or any other aspect of brand protection, contact Clare Turnbull or Jane Martin as soon as possible.