Issue 32 – October 2011
You may have heard of the new '.xxx' top level Internet domain that will soon be available. These domains, as the designation suggests, are directed towards the adult entertainment industry. The '.xxx' domains introduce a new marketing twist that could impact on your business. Just imagine if your brand were to become associated with an adults-only website. This could happen if someone else registers a '.xxx' domain with your brand name in it. If this is done to extort you to purchase the '.xxx' website, it is known as 'cybersquatting'.
While it is possible to challenge the registration of an '.xxx' domain name incorporating your brand through the uniform domain-name dispute-resolution policy, the effort, uncertainty, and cost of having to claw back your brand is far from desirable. However, from 7 September to 28 October 2011, ICM – the registry responsible for adult-only '.xxx' domain names has what's called the 'Sunrise B' window.
The 'Sunrise B' window is an opportunity for non-adult industry New Zealand registered trademark owners to file an application to 'block' their brand names from being used as a '.xxx' domain for a one off fee. This procedure is fee based and applicants will know if they are successful shortly after the end of the Sunrise B period. Alternatively, you could defensively register your brand as a '.xxx' domain to prevent others from beating you to it during general availability.
No matter what you decide to do, you may also consider applying to the Intellectual Property Office of New Zealand to register your brand as a trademark, as trademark registration is almost always the best way to protect your brand, be it from cyber-squatting or from other abuse. It's a small amount of effort to protect what is probably your biggest business asset, your brand.
Summarised from the Business.govt.nz's Business Insider newsletter, September 2011.