Canada: Sunrise Period To ".XXX Empt"

Today marks the beginning of the "Sunrise" period to opt out of the new .xxx domain name. ICANN, the not-for-profit corporation that manages the domain name system, has accepted .xxx as a new sponsored generic Top-Level Domain name (gTLD) to be operated by ICM Registry. The new gTLD was approved last March, and a few .xxx addresses have already gone live on the Internet to garner interest for the Sunrise period when interested parties can register through a "Sunrise A" process.

For businesses that don't operate "adult" websites, there is a "Sunrise B" process, during which they can apply to prevent their trade-marks from being incorporated into .xxx domain names. The cost of doing so is not, however, inexpensive and trade-mark owners will have to carefully consider the extent to which they want to pay to have their trade-marks protected.

The 52-day Sunrise period commences today, September 7th, 2011, and finishes October 28th, 2011.

Why should I consider participating?

For a one-off fee of between $300 and $350 USD, the Sunrise B process allows a trade-mark owner to prevent its trade-mark from being registered as a .xxx domain name. This opportunity will only be available during the Sunrise period. This pre-emptive option is advertised as being less difficult, expensive and time consuming than it would be dealing with an IP conflict after the general launch. When a Sunrise B applicant is successful, the domain name will no longer be available for registration in the future, and it will "resolve" (redirect traffic) to a plain page which will indicate that the domain is reserved from use through ICM's rights protection program. This "resolving" of the domain name is intended to prevent "synthetic DNS" or non-DNS resolution systems from hi-jacking queries to these domain names.

The Sunrise B applicant will not have registered the domain name in its name or have obtained any additional rights. Standard registry contact details will be contained within the domain WHOIS record, and ICM will be stated as the owner.

Who is eligible?

Anyone who has a registered trade-mark may apply during Sunrise B to opt out – applications will not Count

The entire text of a registered trade-mark must be in the exempted domain name. In the case of a trade-mark registration that has a design component, the complete textual component must be applied for in the exemption and will be protected, provided such a component qualifies for protection by the rights conferred by registration of the mark.

How much will it cost?

Although ICM is responsible for administering the .xxx domain name registry, the registration and exemption process will be handled by a select number of ICANN accredited registrars. The individual registrars will set their own one-off fee to exempt. Webnames.ca is a Canadian registrar that appears on ICM's approved list.

The costs are expected to be in the $300-350 USD range, with no annual fees. For example, Webnames.ca offers a one-time nonrefundable fee of $349 USD.

Of concern, each variation of a registered trade-mark must be submitted and paid for as a separate request. When there is more than one Sunrise B applicant with a qualified claim to a domain name, ICM will exempt the domain name but will not refund or apportion fees among the applicants.

What remedies are there if there is a conflict or if I don't participate?

Sunrise A applicants, members of the adult entertainment community, will be given priority to register domain names over the requests of Sunrise B applicants. .xxx domain name owners will also be notified of a Sunrise B applicant's interest in the domain name and be given the opportunity to withdraw. Consequently, they will not be able to claim lack of notice of a trade-mark owner's rights in a subsequent dispute.

If a Sunrise A applicant takes priority or if an IP owner chooses not to participate in the opt out, there are still several different methods to resolve disputes or prevent abusive use of a domain name. All registrants of domains must adhere to ICANN's Uniform Domain Name Dispute Resolution Policy ("UDRP"), and the option for litigation remains as well. Also, the Charter Eligibility Dispute Resolution Procedure will be available to challenge any registration by an entity that is not a member of the sponsored community and therefore not qualified to register a resolving name in the .xxx gTLD.

In addition, ICM will implement a Rapid Evaluation Service (RES), where independent experts will make determinations, in certain cases within 48 hours, for claims involving well-known or inherently distinctive marks. A complaint under RES would be submitted directly to a National Arbitration Forum provider, which would select a qualified and eligible evaluator, as well as set forth rules, a fees schedule and other technical and process requirements for the dispute, subject to the approval of ICM. If a complainant is successful under RES, the registration will be cancelled and the name servers re-assigned to the Registry and re-directed to a webpage signifying such de-activation. The RES, however, is not preclusive of other available administrative or judicial remedies.

Is it worth it?

The Sunrise B process provides a mechanism favourable to ICM, which profits from the one-off fees. The process may become quite costly to companies with large trade-mark portfolios. Also, the high annual fees for .xxx domains combined with the RES may make the risk of cybersquatting lower than with other gTLDs. However, in the event a conflict does occur, the option is still less expensive than other avenues such as a UDRP or litigation, the former which can cost over a thousand dollars for a single domain name, and the latter which can cost much more than that. IP owners should carefully gauge the risk and the importance of preventing association with the .xxx domain name to their company before deciding which option to choose.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions