A Red Light warning to Middle East brand owners

Sensitivities of Middle East brand owners reflected in launch of .xxx domain

The launch of a new .xxx top level domain in September 2011 presents a potential nightmare scenario for many brand owners in the Middle East. In a traditionally conservative region with values based on the Islamic faith, many brand owners will be extremely concerned by any potential association between their brands and the "adult entertainment" industry.

With reports of over 150,000 pre-registration requests being made for .xxx domain names (even before the launch of the domain was announced) the scope for brands to be misappropriated and used inappropriately is clear. Thankfully, for brand owners sensitive to having their reputation tarnished in this way, the launch of the .xxx domain will include a mechanism for trade mark owners to obtain blocking registrations which prevent the use of their registered trade marks as part of a .xxx domain name.

As with other recent launches of domain names, such as .asia and .eu, the .xxx domain will be launched through a Sunrise Period. However, the Sunrise Period is more complex for this domain and so careful planning will be required by concerned brand owners.

The Sunrise Period

For much of the last decade, there have been extensive discussions between ICANN and interested parties as to whether a dedicated top level domain name should be created for adult entertainment websites. It has recently been agreed that a new domain ".xxx" will be launched in September 2011.

The Sunrise Period for .xxx will be split into two phases:

  • Phase 1: entities in the adult entertainment field may apply for their domain name(s) under the .xxx domain if they own:
  1. a corresponding domain name which was registered prior to 1 February 2010 in another domain (such as .com); or,
  2. a corresponding trade mark for the domain name in question.
  • Phase 2: trade mark owners who wish to prevent others from using their registered trade marks under the .xxx domain can apply for blocking registrations in this phase. At the time of writing, it is not known whether the trade mark must be registered prior to a specified date in order to support a blocking application.

If a blocking application is granted under the process which applies in Phase 2 of the Sunrise Period, then a single-page website will automatically be set-up which states that the domain name in question is unavailable. This is preferable to having the domain name linked to the trade mark owner's site, when the very reason the trade mark owner is blocking the registration is to avoid any adverse connotations by association with the adult entertainment industry.

What if two Sunrise filings are sought for the same domain name?

It is possible that an adult entertainment business applies for a .xxx domain name in Phase 1 of the Sunrise Period and a trade mark owner applies to block the domain name in Phase 2 of the Sunrise Period. In these circumstances, both parties will be notified of the situation and the applicant from the adult entertainment industry will have the opportunity to withdraw its application. If it does not, it will not be able to claim lack of notification in any subsequent dispute proceedings.

For trade mark owners in Phase 2 of the Sunrise Period, their registered rights will only be able to block applications for domain names for the identical word(s). It will not be possible to use a trade mark registration in Phase 2 to block a typographical variation. The rights holder will have to bring an action under the dispute resolution procedure for .xxx domain names in order to stop such a registration.

After Phases 1 and 2 of the Sunrise Period are completed, the domain will be open for anyone to seek to register a .xxx domain. It is envisaged that trade mark owners will be able to make use of a different form of blocking procedure after the Sunrise Period ends. It is likely that it will be necessary to pay an annual fee to maintain such blocking registrations, but this is to be confirmed. However, full details of this procedure have not yet been released.

Next steps

The expected launch of the .xxx domain is three months away and yet there are still a lot of unknowns surrounding the new domain. It is important for trade mark owners to monitor the impending developments and announcements in the .xxx domain, so that they are able to act swiftly in order to protect their rights.

It is advisable for trade mark owners to secure blocking registrations during Phase 2 of the Sunrise Period. This proactive step is likely to be more cost effective and administratively easier than having to take remedial action against a conflicting or abusive .xxx domain name that has been registered by a third party.

Trade mark owners should also put in place processes and procedures to monitor for potentially conflicting or abusive domain names Both during or after the Sunrise Period. This is particularly important for trade marks that do not meet any qualification requirements for blocking registrations in Phase 2 of the Sunrise Period.