On 31 March 2011, Icann and ICM Registry entered into a registry agreement in relation to the top level domain (TLD) .xxx, putting an end to a saga which has lasted several years. Initially accepted by Icann in 2004, at the same time as a number of other TLDs, Icann went back on its position further to pressure by the US government and rejected the application made by ICM Registry. After several years of negotiations and against the opinion of a number of countries, Icann finally accepted the creation of a domain for the adult entertainment industry.
What are the applicable rules? What public is the .xxx TLD intended for?
The .xxx TLD falls within the category of sponsored TLDs (sTLD), i.e. domain names intended for a specific community. The novelty of sTLDs is that the relevant registries verifies that prospective registrants belong to the given community. Such sTLDs also include .aero, .asia, .cat, .coop, .edu, .gov, .int, .jobs, .mil, .mobi, .museum, .tel, .travel.
As the sTLD .xxx is contested for moral reasons, a new form of organisation has been put in place to manage this TLD. ICM Registry has been designated as registry operator and its role is to ensure the proper technical management of the extension. Furthermore, the International Foundation for Online Responsibility (IFFOR), a non-profit making organisation, has been appointed with a specific mandate of ensuring, in particular, that the rules on the organisation of the Registry are complied with, including the registration rules. IFFOR is financed directly by a tax on registrations and renewals of.xxx domain names.
The rules governing the registration of .xxx TLDs are set out in the registry agreement entered into with Icann. These rules specify that the registration of domain names in a .xxx TLD is limited to members of the sponsored community, i.e. individuals or entities which provide online sexually orientated adult entertainment, their representatives, and providers of goods or services to entities or individuals in this industry. The definition of adult entertainment is rather vague, but the range of individuals and entities entitled to register a name as a .xxx TLD will be relatively broad. It should however be noted that individuals or companies not operating in, or related to, this sector of activity will not be authorised to register names as .xxx TLDs.
These rules can only be amended by renegotiating the Registry Agreement with Icann.
What are the rules for the registration of a .xxx extension?
The rules for the registration and use of .xxx domain names are subject to a strict framework. They include the following requirements:
– verification that the prospective registrant is eligible to register a. xxx domain name;
– the identity of all prospective registrants must be authenticated;
– all registrants must label their sites using an IFFOR approved label; and
– all registrants must consent to the monitoring of their sites.
The registrants of .xxx domains must undertake:
– not to publish any child pornography;
– not to infringe third party rights (including trade marks or first names and last names);
– not to engage in any malicious conduct; and
– to comply with IFFOR’s Best Practices Guidelines.
Although anonymous registrations will be authorised, this can only be done by pre-approved proxy service providers and once the identity of the registrant has been verified. If the whois data is incorrect this can lead to the cancellation of the domain name. In case of repeated violaions, the registrant can be disqualified from maintaining existing or registering future .xxx domain names.
Details on the sunrise period
The launch of the.xxx domain name will commence by a double sunrise period of 30 days. This sunrise period is intended to allow members of the adult entertainment industry, which have already registered domain names in other extensions (for example, .com, or .net) to secure their domain names in the .xxx TLD (sunrise A) and to allow intellectual property right owners which do not consider themselves to be part of the pornographic community to block the registration of their earlier rights as .xxx domain names (sunrise B). Registration will then be made available to other members of the adult entertainment industry.
Sunrise period A will allow domain name holders in the adult entertainment industry to register their domain names as .xxx TLDs. In case of dispute between several registrants for an identical name, the allocation of the name will be made on the basis of a closed auction between the registrants.
Sunrise period B is intended to allow right holders to declare their trade marks in order to block the registration of such trade marks as .xxx domain names. If a prospective registrant tries to register a domain name reproducing a trade mark recorded with ICM Registry, both the registrant and the right holder will receive a notification. The right holder will then been provided with the opportunity to file so-called STOP proceedings (Start Up Trademark Opposition Proceeding) before ICM Registry, allowing it to notify the registrant of its rights. The registrant will nevertheless be able to continue the registration procedure and will be allocated the domain name if it satisfies the conditions for the registration of a .xxx domain name.
These defensive registrations will be available to trade mark holders. In support of such applications, it will be necessary to provide copies of the registration certificates for the trade marks. ICM Registry may also request other documents as decided on a case by case basis upon examination of the applications.
Even prior to the sunrise period, trade mark owners, which are not members of the adult entertainment industry can already start preparing for the introduction of the .xxx extension by pre-blocking their trade marks with ICM Registry.
Such pre-blocking consists of submitting a term corresponding to a trade mark, a first name or surname or a domain name registered in another extension to ICM Registry to request the “pre-ordering” of this term. This pre-order can be made directly by the right holder or by its representative.
The blocking of domain names further to such “pre-orders” is not automatic. ICM Registry has a full discretion to accept or refuse such pre-orders. No fees are payable for pre-reservations.
If the pre-order is accepted by ICM Registry, this does not mean that the term has been blocked. However, if the pre-order is accepted, the right holder will receive prior notice from ICM Registry of all official deadlines and of the availability of the trade mark requested, in other words if other pre-orders for the registration of the trade mark in question as a .xxx extension have been received. The notification issued by the Registry should also include further information on the supporting documents to provided in order to secure the blocking of the trade mark during the sunrise B period.
What rules have been put into place for dispute resolution?
Three dispute resolution procedures have been put into place:
– the UDRP procedure will apply to active registrations made by right holders in the adult entertainment industry;
– a specific procedure, the CEDRP, will apply to blocking registration (which are by their very nature not used) for right holders which are not members of the adult entertainment industry. The implementing rules for this procedure have not yet been determined; and
– an expedited cancellation procedure (48 hours) for domain names which are obvious examples of cybersquatting (for example, registration of well-known trade marks as domain a domain name where it is quite clear that the registrant was not acting in good faith).
What policy should right holders adopt?
Extensive communication campaigns have been launched by several registrars aimed at inciting trade mark holders to register their rights during the sunrise B period. However, these campaigns which appear to verge on domain slamming should be taken with precaution and it is necessary for right holders to be aware of the limits of the measures made available to them in view of the forthcoming launch of the .xxx domain name:
– blocking registrations are not yet available, and only pre-reservations are currently possible;
– the registration of a trade mark will not enable the holder to block a disputed domain name, but will trigger a procedure pursuant to which the registrant is notified of this trade mark; and
– right holders in the adult entertainment industry will have priority over other right holders.
In these conditions, it is advisable for right holders to conduct a benefit-cost analysis of applying for a blocking registration during this sunrise B period. Indeed, this option would appear to be comparable to an improved watch services for trade marks among .xxx domain names. In this respect, the means of defence remain similar to those applicable to other extensions.
We would be delighted to assist you in putting in place a strategy for protecting your trade marks in anticipation of the launch of the .xxx extension. The watch services proposed by our firm will be extended to .xxx TLDs.