Every business with an Internet presence knows the importance of registering its URLs across multiple domains to be sure that customers and clients find them and not a competitor. For the same reason, companies often (wisely) register URLs that might be associated with them in the minds of consumers, e.g., variations on their web addresses and registered trademarks, as well as URLs incorporating their unregistered trademarks, trade names and product names. While ”cybersquatting” — the practice of registering and sitting on a URL that uses a trademark belonging to another for the purpose of selling it back to the trademark owner for profit — is unlawful, the remedy is expensive and not without risk. (The arbitration procedure under ICANN’s Uniform Domain Name Dispute Resolution Policy costs thousands of dollars; suing in federal court under the Anticybersquatting Consumer Protection Act (ACPA), tens of thousands.) The only commercially viable way for a business to protect the widest range of its trademarks, trade names and product names from being used in the web addresses of others is to register preemptively. [See ICANN]
With the launching of the new .xxx domain next year for adult entertainment businesses, many non-adult businesses will also want to prevent triple-x associations with their registered trademarks, trade names and product names. They can do so during two periods.
Sunrise A & B:
From September 7, 2011 through 12:00pm ET on October 28, 2011, registered trademarks owners may register URLs identical to their trademarks either for the purpose of opening live adult websites under those names (the “Sunrise A” program) or for the purpose of blocking their trademarks from future registration in the .xxx domain (the “Sunrise B” program). (Sunrise B is also open to adult businesses that don’t support the creation of the .xxx domain.) URLs registered under Sunrise B will resolve to a standard page indicating that the domain is reserved from use through ICM’s Rights Protection Program and the publicly available WHOIS information will reflect the ICM Registry information and not the applicant’s personal information. This way the public will have no reason to think the registrant has moved into the adult entertainment market or availed itself of a .xxx domain.
However, there are two catches. First, the URL to be registered must correspond exactly to the registered trademark. Businesses cannot, at this stage, block variations, even confusingly similar ones. (For example, Electronic Arts, Inc. the owner of registered trademarks for “EA” and “EA Sports,” would be able to register both ea.xxx and easports.xxx, but not eagames.com.) Second, if a non-adult and an adult business share the same trademark but for different classes of products or services, and both apply during the Sunrise period, the adult business (under Sunrise A) will be notified of the Sunrise B blocking attempt, but will be awarded the .xxx URL. The intent of this procedure, according to ICANN, is to put the Sunrise A registrant on notice that there is a claim. In the event that the Sunrise B business later sues the Sunrise A registrant to block use of the trademark, the latter cannot claim it was an innocent user.
At Network Solutions, Sunrise B registration costs $329.99 with no future fees. Sunrise A registration costs $200.00 for the application, $129.99 per year. Comparative prices may be found at Go Daddy, Enom, and Name.com.
Landrush and General Registration:
Anyone wishing to register URLs that are variations on their registered marks, or URLs of unregistered trademarks, trade names, personal names or product names, must wait until December 6, 2011, at 11:00 am, when general registration begins. Between the close of the Sunrise programs and the beginning of the general registration is a “Landrush” period open only to those who plan on hosting actual adult websites. General registration, however, is open to anyone and will be on a first come, first serve basis. Registration should be done as early as possible, since there will be plenty businesses and individuals worldwide who will grab up as many URLs as they can, as quickly as they can, hoping to sell them later at high prices.
By law, one may not register a URL utilizing a trademark (or confusingly similar variations thereof) belonging to another, whether or not that trademark is registered. Going after a registrant, however, is not always easy. Plaintiffs bear the burden of proving that the URL in question, if not identical, is “confusingly similar” and that the URL was registered and is being used in bad faith. For unregistered marks, the Plaintiff may have to prove that it was the first to use it in the marketplace. Spending a few hundred dollars (or in the case of multiple URL registrations, a few thousand dollars) may be worth it to avoid the prohibitive cost and uncertainty of litigation. It may also be worth it to avoid being associated with a domain reserved for the adult entertainment industry.
Key Dates:
- Sunrise A – September 7, 2011 through 16:00 UTC on October 28, 2011
- Sunrise B – September 7, 2011 through 16:00 UTC on October 28, 2011
- Landrush – November 8, 2011 at 16:00 UTC thru November 25, 2011 at 16:00 UTC
- General Availability – December 6, 2011 at 16:00 UTC
About Gordon