To dam or to not block? Trademark safety for grownup TLDs

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Businesses invest millions building and protecting their reputations and brands to grow sales and investments. A brand’s website also likely has a section that lists recent awards, or perhaps nonprofit and social businesses that they proudly support.

But what if a third party registers the brand of this brand with a top-level domain (TLD) with an adult motif or uses similar characters from non-Latin scripts to imitate the brand – i.e. H. creates a homoglyph? The pornographic website that uses the brand can receive millions of hits every day. Every time someone accesses the website, the brand of the brand owner is displayed.

This is a dilemma for brands. Prevent a third party from registering names in both Latin and other scripts? Take retroactive action and try to take control of the domain? Or ignore it and argue that the potential reputational damage does not justify the investment?

By the end of 2021, this will be a choice for many brand owners choosing to upgrade to ‘AdultBlock’ and ‘AdultBlock +’. Minds and Machines (MMX), the registry behind the domain blocking service for the .xxx, .sex, .porn and .adult TLDs, believes that brand owners should act now to avoid reputational damage.

A decade of adult TLDs

The TLD .xxx – which is billed as a safe adult content place – was introduced in 2011 in some controversy.

Managed by the ICM registry, a sunrise period followed (sunrise B).

This gave brand owners outside of the adult entertainment industry the ability to block their brand’s use in the only script recognized in the DNS at the time (Latin).

The term of protection was ten years (until December 2021).

Four years after acquiring .xxx, the ICM registry, now owned by MMX, was expanded to take control of the .sex, .porn and .adult TLDs.

As the 10 year deadline approaches, according to MMX, “AdultBlock” and “AdultBlock +” trademarks will help protect their trademarks on all four adult TLDs, not just in Latin script, but in all homoglyphs of the same type. Around 70,000 brands that have registered for the first .xxx Sunrise B program will also be asked to extend their protection to the remaining TLDs.

Brands can choose between a term of one, three, five or ten years.

An industry source reports to Managing IP that adult-themed TLDs were originally intended to be the “R-rated area of ​​the Internet” where adult content could be hosted without the risk of inadvertent discovery by children and those accidentally discovered via pornography stumble upon material hosted on popular TLDs like .com and .net.

The damage to a brand when a pornographic website is registered in its name – especially if the brand is not in the adult entertainment industry or is fundamentally inconsistent with it – could be significant, the source adds.

Sean Wilke, Director Domain Services at Corsearch, a global branding services and protection company, says that most internet users online can distinguish between real and bad actors, but that there are “eyebrows and reputational concerns” when a brand’s trademarks are used on a pornographic website, especially when it becomes common knowledge.

The point of view of a brand

When it comes to managing intellectual property, internal and private attorneys say blocking is one route they would consider, but it would depend on certain factors, including the risk of confusion and cost.

David Lossignol, global director of trademarks, domain names and copyright for Novartis, a pharmaceutical company in Switzerland, says the company’s trademarks are not often registered by third parties through adult extensions, so the service “is unlikely to be used by us”.

“I would probably have answered differently if we had products for sexual dysfunction in our portfolio, for example,” he says.

Lossignol adds that blocking domain names is more interesting to trademark owners than filing a UDRP, but ideally across many domain extensions. Because brands are territorial and different companies can lawfully own the same brand in different areas, “blocking can be difficult to organize and / or in some cases viewed as too restrictive,” he says.

Brian King, director of internet policy and industry affairs for a corporate domain name registrar in the US, says the greatest risk comes from potential reputational damage rather than significant consumer confusion.

“A lot of brands don’t want their brand to be associated with an adult-themed TLD, and a lockout regime is a great way to ensure protection,” he explains.

Charles Louvrier, senior IP lawyer at French cosmetics company L’Occitane, says blocking services can be very useful.

“For a small fee, they can prevent malicious registrations and the use of domain names in connection with their own brands. In addition, some work is being withdrawn, including domain watch evaluations and administrative or legal measures and costs, such as UDRP (Uniform Domain Name Dispute-Resolution Policy) and defensive registrations, “he says.

Louvrier, like King at MarkMonitor, adds that the main concern is reputational damage “especially when adult content is used alongside our brand”.

While confusion would likely be unlikely, it would depend on how the cyber squatter would use the domain, he adds.

Proactive v reactive

Gavin Mills, Sales Director at Safenames, a UK domain name management company, believes it is easier for a brand owner to be proactive than reactive.

“Most of the registrations during the .xxx sunrise were defensive,” says Mills, adding, “As a non-adult brand, you probably never want your brand to be associated with adult entertainment.”

He believes that blocking tools are less expensive than retrospective measures.

Mills points out that a brand could easily pay more than $ 3,000 for a single UDRP case. “If you have two or three cases in a five or ten year period, it is already more expensive than blocking early.”

James Godefroy, a consultant at the IP firm Rouse in China, disagrees and believes that prior to the launch of .xxx, there was speculation about possible harm to brand owners. However, the cases of actual damage to brands were “very rare”. This is mainly due to the 70,000 brands that participated in Sunrise B and took a proactive approach to protecting their brands.

He says most brands will be interested in avoiding even a “short-term” association with a domain name in the context of an adult. He admits there are two sides to the coin, as “it is impossible to register every single domain that could be used to the detriment of a company given the expansion of TLDs”, but “the benefit” [of blocking] is that it could be cheaper than a standard defensive registration. “

New online threats

The AdultBlock service only blocks registrations for the four TLDs with adult themes. However, AdultBlock + also covers typos and homoglyph variants of a brand. For example, it could tell the difference between I, l and ĺ (uppercase i, lowercase L, and lowercase L with an acute accent) when one is used by a third party to try to secretly infringe on a trademark.

The service also includes equivalent internationalized domain name characters and can recognize more than 20 scripts.

To register for any of the AdultBlock services, a trademark must have its trademark validated in the Trademark Clearinghouse or participated in the original .xxx Sunrise program.

According to Wilke at Corsearch, AdultBlock + can also help protect consumers from new threats that have emerged or grown since 2011.

“Homoglyph variations are an added bonus as brands often ignore this when registering. We have had several instances where customers have never seen local language variations only to be surprised when a problem arises,” he says.

MarkMonitor’s King agrees: “The internet is very different from what it was 10 years ago (when Sunrise B started),” he says.

“If a brand doesn’t block, they run the risk of opening up to other violations, such as phishing attacks. Data suggests that this type of attack is on the rise, and bad actors often use typos or homoglyphs in domains.

“A brand might try to register domains defensively, but with hundreds of possible variations, you have to stop at some point.”

Mills at Safenames adds that phishing scams are often used to trick consumers into divulging data or personal information, which is another potential headache for a brand whose name could be used in this regard.

A lot can change in 10 years – especially in the online world. Phishing attacks cause extensive reputational damage, especially on social media. They are still a big problem.

The case for AdultBlock is far more compelling than a generic blocking service. It’s about reputation management, brand protection and inexpensive domain management.

Adult entertainment and mainstream businesses need to coexist on the Internet. With more than 80% of all adult website searches starting on Google, it’s easy to see why fraudulent operators want to take advantage of the search traffic generated by the more than 1.7 billion people who use Google every day.

AdultBlock and AdultBlock + strike the right balance between cost and defense value with smart proactive protection for brands and their consumers.

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