Canada: Protection Of Trademarks And The .XXX gTLD Launch

ICANN has approved a number of new generic top level domains, e.g., the .com in Bennettjones.com is the top level domain and .com is a generic top level domain (gTLD). By contrast, .ca is a country code top level domain (ccTLD).

Since the same trademark can be registered on each top level domain, trademark owners have expressed concerns over the likelihood of increased cyber squatting and the unnecessary costs of making additional domain name registrations on perhaps unwanted domains.

Among those new top level domains is an .XXX domain which is set to launch in the fall of 2011. This domain raises additional issues for trademark owners. This domain is targeted primarily toward the adult entertainment industry. Those in that industry may wish to secure their brands on this new .XXX gTLD. However, some trademark owners with businesses, products or services outside the adult entertainment industry may not wish to have their brand(s) associated with the .XXX gTLD at all.

In order to accommodate these concerns special procedures have been established for the .XXX gTLD. During the launch, trademark owners can take steps to protect their trademarks from unwanted affiliation with this industry. These steps are contained in a procedure called the Sunrise Period.

The Sunrise Period allows trademark owners outside of the adult entertainment industry to opt out of having their trademark used as part of an .XXX domain address. In order to participate in the Sunrise Period, trademark owners must own an active trademark registration that is national in scope and was issued prior to the registration of an .XXX domain name that contains the trademark. The trademark must be registered in a jurisdiction in which the owner conducts substantial and bona fide commerce in connection with the trademark and the trademark owner may only seek an opt out for the exact text of the mark or the literal component of a design mark.

The 52-day Sunrise Period is scheduled to start on September 7, 2011, and ends on October 28, 2011. There is an application fee to participate, which has yet to be finalized but is projected to be between US$200 to US$400. This is for a one-time application fee to block the domain name for ten years.

If a trademark owner applies to block a domain name from the .XXX registry, the domain name will subsequently be designated a reserved trademark and will be removed from the pool of names available for registration. However, if a competing application has been filed by a third party to register the domain name, the applicant attempting to register the domain name will simply be notified of the ownership of the trademark and will be provided with an opportunity to withdraw the application. The trademark rights' holder will also be notified of the application for the domain name. Registration of the domain name will still proceed but the applicant will not be able to claim lack of notice in any subsequent dispute proceeding.

Please note that should a trademark owner become aware of the registration by a third party of your trademark(s) as an .XXX domain name, or any other top level domain, there are the options of filing a dispute via the well known Uniform Domain Name Dispute Resolution Policy (UDRP) or a new Charter Eligibility Dispute Resolution Policy (CEDRP).

As well, it is reported that the .XXX registry is implementing a suspension policy called Rapid Evaluation Services (RES). This policy allows trademark owners to file a complaint and have it heard within 48 hours. Complaints will comprise a "simple statement of a claim involving a well-known or otherwise inherently distinctive mark and a domain name for which no conceivable good faith basis exists". A response team of UDRP panelists will decide on that basis whether to suspend the domain, although it does not appear that ownership will be transferred as a result.

The RES is intended to provide a prompt remedy to address a limited class of situations involving a clear abuse of well-known, distinctive trademarks of significant commercial value or personal or professional names of individuals. Such determinations will immediately cause the domain name to be suspended and placed in registry-reserved status, but will not prejudice either party's election to pursue another dispute mechanism such as a UDRP or CEDRP complaint. The detailed rules, procedures, and fees for the RES will be published on the Registry Website on or before September 7, 2011.

Trademark owners may consider the above options that are available to protect their trademark(s) from becoming the subject of a third-party domain name registration.

Trademark owners who may wish to pursue the .XXX domain name block opportunity, should note the short deadline and make arrangements for the submission of an appropriate application.

Trademark owners who do not wish to pursue the .XXX domain name block opportunity but may be concerned about the reputational effect of their brand(s) being registered by others on the .XXX gTLD, should consider establishment of watch services for their brands. Such trademark owners could pursue traditional remedies to deal with infringing conduct as may arise.

Of course, trademark owners who have not protected their important brands by registration of the brand as a trademark should consider the additional benefits of pursuing such registrations.

For more information about the .XXX launch, please visit the website at http://www.icmregistry.com/launch.php.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.