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Tony Wilson

Protect your brand from the XXX domain Add to ...

If you have a trademark and you’d rather not find it associated with a pornographic website as part of the new “xxx” domain extension, listen up.

There are numerous domains used on the Internet, with the most visible (and valuable) worldwide being dot-com, and in Canada, dot-ca. The Internet Corporation for Assigned Names and Numbers (ICANN), is an international body mandated to create online policies, particularly in relation to new domains. It recently approved a top-level .xxx for use by a “sponsored community,” namely the adult entertainment industry.

Porn sites will still be able to use, and will no doubt continue to use, .com and other domains. But this month, they can also begin to register URLs with the .xxx extension.

It may be easier for parents, employers and others to totally block access to .xxx within their networks, rather than resorting to “content based” filtering. But it will also be more convenient for countries that don’t want their citizens accessing adult material to simply censor the entire .xxx domain in one fell swoop.

Of course, that could all be for naught. Porn on the .com domain won’t be going away any time soon, and the adult industry may simply duplicate existing registrations on .com, .org, .ca, and so on, to .xxx.

For the rest of us, there are different challenges. Here’s the big one: Discovering that some porn site has registered www.yourvaluablename.xxx. It’s possible and it could damage the reputation of your brand. So trademark owners and brand managers have to be aware of the .xxx extension and prevent their properties from surreptitiously falling under it.

When a new domain is created, everyone stampedes to register their names, or the names they want to obtain. The point in time when domains are available for sale to the public – at a premium price – is called a “landrush,” and for the .xxx domain, that landrush period starts Nov. 8 and ends Nov. 25.

But the domain registration system is run on a first-come, first-served basis with no pre-emptive rights in place. Trademark owners must normally assert their rights after they discover another party has used their trademark as part of a domain name.

Although businesses will have an opportunity after .xxx has launched to protect their trademarks and brands from being incorporated within the domain by third parties, the ability to “get your brand off .xxx” may come too late to avoid damage to a brand’s valuable reputation. So you should pre-emptively prevent trademarks from being registered in the .xxx domain now.

Businesses that aren’t in the porn industry – and that don’t want their names usurped within the .xxx domain – can apply to opt-out of “.xxx” and exempt their brands from registration within the domain. The process is called Sunrise B.

The Sunrise B procedure doesn’t mean you are applying to have a .xxx registration for yourself. It means you are applying to block others from using your brand in the .xxx domain.

Under Sunrise B, businesses with trademarks that were formally registered as of Sept. 1, 2011, can apply to have their trademark – and the character string that makes up the trademark – permanently blocked from the “.xxx” registration system. If anyone seeks to register a domain name that has been blocked for .xxx registration, they’ll be informed the name is unavailable for use. There will be no website or e-mail address granted for www.yourvaluablename.xxx.

But you must apply within the 52-day “sunrise period” that started Sept. 7, and ends Oct. 28, 2011. Applications must be made to the ICM Registry, which is the company responsible for operating the .xxx domain, and there is a processing fee.

A successful application to block a domain name under Sunrise B will be designated as “reserved–trademark” and the domain name will be pulled out of the pool of names available for registration.

And if you are in the “xxx” business and find your name is blocked, there are procedures in place to deal with competing claims.

Consult your web provider, IT professional or brand manager if you wish to take advantage of this limited time chance to block your brand from .xxx domain registration.

Special to The Globe and Mail

Tony Wilson practices franchising, licensing and intellectual property law at Boughton Law Corp. in Vancouver, and he is an adjunct professor at Simon Fraser University. His newest book, Manage Your Online Reputation , was recently published. His column appears every other Tuesday on the Report on Small Business website.

 

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