The hole in Sunrise B

Article  \  28 May 2011

Most trade mark professionals are aware of the current .xxx sunrise periods. A trademark owner can apply now to block its trademark from being registered as a .xxx domain name once those registrations become publicly available.

Many people are also aware that ICM, the registry responsible for .xxx, developed a reserved list of names that the registry pre-emptively blocked even before the start of the sunrise periods. This was sold to us as a good thing. It meant that culturally important terms (like Muhammad) and things like celebrity and city names were automatically blocked.

Then there is the bit that most people didn't know. ICM also put a large number of 'premium' names on the reserved list. These cannot be blocked by trademark owners in the sunrise period.

The .xxx Launch Plan says a "Premium Name is a name that has been reserved by the Registry in its sole discretion, which may be offered for registration to members of the Sponsored Community on other than a first-come first-served basis." And "The Registry may allocate Premium Names from time to time in its discretion via (i) request for proposal; (ii) auction; and/or (iii) other reasonable mechanisms."

The commentary prior to launch said that there would be no trademarks on the reserved list. Wrong. We have already had two Sunrise B applications for clients' trademarks refused because the words concerned are on the reserved list. They are common dictionary words, but also registered trademarks - just like APPLE and TWITTER are. As examples of words that cannot be blocked in Sunrise B, try searching "poker" or "big" (not our clients marks) at Both of those words are reserved. Some domains have in fact been pre-allocated to registrants and are already live even though Sunrise B is still going- or for example.

It seems that ICM have reserved these premium names to sell at auction or otherwise. They are happy to block names, but only if they won't be valuable to them. Surely Sunrise B should trump 'premium' names. Why should ICM themselves be an exception and be allowed to use or sell names when the whole idea of Sunrise B is to prevent that? I suggest an urgent revision that allows trademark owners to block premium names on the reserved list just like any other trademark. Otherwise Sunrise B has a big hole in it and is ineffective for a number of owners of registered trademarks. And questions of liability arise - especially considering these Sunrise B applications are putting ICM on actual notice that these trademarks exist and that their owners object.

We only hope that the trademark protections for the new gTLDs are going to be somewhat more robust. This doesn't inspire confidence that ICANN can actually achieve that.