This week, media reports outlined the mistakes costing trademark owners money when making an ‘.xxx’ sunrise application. In an exclusive interview with WTR, ICM Registry president Stuart Lawley says the problems are not as widespread as reported – although he admits the success rate varies from registrar to registrar.

The 50-day Sunrise B period, during which trademark owners can apply to block brand names from the forthcoming ‘.xxx’ domain name space, opened on September 7 and runs through to October 28. As WTR reported earlier this month, mark owners participating in the 50-day sunrise period will be paying up to $300 per block. However, as ICM Registry does not allow applicants to amend applications, there were fears that trademark owners would find themselves paying multiple application fees for the same mark.

These worries were seemingly confirmed this week following a media release from Encirca, which noted that, in the past, up to 50% of sunrise applications have contained incorrect data, and identified “the most common errors that cost trademark owners money because they are paying multiple fees and spending extraneous time reapplying” in the ‘.xxx’ sunrise.

However, Lawley is keen to stress the level of erroneous applications in the ‘.xxx’ sunrise – to which only ICM Registry has access - is nowhere near the 50% figure: “I was previously told we are on an average of 16% errors, but it is now way under 10%. We actually have error rates for some of the more, what we call, ‘white-glove’ IP registrars of less than 1%.”

The statement suggests that certain registrars are more effectively validating applications than others, and Lawley admits that “some of the lesser experienced registrars with trademark issues aren’t really doing any pre-checking their end”. While applicants need to ensure they are following the application guidelines carefully, pre-checking processes should therefore be confirmed prior to making an application through a particular registrar.

Asked to provide an update on the level of Sunrise B applications, Lawley explains: “We are not giving out specific numbers but in general terms – across the categories within Sunrises A and B - we are more than halfway through the process and are at more than double the number of applications we forecast for the whole period. I can’t name names but it is the Fortune 500 companies and famous brands applying, as well as the leading adult entertainment providers, from around the world. We haven’t broken down exact numbers, because for us it is largely irrelevant, but it’s a real spread of companies – if you looked at the well-known brands they are all over the spectrum – law firms, media companies, sportswear and clothing manufacturers.”

Despite the large number of applications, there is also a low level of clashes between Sunrise A and B applicants: “I looked at the weekend and we have only had a tiny percentage of clashing applications, where two people are looking for the same term. Literally a fraction of 1%.”

While perhaps not as widespread as media reports have suggested, it is worth noting the common mistakes – and related tips - Encirca outlines, so these can be excluded from current applications. The release states:

The most common errors are:

• Owners are dropping the ‘.com’: Many trademarks include a ‘.com.’ These letters cannot be dropped from the trademark for ‘.xxx’. So, a trademark such as ‘example.com’ is eligible for ‘examplecom.xxx’ but not for ‘example.xxx.’ TIP: File an amendment 7 with the USPTO to have it removed. There is still time to do this before the ‘.xxx’ sunrise concludes.
• Trademark owners are submitting ineligible trademarks.
• Owners are trying to register domains that are not an exact match for their trademark: Oftentimes, a trademark registration will include additional characters than the actual brand name. For example, it may include a slogan or tag line. However, this can be problematic for domain registration as the desired domain names are shorter than their registered trademark. TIP: There is a fall back for these trademark owners - apply under Sunrise AD using a pre-existing domain name. The eligibility for joining the sponsored community is very broad and includes any service providers or companies that might supply product or services to either ‘providers’ of adult entertainment or to their ‘representatives’, such as lawyers, agents, advisors and accountants.