Canadian Trade-Mark Update: .XXX Blocking Process

Canadian trade-mark owners take note: The .XXX top-level domain  is a new sponsored TLD designed for the adult entertainment industry which will launch in 2011.  Trade-mark owners should be concerned as an adult-content website owner could conceivably register the domain name “[trademark].xxx” and actively use the domain name as an address for an adult entertainment website, or offer to sell the domain name to the trade-mark owner at an inflated price.  The owners of registered trade-marks can take advantage of a blocking procedure,  to ensure that their trade-marks do not become registered as .XXX domain names.  On Wednesday, September 7, 2011, the "Sunrise B" period will commence to permit the owners of registered trade-marks to block their marks from becoming part of a .XXX domain name. The opt-out process blocks eligible trade-marks at the .XXX registry so these trade-marks cannot be registered by others.  As an example, Microsoft might make use of this procedure to block the registration of “microsoft.xxx” as a domain name.

This is an optional process, and will be of particular interest for owners of brands that are widely displayed and well known to consumers.

This Sunrise period runs for 52 days until Friday, October 28, 2011. By that date, trade-mark owners must submit their Reservation Request under the Sunrise B procedure, to reserve a name in the .XXX sTLD corresponding to a registered trade-mark.  If accepted, this domain name will point to a standard information page on the internet indicating that the name is not available. To be eligible for this procedure, the request must correspond to a trade-mark that was registered by Sept. 1, 2011. The request will be for the entire text of a registered word mark or, in the case of a design or logo mark, the request will correspond to the text in the design or logo.  The procedure will not permit applicants to reserve or monopolize dictionary words or common expressions. As mentioned, this only applies to registered trade-marks. Trade-marks that are applied for, but not registered, by Sept. 1, 2011, are not eligible.

Important Points:

• The .XXX domain registry is being launched.
• Owners of registered trade-marks are eligible to take advantage of a blocking or opt-out process for a fee.
• Only marks that are registered before Sept. 1, 2011 are eligible.
• The opportunity is only open between Sept. 7 and Oct. 28, 2011.

Contact the Field Law Intellectual Property & Technology Group for advice on trade-mark registration and for assistance with taking advantage of this one-time blocking opportunity.

August 2011

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