News

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.

Click here to download the pdf version of this document

As the advertising sales agency of Bing and Yahoo!Search, the two most used search engines after Google, Microsoft Advertising announced the liberalization of its keyword registration policy. Starting March 3, 2011, registering trademarks as keywords is now possible within the framework of advertisement campaigns displayed on the Bing and Yahoo!Search search engines.

Bringing its trademark protection policy in line with Google’s, Microsoft will only act upon receiving a trademark owner’s complaint and after having conducted an inquiry on the litigious ad. In the presence of a litigious ad, Microsoft suggests that trademark owners first contact the advertiser and specifies that the following ads will be authorized:

–          Use of the trademark by resellers of authentic goods or services,

–          Information websites on the trademark (for example for product reviews),

–          Generic terms,

–          Comparative advertising by independent operators (for example price comparison websites)

This policy applies starting March 3, 2011 in the United States and Canada only.

Specific conditions, which are more or less protective of trademark rights apply in France, the United Kingdom and Singapore.

This general trend thus places new responsibilities on trademark owners. Indeed, the new policies impose the introduction of monitoring tools on all search engines while taking into account the principles of geolocation of ad campaigns. A trademark defense strategy should also be put in place on search engines, while taking into account case law developments within the ECJ and national courts on the subject.

The Brussels ICANN Board and Government Advisory Committee (GAC) meeting, scheduled to be an unprecedented consultation on trademark protection and new gTLDs, did not have the success hoped for.

Firstly, not only was the Board unable to make its way to preliminary responses for all of the twelve categories of items listed in the GAC’s scorecard distilling the key elements of consensus advice regarding the introduction of new gTLDs (see previous article on the Cartagena conference for a list of these categories of items), but according to the Board, its response to the first four issues should not be assumed to be its final positions.

Secondly, after a brief and unsuccessful discussion on trademark owner rights protections, the entire subject was simply taken off the table; indeed, it was decided that the GAC and the Board would hold conference calls over the rest of the week and dig back into the subject at the Board’s GAC consultation scheduled for March 17 in San Francisco.

The Board did, however, reveal some of the proposed changes it will make with respect to right protections, based on the GAC’s recommendations.

As to the Trademark Clearinghouse, the Board accepted to change the requirement that trademarks be substantially reviewed to gain automatic entry to the Clearinghouse; all registrations will be included with the additional requirement that the mark holder be able to show use. As to the GAC’s wish to keep the Clearinghouse open after the launch, the Board was not keen on the idea but expressed its intention to explore mechanisms for continued notice service.

Concerning the Uniform Rapid Suspension (URS) procedure, the Board stated that efforts were under way to increase the speed of the process and that such efforts would be dependent on the scheduled conference calls and accepted to reduce the word limit for filings (from 5,000 word free text and unlimited attachments to 500 word free text and attachments limited to copies of the offending website). It also accepted that successful complainants have the option of taking ownership of the domain rather than having the domain name released back into the market. The Board however refused to introduce, at this stage, a loser-pays process, but agreed to provide for careful monitoring.

Finally, as to the Post-delegation dispute mechanism, through which trademark owners can proceed against registry operators acting in bad faith, with the intent to profit from the systematic registration of infringing domain names, the Board resisted to the GAC’s recommendation that a lower standard of proof be applied (from “clear and convincing evidence” to “preponderance of evidence”). It also disagreed with the suggestion that should a registry be found to encourage cybersquatting, transfer of all the domain names in question should be part of the remedies sought.

Further developments in March 2011; however, the gTLD application launch date seems further delayed. To be continued …

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Friday December 10, 2010 marked the end of ICANN’s most recent five-day conference in Cartagena, where the Internet regulatory body devised plans to let groups apply for and manage new Internet domain extensions called generic Top Level Domains (gTLDs), thereby allowing for the creation of any TLD with up to 64 characters, including regional suffixes, generic words and brand names. The creation of these new gTLDs will enable large brand owners with sufficient funds to become TLD registries.

According to ICANN’s Adopted Board Resolution of December 10, 2010, public comments following the publication of the fifth Draft Applicant Guidebook (DAG) identified four “overarching issues” to be addressed as a threshold for moving forward with the introduction of new gTLDs: trademark protection, mitigating malicious conduct, root zone scaling and economic analysis. As noted by ICANN, these four issues have been addressed during the Cartagena Board meeting. However, since the public comment period closed on December 10, the last day of the conference, comments will have to be digested within the next month. As ICANN Board chairman Peter Dengate Thrush puts it with respect to IP protection mechanisms, “we don’t think [we need] to start another campaign like the IRT[1] and try to develop another set of mechanisms. However, in relation to the mechanisms we have got the door still open”[2] (emphasis made by the author).

However, since more time is needed to work through some remaining issues such as certain aspects of geographic gTLDs and other gTLDs that raise morality and public order issues, ICANN decided to postpone the new gTLD process.  Meanwhile, the Governmental Advisory Committee (GAC), composed of representatives from more than 100 governments worldwide, accepted the ICANN Board’s invitation to meet intersessionally in February 2011, before the March 13-18 San Francisco ICANN meeting, in the interest of resolving the outstanding issues with the new gTLD process. Indeed, the GAC remains very concerned that many of the original public policy issues raised remain unresolved in the latest version of the DAG[3]. It notably noted the absence of a detailed explanation and rationale for the decisions taken to date on the new gTLD program, exemplified by the recent Board decision on vertical integration.

In light of the February meeting, the GAC intends to provide the Board with a list of the issues which it feels are still outstanding and require additional discussion; these include:

–          The objection procedures including the requirements for governments to pay fees;

–          Procedures for review of sensitive things;

–          Root Zone Scaling;

–          Market and Economic Impacts;

–          Registry – Registrar Separation;

–          Protection of Rights Owners and consumer protection issues;

–          Post-delegation disputes with governments;

–          Use and protection of geographical names;

–          Legal recourse for applicants;

–          Providing opportunities for all stakeholders including those from developing countries;

–          Law enforcement due diligence recommendations to amend the Registrar Accreditation Agreement; and

–          The need for an early warning to applicants whether a proposed string would be considered controversial or to raise sensitivities (including geographical names).

In light of such a lengthy and diverse list, we can note that despite what some might think after reading ICANN’s Adopted Board Resolutions, the “overarching” gTLD issues are not closed; they have only been “addressed”, as expressed in the Resolutions. The terminology used was clearly carefully chosen.

This newly scheduled February consultation will further delay the rollout of gTLDs, initially planned for early 2011. Therefore, to the question “will there finally be new gTLD approval in San Francisco?”  Peter Dengate Thrush can only answer “We hope that we can work through remaining issues. There is always an incentive on people on whom this might be costly, or enjoy the privilege of incumbency – change always hurt someone. The sort of analogy we use is if you were to now ask the telcos should we introduce the internet, what would they say?” [4]

Further developments in February 2011; however, the May 30, 2011 application launch date announced by ICANN in October already seems to be compromised. To be continued …

[1] Implementation Recommendation Team (IRT): special task force broadly reflecting diverse IP interests and geography given the mandate to address what it considers to be the most pressing and key issues for trademark owners in relation to the launch of new gTLDs.

[2] Full interview : Peter Dengate Thrush, Managing Intellectual Property, December 13, 2010.

[3] GAC Communiqué – Cartagena, December 9, 2010.

[4] Full interview : Peter Dengate Thrush, Managing Intellectual Property, December 13, 2010.