Canada: Everything You Wanted To Know About .XXX – But Were Afraid To Ask

Last Updated: April 3 2012
Article by Thomas O'Reilly

If "Adult Entertainment" and "Your Brand" Don't Mix

As part of a recent expansion of potential Top Level Domains (tlds) for domain names, a new registry, owned and operated by icmregistry.com, has created a new .xxx domain, and will shortly be allowing registration of new .xxx domain names. Registration of active .xxx domains is supposed to be limited to the "adult Sponsored Community".

In other words, many business, personal, generic and trade-mark names currently registered as a .com, .net, .org, or .ca domain name, like acme.com or acme.ca, can soon be registered as acme.xxx.

Of course, if your business is not related to the adult entertainment industry, you don't want an .xxx domain name. The problem is, just as occurred back in the day with .com, once general registration for .xxx opens, any party with an association with the adult entertainment community can register your trade-mark or company name as an .xxx domain name, and you will have to use legal process to try to reclaim it, if it causes embarrassment to your business.

No .XXX Please! – The "Reservation Request"

There is an option to take preventative measures against your trade-mark getting registered as an .xxx domain. ICM Registry has a process where, for a fee, any owner of a registered trade-mark, can file a "Reservation Request" for the .xxx domain that matches that trade-mark. With the successful filing of a Reservation Request, "acme.xxx" will go onto a "not available" list so that no one can register an active domain name for "acme.xxx".

The protective effect of the Reservation Request will obviously be popular with companies who want to avoid their well-known consumer brands becoming associated with an .xxx domain name. The other types of trade-marks that will be most at risk for showing up as an .xxx domain are the somewhat generic ones like "Premium", "Prestige", "Diversified", etc.

The Reservation Request process will be available through various domain name registrars, (i.e. not directly from ICM Registry) who will charge whatever fee they see fit. Presumably, the process should not be any more difficult than registering a domain name, but there are some important rules and timelines you need to keep in mind.

This Will Make Your Eyes Water – The Fine Print

The ICM Registry process for accepting .xxx domain registration requests, and Reservation Requests is somewhat convoluted. The .xxx domain name registration process is supposed to only be available to registrants who can demonstrate an affiliation with the adult entertainment industry (identified in the ICM Registry materials as the "adult Sponsored Community" - we will refer to them as the "Adult TM Owners".). That "community" have their own priority registration period for obtaining .xxx domain names that correspond with their existing adult entertainment domain names and registered trade-marks, titled the "Sunrise A" period. This started September 7, 2011, and lasts for 52 days.

Simultaneously, non-adult entertainment trade-mark owners (the "Non-Adult TM Owners") will have the "Sunrise B" period (which also started September 7, for 52 days) to file Reservation Requests. There is no priority for filing sooner during the 52 day period – all requests will be considered simultaneously at the end of the period.

An even closer squint at the fine print of the ICM Registry scheme reveals some important caveats (which may be Latin for "gotcha") to be aware of:

  1. If an Adult TM Owner files a domain registration request for a trade-mark (for example "Pristine") during Sunshine A, and a Non-Adult TM Owner of a "Pristine" trade-mark also files a Reservation Request during Sunrise B, the Adult mark has priority, and pristine.xxx will be registered as an active domain. ICM Registry does not state whether the Non-Adult TM Owner who filed the unsuccessful Reservation Request will get its request fee refunded, but probably not;
  2. If several Non-Adult TM Owners file Reservation Requests for the same trade-mark (e.g. Premium Taxi, Premium Electronics, Premium Builders all own a registered trade-mark for "Premium") there is only one "block" on registering premium.xxx – so none of the requesting parties actually own this registration, and no one gets a refund for multiple requests for the same trade-mark;
  3. ICM Registry's info says the Reservation Request fee is a "one time" fee for permanent blocking of a particular trade-mark – though that promise is qualified with the words "subject to any change in the Registry Agreement or its interpretation that makes this arrangement commercially impracticable."
  4. ICM Registry says it is the internet Registrar you used for the Reservation Request that is responsible to notify you of any changes – so if your Registrar goes out of business, you might not get notified of a change in the "blocked" status you requested;
  5. Reservation Requests can only be based on the requesting party having a valid trade-mark registration for the exact name being blocked. For example, a party who owns a trade-mark for "Premium Taxi" can only block premiumtaxi.xxx, not premium.xxx. If your internet Registrar accepts your request, but ICM Registry later decides your trade-mark documentation or validity does not meet their criteria, the Reservation Request may be refused, or if already in effect, reversed. Again, no refund if this happens;
  6. A further technical restriction is that if your trade-mark registration contains "disclaimed" words (words in your trade-mark which were deemed generic by the Trade Mark Office) it appears you cannot rely on that trade-mark for a Reservation Request. (You can determine this by looking at your trade-mark registration online, and look for language like "The word(s) ____________ are disclaimed apart from the trade-mark." Canadian registrations and U.S. registrations can be found at the links listed below.);
  7. As the filing of the Reservation Requests will require the submission of certain specific information about your trade-mark registration, there may be problems where a Registrar has set up their form based on U.S. trade-mark requirements, and you are filing based on a Canadian trade-mark. (An analogy would be where a U.S. website requires a 5 digit zip code, and you can't enter a 6 digit postal code.);
  8. You will note we keep referring to registered trade-marks. An unregistered common law trade-mark, an existing domain name, or a trade-mark that you have applied for, but that is not yet registered, will not give you rights to seek a Reservation Request.

Don't Want An .XXX Domain For Christmas? – Start Blocking Soon!

After the two Sunrise Periods, there is a "Landrush Period" (starts November 8, 2011, for 18 days) which is just for adult Sponsored Community members who wish to register .xxx domains, but did not meet the requirements of a pre-existing trade-mark or domain required for Sunrise A registration. This is where many domain pirates will likely rush in to try to register Non-Adult TM Owner trade-marks as .xxx domains, where a successful, earlier Reservation Request was not filed. This registration period is essentially to allow a competition for popular, new .xxx domains among the adult community – with proceeds of the auction of names going to ICM Registry.

Then comes the "General Availability" registration period starting December 6, 2011. This allows adult Sponsored Community members to register .xxx domains, as well as allowing the general public to register "non-resolving" .xxx domains, all in an "ordinary", first come, first served fashion. These non-adult registrations will be different from the Reservation Request, in that they will still block the particular domain from being an adult site, but will be like a domain name registration, i.e. there will presumably have to be a yearly fee paid to maintain the "non-resolving" domain registration. These are also not limited to registered trade-mark owners – a "personal interest" in the name is enough.

For further information about trade-marks and the .xxx domain process in general, please see these links:

http://www.icmregistry.com/

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/Home

http://www.uspto.gov/

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.

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