The domain registry turns on the red light

27 September 2011

Partner Andrew Nicholson advises that businesses must consider their position within the next month if they wish to ensure that they do not become associated with adult industry or adult entertainment websites.

A new top-level domain, ".xxx" is to be introduced for use by the adult entertainment industry and is due to commence operation in December 2011. The new domain could have implications for your business. There are currently only a relatively small number of top-level domains available to Internet users. Those top-level domains make up part of a website's address and are usually found at the suffix or end of the domain. For example in the web address "www.example.com", the top-level domain is ".com".

While your business may have a registered business name, company name, website that uses a .com or .net domain, or even a registered trademark, that will not automatically prevent a person from establishing a website with your business name using an .xxx domain. If this occurs, potential customers searching for your business may accidentally click on or be directed to, for example, www.johnsmithsbusiness.xxx instead of www.johnsmithsbusiness.com. Similarly, persons may be redirected (either innocently or by malware) to the other website, which may contain adult content. Clearly, as a result, damage could be done to your brand.

Given the risks associated with this, ICM Registry has announced protection mechanisms, which can be applied for, as follows:

If you have a registered trademark which is identical to your domain, you may apply to have a block on the domain so that it cannot be registered as a .xxx top-level domain. Applications for a block on the xxx domain must be lodged by 26 October 2011 and will incur a one off application fee of $300.00.
If your trademark is not identical with your domain, then you may submit an application to register your website as an .xxx domain (in addition to your .com or .net). That is, by obtaining registration of the website with the .xxx domain, you will become the owner of that site and will be able to prevent anyone else from registering the website and posting any adult content to it. An application to obtain those domains must be lodged by 5 December 2011 and will incur an annual fee of $160.00.

If you choose not to take any action now then, depending on your circumstances, you may still have rights in relation to the improper use of any .xxx domain. However, the pursuit of those rights could be time consuming and costly.

Please let us know if you require any further detail in relation to the above matters, or if you require any assistance in addressing your position in light of the introduction of the new top-level domain.

Andrew Nicholson | Partner
Mullins Lawyers
t +61 7 3224 0261
f +61 7 3224 0333
anicholson@mullinslaw.com.au