Legal Updates

Internet Law –Trade Mark – Domain Names ICAAN - Trade Mark Infringement – Passing Off

Following our recent update in respect of ICAAN’s decision to allow for the registration of any domain name, there has been a growing buzz around the go ahead given to adult entertainment sites to establish the “.xxx” suffix for their domain names and the possible consequences.

The focus of this update is on trade mark owners who fear any association of their brands with the adult entertainment industry. The phenomenon of cybersquatting, whereby people buy branded domain names in the hope of re-selling them, is already an issue. However, it has the potential to cause further problems and embarrassment in the case of .xxx domains, with the possibility of registered trade marks being held for ransom.

Applications for the new “.xxx” domain name opened on 7th September. Unique to .xxx domains, unlike with others (see our previous legal update for the general position) is the possibility for brand owners to block their trade marks from being registered under the .xxx domain. Applications to block third parties from registering .xxx domains containing their trade marks have been running from September 7, 2011 and will continue through October 28, 2011 (“the Sunrise period”).

Opt-out Applications

The general points to note with regards to an opt-out application are that trade mark owners will be required to prove:-

• They own a national or regional international trade mark registration for the mark; and
• The registration issued prior to September 1, 2011.

Registering a .xxx domain

During the Sunrise period

Members of the adult entertainment industry are required to prove the above with regard to trade mark ownership, or that they already own and use the same name under a different domain extension.

A point to note, if the above is met, is that, an acceptable application to register a domain is made, it will take priority over a conflicting opt-out application submitted by another trade mark owner.

After the Sunrise period

Once the Sunrise period ends, others wishing to register an .xxx domain that has not been blocked may do so, whether or not they are able to demonstrate any claim to the domain. The only restriction is that the registrant will need to confirm they operate in the adult entertainment industry.

Not opted-out?

If a trade mark owner has not opted-out, all is not lost. Recourse may be found under the Uniform Domain-Name Dispute Resolution Policy (“UDRP”) (although there are a few other dispute procedures available).

The UDRP is akin to an arbitration process with the potential outcome being that an infringing domain is transferred to its rightful owner. The trade mark owner will need to establish the following:-

• The .xxx domain is confusingly similar to the owner’s trade mark;
• The registrant has no rights or legitimate interests in the domain; and
• The registrant registered and is using the domain in bad faith.

How can we help?

RT Coopers are specialists in internet law. The firm regularly handles affairs on behalf of clients, relating to domain names and would thus be able to assist with either domain registration, opt-out applications or establishing a trade mark infringement case. 

We may be contacted on 020 7488 9947 or by e-mail: [email protected]. 

Visit http://www.rtcoopers.com/practice_it.php http://www.rtcoopers.com/practice_corporatecommercial.php for information on Internet law and commercial law.

© RT COOPERS, 2011. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.