Trademarks can don protection in '.xxx' domain name space 09 Dec 10
The registry behind the '.xxx' top-level domain (TLD) will allow trademark owners to block their key terms in the controversial space. The news is a breakthrough not only for the IP lobby, but in the development of the domain name system in general.
The groundbreaking rights protection mechanism has been designed by ICM Registry in partnership with Valideus, the new gTLD spin-off of Com Laude. Announcing the initiative to IP Constituency (IPC) at the ICANN Cartagena meeting on Tuesday, Valideus' Jonathan Robinson said: "This is a deliberate and specific move away from the traditional method of defensive registrations and all they entail in terms of cost and maintenance. It is a recognition and acceptance that many rights holders wouldn’t want to participate in the TLD in the traditional sense, but would simply like to procure one or more terms to ensure that they’re not active domain names in the TLD."
Trademark owners from the adult entertainment sector would follow a conventional sunrise process that results in an active registration. In parallel, rights holders from other industries would submit a trademark term for validation which, if passed, would result in a non-resolving domain name. In effect, it is a way for brand owners to block use of their brand terms in ICM's new '.xxx' TLD. The fee for this procedure was not announced, but ICM expects it to be a low, one-time cost. "ICM does not envisage charging any additional fees for blocking this string over the term of their contract to run the '.xxx' registry," states a leaflet handed out at the meeting. J Scott Evans, IPC president and senior legal director at Yahoo!, suggested that the registry write into its contract with registrants that no further fees would be charged if ownership of the '.xxx' registry changed.
The IPC broadly welcomed the development as a new approach to IP in community-sponsored TLDs. ICM will welcome the news that at least one group is comfortable with this element of its proposed plans to introduce the '.xxx' TLD, since the company has come under intense pressure from the adult industry and morality groups alike. Sources in the meeting report that Robinson was "mobbed" by rights owners who support an indefinite block. Questions and suggestions were forthcoming, specifically regarding the validation process.
"Validation will be done by the ICANN-accredited registrars that you typically deal with as owners of IP and existing domain name portfolios," said Robinson. "There will be an opportunity to make solo applications or batch applications for owners and representatives of larger portfolios."
Hogan Lovells partner David Taylor drilled down into the validation process. He asked from which jurisdictions trademark registrations would be required for validation. "That’s a good question and something we need to clarify," said Robinson. "It will include obvious jurisdictions like the United States and European Union. Two key considerations are date and jurisdiction of registration. We envisage the trademark registration criteria to be pretty wide."
Taylor stressed that this question is very important. "Around 180 trademark applications were filed for SEX just before the '.eu' launch," he said, referring to the practice of rushed trademark registration in order to participate in a sunrise. "So this issue is key," said Taylor.
More details of the mechanism will be forthcoming. Suggestions and questions can be directed to Robinson on email@example.com.
The ICANN meeting continues with further discussion on the new generic TLD programme. More news to follow.
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