Red alert to trade mark owners – new .xxx domain for the adult /porn industry
31/05/2011

The new .xxx Top Level Domain (“TLD”) registration will open during September 2011. This will be a new domain name space specifically aimed at operators in the adult/porn industry. Websites containing pornographic material can be easily identified by their Internet address ending in .xxx.

However, the concern is that unscrupulous third parties may attempt (and succeed) in registering well-known trade marks in this space and point them to pornographic or websites unrelated to the brand owners’ field of interest. In order to address the concerns of brand owners, provision has been made to obtain a defensive registration, which would exclude the registration of a trade mark in this domain name space.

The registration will commence with two sunrise periods, lasting approximately 30 days. During the first sunrise period, members of the adult industry can reserve their trade marks as .xxx TLDs. When the sunrise period expires, the applicant of the reserved domain name will be notified of the procedure involved to register the reserved domain name.

During the second sunrise period, trade mark proprietors that are concerned about third parties misappropriating their trade marks as domain names in this space, can apply to exclude their trade marks from the .xxx TLD. The exclusion or defensive registration is expected to be valid for an extended period, but the exact period has not been finalised.

The reservation and exclusion procedure during the sunrise period is only available in respect of registered trade marks and registration certificates will have to be submitted as proof of the brand owner’s right. Furthermore, the reserved/excluded domain name must be identical to the registered trade mark. Trade mark licensees will also be able to participate in the sunrise period, provided that it obtains written authority from the trade mark proprietor.

.xxx TLDs are subject to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) of ICANN. Accordingly, a trade mark proprietor can file a complaint in terms of the UDRP to a .XXX domain name that is identical or confusingly similar to its trade mark, which has been registered and is being used bad faith. Rapid takedown procedures (within 48 hours) are being contemplated to remove domain names that are considered to be registered in bad faith. However, it involves a fairly costly objection process, before a ruling is made and, in this case, prevention is always better than cure!

We look forward to assisting clients who are interested in the reservation or exclusion of their trade marks in the .xxx space. The cost to do so will be approximately R6000 for each domain name reserved or excluded. We strongly recommend that trade mark owners apply to exclude their registered trade marks during the 30 day sunrise period, which commences on 1 September 2011. When this period expires, it will not be possible to obtain a defensive registration. Please feel free to contact us with any queries.

Mariëtte Du Plessis
Partner
mariette@adamsadams.co.za

Nishan Singh
Senior associate
nishan-s@adamsadams.co.za

Kareema Shaik
Candidate Attorney