Domain Name Newsletter - Summer 2011
July 28, 2011
In This Issue
- Trying to Protect Your Brand from Being .xxx-ploited
Trade mark owners can apply to protect their marks from being used in domain names for the new .xxx top-level domain intended for the adult entertainment industry.
- From .com to .yourbrand, .music, .movie, .shop - Understanding the New gTLD Program, and What it Means for Your Brand
ICANN will accept applications for new generic top-level domains in early 2012. What your company needs to know if you want to participate.
- Cybersquatting on the .ca and Changes to the CDRP as of August 22, 2011
How CIRA’s latest revisions to the CDRP impact trade mark owners.
Trying to Protect Your Brand from Being .xxx-ploited
Author: Catherine Lovrics
As the .xxx registry gets ready for launch, trade mark owners are gearing up to try to block registration of their marks as .xxx domain names.
After more than ten years of consultations, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved the .xxx top-level domain, intended for the adult entertainment industry. The approval of the .xxx top-level domain has been contentious, with concerns expressed about potential damage to trade mark owners.
The .xxx registry is set to launch September 7, 2011, starting with a “sunrise” period scheduled to close on October 27, 2011. During the sunrise period, trade mark owners that are not members of the adult entertainment industry can apply to block .xxx domain names that are identical to their registered marks, and members of the adult entertainment industry owning either registered trade marks or domain names may register those marks and names as .xxx domain names.
To block registration of a .xxx domain name, the trade mark must be registered, and a block only prevents registration of the .xxx domain name that is exactly the same as the entire word components of the registered word or design mark. Common misspellings, a trade mark combined with a descriptive word, and trade names cannot be blocked unless they too are registered.
The costs of blocking a .xxx domain name are expected to be in the range of US$300 to $350 per mark. Once a domain name is blocked it will point to a parking page that says that the domain name is not available for registration, and brand owners will not be able to redirect traffic to their website.
If a mark is registered to a regular business, and is also registered by a member of the adult entertainment industry as a trade mark or domain name, the .xxx registry has a system to permit blocking. A notice will be sent to a member of the adult entertainment industry of the regular trade mark owner’s interest in the domain name, and it will have an opportunity to withdraw its application for the .xxx domain name. The member of the adult community will not be able to claim lack of notice in any subsequent dispute (e.g. if its .xxx registration is based on ownership of a domain name that cybersquats on the regular trade mark). However, if the application is not withdrawn, priority will be given to members of the adult entertainment industry, and the .xxx domain name will be registered.
After December 6, 2011, non-members of the adult entertainment industry can apply for “non-resolving” .xxx domain names (i.e. the domain names will not redirect traffic to a website.). This is intended to protect trade marks, company names and personal names that did not have qualifying rights for the sunrise period.
Once the registry launches, there will be a rapid takedown mechanism for trade mark owners to address clear cases of abuse. Complaints under this procedure will be dealt with within 48 hours. There will also be a dispute resolution mechanism such as the Uniform Domain Name Dispute Resolution Policy (UDRP). Owners of common law and unregistered trade marks will be entitled to take advantage of these mechanisms, and it is expected that personal names will also be protected.
To apply to block registration of your business’ registered mark as a .xxx domain name, contact Sharyn Costin.
Sharyn Costin, B.A., M.A. (English), J.D. is an associate lawyer in Bereskin & Parr LLP's Trade Mark Practice group. She can be reached in Toronto at 416.957.1626 or .
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From .com to .yourbrand, .music, .movie, .shop - Understanding the New gTLD Program, and What it Means for Your Brand
Author: Catherine Lovrics
After years of consultation, the Internet Corporation for Assigned Names and Numbers (ICANN) has approved the next round of generic top-level domains (gTLDs), which are generic suffixes of domain names (e.g. .com, .net, and. org). ICANN will accept applications for new gTLDs from January 12, 2012, to April 12, 2012. It is generally recommended that organizations wishing to apply for a new gTLD begin preparing now since the application process is complex and time-consuming.
Securing a brand-specific gTLD could be an effective marketing tool. Ownership could increase brand profile. Brand owners could use the gTLD/registry with their own websites, and could make domain names available for others to register, for example, enabling customers to use the gTLD for personalized pages, and to make use of ancillary services. So far, however, only a few companies and organizations have publicly announced their intention to apply for a branded gTLD (e.g. .canon, .hitachi, .nokia, and .unicef). Several companies, organizations and consortiums have announced their intention to apply for generic gTLDs (e.g. .music, .movie, .wine, .sport, .shop, .hotel, .bank, and .green).
The gTLD application process includes both approval of the gTLD, and approval of the applicant to become the registry for the new gTLD. The process is complex. The gTLD will be evaluated for its ability to serve as a top-level domain, and should provide some benefit to the Internet community. The rights, if any, of third parties will be considered before a gTLD will be approved. The applicant also needs to meet technical and operational requirements, and show that it can operate the proposed registry (e.g. by demonstrating technical and operational stability and financial means). The application process is expected to take from 9 to 20 months.
Applying for a gTLD will be expensive. The filing fee is US$185,000. On top of that, the legal and technical fees are expected to start at $200,000 and could increase significantly depending on the evaluation of the application (i.e. whether objections are filed, and what is technically required to operate the gTLD for its stated purpose). If approved, there will be additional fees payable to ICANN to maintain the gTLD per year – likely approximately $25,000 per year. These fees are separate from fees associated with maintaining the registry.
During the application process, there is an opportunity for third parties to submit comments, and to formally object to approval of a gTLD. Formal objections can be based on legal rights, including trade mark rights. Brand owners can monitor the applications, and if one happens to be filed for their mark (or similar), brand owners may consider submitting comments and a formal objection.
Once a new gTLD launches, the registry will be required to set up dispute resolution processes to address cybersquatting. There will also be a “Trade mark Clearinghouse,” which will serve as a central repository for information pertaining to the rights of trade mark holders. The Clearinghouse will provide information to new gTLD registries to support sunrise and trademark claims services. The potential breadth of enforcement activity on the Internet will increase significantly. Trade mark owners can consider setting up a watch service to be given notice of when new domain names are registered that are identical or similar to their brand.
Once this round of gTLD applications closes, it is not known when the next opportunity to apply for a gTLD will come.
If you think your business may want to apply for a new gTLD, please contact Sharyn Costin.
Sharyn Costin, B.A., M.A. (English), J.D. is an associate lawyer in Bereskin & Parr LLP's Trade Mark Practice group. She can be reached in Toronto at 416.957.1626 or
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Cybersquatting on the .ca and Changes to the CDRP as of August 22, 2011
Author: Catherine Lovrics
After extensive consultations, on July 22, 2011, the Canadian Internet Registration Authority (CIRA) released a revised Domain Name Dispute Resolution Policy (CDRP). The changes will take effect August 22, 2011.
Many of the changes CIRA has announced are welcome. The current CDRP has a reputation of being technical, narrow, expensive, and for often not providing recourse against clear cases of cybersquatting. The changes will bring the CDRP more into line with the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Among the most significant changes are the following:
1. Broader scope of rights protected under the CDRP, but some limitations remain. The current definitions of “rights” and “use” of a trade mark will be removed. Hopefully, the change will make it easier for trade mark owners to establish rights under the CDRP. However, CIRA will be maintaining the requirement that the complainant have rights prior to the registration of the domain name. This means that it will be impossible for a complainant to succeed if a domain name was registered after a new product, service or business is announced, but before an actual launch in Canada. Also, to show rights to the mark, it must be either used or registered in Canada so owners of foreign marks generally will be unable to take advantage of the CDRP (even if a Canadian trade mark application has been filed for the mark). CIRA is also not changing the eligibility requirements to file a CDRP complaint, so foreign businesses that do not own registered Canadian trade marks remain ineligible to bring complaints under the CDRP.
2. The factors to prove bad faith registration and legitimate interest in a domain name will be non-exhaustive. The current exhaustive factors are very restrictive, and often resulted in panels adopting very flexible interpretations to allow the CDRP to address clear cases of cybersquatting.
3. Registrants will no longer be required to use generic or descriptive domain names to show a legitimate interest. The CDRP currently requires that registrants operate an active website reflecting the generic or descriptive nature of a domain name to show good faith. The CDRP is being changed so that registrants can show good faith if they can demonstrate that they registered a domain name for its generic or descriptive quality, regardless of whether or not the domain name has been used with an active site. CIRA is of the view that requiring the use of generic domain names to establish a legitimate interest puts an unfair onus on registrants. There is some concern that this change will enable a cybersquatter to “passively hold” a domain name that has both trade mark and generic significance and be able to successfully claim “good faith.”
If you are considering bringing a CDRP complaint, or have questions about the changes to the CDRP, contact Sharyn Costin.
Sharyn Costin, B.A., M.A. (English), J.D. is an associate lawyer in Bereskin & Parr LLP's Trade Mark Practice group. She can be reached in Toronto at 416.957.1626 or .
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