Law
June 28–July 4, 2011 Business in Vancouver
19
Keep your brand out of the Internet’s red-light district A dot-xxx domain name for porn sites launches this fall, and owners of trademarked names are urged to protect their good names by blocking pornographers and cybersquatters from registering their domain names By Nelson Bennett
“From a brand-management perspective, it’s one thing to have somebody else have your domain, but it’s a whole other level to have somebody have your domain plus put objectionable material on it” – Cybele Negris, president, Webnames.ca
The problem for everyone outside the online porn industry is that it opens up the prospect of well-known companies or brand
Dominic Schaefer
magine a customer typing in your product’s trademarked name in a search engine and pulling up a pornography site. That’s the risk businesses may face when a new dot-xxx domain extension for the adult entertainment industry is launched in September, warns a Vancouver law firm that specializes in intellectual property matters. The best way for businesses to protect themselves and their brands from being associated with porn sites, ironically, is to claim triple-x extensions before someone else does. “It’s like you register it, but you don’t actually use it,” said Davis LLP’s Chris Bennett, a Vancouver lawyer specializing in intellectual property rights. For years, the adult entertainment business has been lobbying for its own pornspecific extension, and the Internet Corporation for Assigned Names and Numbers (ICANN) has finally granted approval. The idea is to create a virtual red-light district in cyberspace, which should make parental-control settings easier to set, as well as make it easier for porn seekers to find what they’re looking for.
Dominic Schaefer
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Davis LLP lawyer Chris Bennett: claim dot-xxx domain names to avoid having your companies or brands confused with porn sites
Cybele Negris of Webnames.ca says it’s easier and cheaper to register a trademarked domain name with a new triple-x extension than to launch a legal battle over trademark infringement
names being registered with a dot-xxx extension. A URL such as toysrus.xxx could be claimed by a company that sells sex toys. “If they have a trademark, they really should be protecting it,” said Cybele Negris, president and co-founder of Webnames.ca. “From a brand-management perspective, it’s one thing to have somebody else have your domain, but it’s a whole other level to have somebody have your domain plus put objectionable material on it.” Currently, there are 20 global domain name extensions for Internet addresses (.com., org., .net, etc.), 250 country codes (.ca, .uk, .hk) and a variety of purpose-driven extensions (.gov, .edu, .tv, etc.) A whole new spectrum will open up with the approval by ICANN of the triple-x extension, as well as a new one that allows trademarked companies to use their company
name or brand as an extension. For example, Nike might register .nike as an extension, Bennett said. It could then come up with Internet domain names like shoes.nike or sportswear.nike. Those extensions will cost in the hundreds of thousands of dollars, Bennett said, and are only likely to be registered by the world’s biggest companies. Those companies will also likely be claiming triple-x extensions, as well, to prevent either porn merchants or cybersquatters from staking claim to them. The fees are expected to range from US$200 to US$300 for each registered name. Many companies will register various iterations of a name, including misspellings. In the digital age, registering domain names is part and parcel of trademarking, which is why law firms specializing in
intellectual property rights often handle it for clients. Bennett’s firm, in turn, works with domain-registration companies like Webnames.ca. Bennett said his firm has clients who are concerned about the pending triple-x extension and want to make sure their brand or company names are protected. Negris said her company is also getting calls. “We’ve got clients who told us that as soon as it opens up, we want them,” she said. Anyone with a trademarked name already has some level of protection. Someone who tried to register google.xxx, for example, will likely have a legal fight on his hands. When someone registers a domain name, he or she agrees to a dispute-resolution process whereby trademark owners can block the use of sites using a trademarked name, Bennett explained. Even misspellings of popular trademarked names can be protected. But it will save headaches for the owners of trademarks to simply register various domain extensions than fight it through ICANN, Negris said. “It’s a lot easier for a business to go and register their names rather than have their lawyers send a cease-and-desist letter and then go through the whole process of trying to get the name back.” Registering a domain name typically costs $15 to $20. Before the new triple-x extension is launched this fall, the owners of trademarked names will be given first dibs. “You get the ability to get in before anybody else does,” Bennett said. “Then once that period is over anybody can hop in there. “The problem is that the period will open up and you’ll just have this really short window and so you want to make sure you get in when you can.” To protect a brand from being registered with a triple-x extension, you must own the trademark. • nbennett@biv.com
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