January 16, 2012 By: Wing T. Yan and Taiji Yoshino
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The Internet Corporation for Assigned Names and Numbers (ICANN), recently announced that the domain name ".xxx" will soon be available for registration. This means the public (e.g. the adult entertainment industry) could register your company name under .xxx.

If you or your organization owns a registered trademark (issued by a recognized government body, such as the Canadian Trademarks Office), you may submit an application during the "Sunrise" period to block the adult entertainment industry from reserving your mark. This "Sunrise" period runs from September 7 to October 28, 2011. There is a one-time Off Fee for this service.

If you don't have a registered trademark, then you may secure your own ".xxx" domain name in order to pre-empt others from getting it. The ".xxx" registration period begins on December 6, 2011. As with all other top-level-domains, such as .com or .ca, a ".xxx" domain must be renewed annually.

If you or your organization does not wish to see your trademark or your trade name being associated with ".xxx", we recommend you take one or more of the following actions:

  1. If you own a trademark registration, apply to have your trademark opted-out of the ".xxx" scheme before the "Sunrise" period ends on October 28, 2011.
  2. If you don't have a trademark registration, secure your own ".xxx" so as to prevent others from taking it. Once you've registered your ".xxx" domain name, you don't need to use it but you may just "park" it in your records.
  3. If your trademark is not registered, you should consider registering it now. It is always more beneficial and less costly to contest a domain name registered by others if your mark or name is registered as a trademark.

If you have any questions, or if you require assistance in registering your trademark or .xxx domain name, please feel free to contact us at ip@nelligan.ca, or using our coordinates listed above.

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2017 Nelligan O’Brien Payne LLP.