The ICM Registry published a white paper today entitled .XXX Domains and Trademark Issues.
The paper seems to answer threats like the one that came from Hustler last week that seemed to indicate that trademark holders are somehow going to try to hold the ICM Registry liable for trademark infringement.
This paper seems to be a response to that threat and the answer from ICM is clear:
You can’t sue us.
Here are the highlights from the 7 page report
“This White Paper briefly sets forth the history of the top-level domain (“TLD”) registry system, and how ICM’s .xxx domain name registry (the “Registry”) fits within the larger domain name system overseen by the Internet Corporation for Assigned Names and Numbers (“ICANN”). It explains the Registry’s procedures to address conflicting trademark claims, and outlines basic principles of law that govern this area.”
“Some domains are defined by category and subject matter, while others are unrestricted, like .com. The various domains have adopted different procedures to deal with potential claims that a domain name might infringe a trademark. These have included sunrise periods, claims periods, and other mechanisms. All domains must adhere to ICANN’s Uniform Domain Name Dispute Resolution Policy (“UDRP”).”
“ICM Registry has adopted more extensive protections for existing domain name holders and trademark owners than ever implemented by any previous registry. ”
“Unlike other registries, ICM is offering a dual sunrise period, for both adult industry members with existing trademarks and domain names and other trademark owners who may wish to prevent the use of domain names incorporating their trademarks within the .xxx space.”
“Also, ICM has added new, robust dispute resolution procedures to address potential trademark infringement, including a Rapid Evaluation Service to resolve disputes quickly.”
“ICM Registry’s trademark protection policies are far more extensive than required by law.”
“Courts have held uniformly that the mere registration of a domain name does not amount to infringement of a mark similar to the name. They also have made clear that neither registry operators nor registrars are liable for infringement, dilution, or Anticybersquatting Consumer Protection Act expressly immunizes both registrars and registries from liability for registration of domain names. No court has ever held that a domain registry, which is a step removed from the registrars, can be held liable for the registration of a domain name incorporating another party’s trademark.”
“The .xxx domain is an industry-specific TLD, approved by ICANN.”
“The Registry accepts applications for new domain names under the .xxx extension, and manages the database of such domains. Like other industry-specific registries, the Registry limits registrations to those applicants verified as members of the designated industry.”
“In this case, the Sponsored Community is defined as individuals, business, entities, and organizations have voluntarily agreed to comply with all Policies and Best Practices Guidelines promulgated by the International Foundation for Online Responsibility, and either (a) Provide Online Adult Entertainment intended for consenting adults; (b) Represent Providers; or (c) Provide products or services to Providers and Representatives.”
“Unlike other registries, ICM Registry is offering a dual sunrise period, for both adult industry members with existing trademarks and domain names and other trademark owners who may wish to prevent the use of domain names incorporating their trademarks within the .xxx space. Also, ICM has added new, robust dispute resolution procedures to address potential trademark infringement. We believe this makes the Registry the most advanced, responsive and fair domain name registry that has yet been introduced. Set forth below are further details on our policies and procedures.”
“The Registry’s verification and sunrise provisions are intended to be more comprehensive and stringent than any ever employed by a domain registry. In terms of verification, the Registry’s Membership Application Process is designed to confirm the status and validate contact information for prospective registrants who are members of the Sponsored Community.” “With respect to the sunrise provisions, members of the Sponsored Community may apply during the sunrise period to register .xxx domains corresponding to registered trademarks and existing domain names in other TLDs.”
“If more than one sunrise application is made for a name by different applicants, all such applicants for that name will be notified of the other applications. In the event any applicant proceeds with a registration request after such notification, that applicant will be deemed on notice of the intellectual property claims submitted by the other sunrise applicants.”
“An auction will be held to resolve competing claims from parties that proceed with registration requests after being notified of other applicants for the same domain.”
“Of course, all registrants of domain names will be subject to the UDRP. ”
“In addition to these procedures, ICM will implement two new methods to prevent abusive registrations. The Charter Eligibility Dispute Resolution Procedure will be available to challenge any registration by an entity that is not a member of the Sponsored Community and therefore not qualified to register a resolving name in the .xxx TLD. ”
“Separately, under the Rapid Evaluation Service, independent experts will make determinations, in certain cases within 48 hours, for claims involving well-known or inherently distinctive marks.”
The white paper then when it to a long discussion of how A registry and ICM in this particular case is not liable for trademark infringing domain names:
“It has been suggested – perhaps carelessly – that if any domain name is registered on the Registry by a registrant that incorporates a term or terms in which another party claims to hold pre-existing rights, ICM would be subject to legal claims for trademark infringement, unfair competition, and the like. There is no authority for this astonishing claim. United States federal courts have been exceedingly clear in holding that neither domain name registries nor registrars are liable for the mere processing of domain name registrations. As one court presented with such a claim explained, “Congress did not cause defendant as a domain name registrar, or as keeper of the registry, to be subject to civil liability,” because if it had done so, “it would cause the domain name registration system in its entirety not to be feasible.”
The registration of a domain name containing another party’s trademark in and of itself is not an infringement.
“In this regard, the registration of a domain name that incorporates a trademark “is not the use of the mark in connections with goods or services.”
“Under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”), enacted after the Lockheed case, registration of a domain name with a “bad faith intent to profit from the mark” may constitute a violation of the Lanham Act in certain circumstances. However, courts have made clear that “none of the conditions and conduct listed [in the ACPA is] applicable to a person functioning solely as a registrar or registry of domain names.”
“A registrant may have numerous defenses to claims of cybersquatting, including but not limited to fair use, the existence of a license from the trademark owner, independent trademark rights in other classes of goods and services or geographic areas than the plaintiff trademark owner, and the like.”
“Courts have held unequivocally that registrars are not liable for the mere act of registering a domain name on behalf of a customer, because “acceptance of domain name registrations is connected only with the names’ technical function on the Internet to designate a set of computers.”5 That is, registrars are not involved in the decision of a registrant to select a domain name that incorporates someone else’s trademark.”
“Given the various valid reasons a registrant might have to register a domain name even where some other party has a trademark in the particular term, a registrar cannot be in the position of determining competing claims.”
“In some cases, courts do find that a party that induces or contributes to another party’s trademark infringement can be held liable under a theory of secondary liability. However, this theory simply does not apply where a registrar takes no action other than accepting the registration. The courts have found that knowledge of infringement cannot be imputed to a registrar even after the registrar receives notice of the existence of another party’s rights, in light of the inherent uncertainty with respect to the scope of trademark rights, and the mere assertion by a trademark owner that a domain name infringes its mark is not sufficient to impute knowledge of infringement.”
“Moreover, the domain name system is global, while trademark protection is limited geographically. Neither a registry nor a registrar can be expected to act as the arbiter of regional disputes. This is why ICANN devised the UDRP.”
The ACPA expressly immunizes both registrars and registries from liability for registration of domain names:
“”A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.”
“The courts have confirmed the scope of this immunity, holding that “domain registrars are granted immunity for registering or maintaining a domain name for another.”
Finally, no court has ever held that a domain registry, which is a step removed from the registrars, can be held liable for the registration of a domain name incorporating another party’s trademark. Indeed, at least one court unequivocally has held that in undertaking its function as a registry, a registry operator cannot be held liable for infringement.”
“In some cases, courts do find that a party that induces or contributes to another party’s trademark infringement can be held liable under a theory of secondary liability. However, this theory simply does not apply where a registrar takes no action other than accepting the registration.”
“The courts have found that knowledge of infringement cannot be imputed to a registrar even after the registrar receives notice of the existence of another party’s rights, in light of the inherent uncertainty with respect to the scope of trademark rights, and the mere assertion by a trademark owner that a domain name infringes its mark is not sufficient to impute knowledge of infringement.”
“Moreover, the domain name system is global, while trademark protection is limited geographically. Neither a registry nor a registrar can be expected to act as the arbiter of regional disputes. This is why ICANN devised the UDRP.”
The ACPA expressly immunizes both registrars and registries from liability for registration of domain names:
A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name.
The courts have confirmed the scope of this immunity, holding that “domain registrars are granted immunity for registering or maintaining a domain name for another.”
“Finally, no court has ever held that a domain, which is a step removed from the registrars, can be held liable for the registration of a domain name incorporating another party’s trademark. Indeed, at least one court unequivocally has held that in undertaking its function as a registry, a registry operator cannot be held liable for infringement. That court stated:
“None of the conditions and conduct [for liability] would be applicable to a person functioning solely as a registrar or registry of domain names. . . . Congress did not cause a defendant as a domain name registrar, or as keeper of the registry, to be subject to civil liability under Section 1125(d). . . . The reason the UDRP was developed was to provide the mechanism to resolve these disputes. Not only would imposing plaintiff’s scheme render the UDRP nugatory, it would cause the domain name system in its entirety not to be feasible.
“It should be abundantly clear from the above that the planned operations of the Registry are lawful, non-discriminatory and in accord with ICANN policies.”
“We hope that the above clarifies the situation for many in the community and we look forward to a successful Launch in September.”
John Berryhill says
Meanwhile, Hustler.info resolves to something else entirely, demonstrating how much of this “controversy” is really about something other than trademarks.
George Kirikos says
It’s unclear whether ICM Registry is aware of the ruling last week in the Verizon v. Above.com / Trellian case:
“ORDER RE: DEFENDANTS’ MOTION TO DISMISS SECOND CAUSE OF ACTION by
Judge Audrey B. Collins denying 19 Motion to Dismiss: The Court finds
this matter appropriate for resolution without oral argument and will
not hear argument at the July 18, 2011 scheduling conference, which
remains on calendar. The Court finds that a contributory liability
claim exists under the ACPA and Verizon has sufficiently alleged a
claim on that basis. Therefore, Defendants’ motion to dismiss is
DENIED. (see document for further details) (bm) Modified on 7/14/2011
(bm). (Entered: 07/14/2011)”
Andrew reported on it on DNW.com, with the full ruling re: “contributory liability”.
Stuart Lawley says
Yes George, we are, of course, aware of the case you mention.
This case is like other recent cases that have not been willing to say
that registrars are shielded from liability, where they are operating
privacy services. The problem for a registrar that offers a privacy
services is that the party whose mark is being infringed has no
information about the infringer (i.e., the registrant of the infringing
domain), and several courts have said that in those circumstances the
registrar basically steps into the shoes of the registrant, and can be
sued for infringement.
In this particular case, the allegations go beyond the privacy program,
and encompass allegations that the registrar is engaged in a widespread
scheme to register infringing domains itself, and monetize them (using a
parking service). The court, in refusing to dismiss the contributory
infringement claim, confirmed that registrars can only be held liable in
“extraordinary circumstances”:
“Defendants are also concerned that imposing contributory liability for
routine domain name registration would require the registrar to police
hundreds of thousands and perhaps millions of registered domain names to
determine whether registrants are registering infringing domain names in
bad faith. Defendants also worry that innocent registrars who provide
legitimate privacy and monetization services could be punished if
contributory liability is
recognized. Yet, as Solid Host noted, these concerns are alleviated by
finding contributory liability only when “exceptional circumstances” are
present beyond simply registering infringing domain names or providing
privacy and monetization services. See Solid Host, 652 F. Supp. 2d at
1116 (“Because of this, and because a defendant in NameCheap’s position
may not easily be able to ascertain a customer’s good or bad faith, the
court agrees with the Ford Motor Co. court that ‘exceptional
circumstances’ must be shown to prove the degree of knowledge required
to impose contributory liability for cybersquatting.”)”
So, the language of the order supports what we’ve
been saying.
George Kirikos says
Yes, but it’s not a giant leap that Hustler appears to need to make, to go from “contributory liability” to victory. Indeed, if you look at what they’re doing, they’re giving you notice, which is setting the stage for action later. They’ll be able to say to the judge “We gave them notice, but they allowed our adult TM to be registered in an adult registry….” Given Hustler’s history of winning in court in the past, they wouldn’t seem to be threats that should simply be ignored.
Anyhow, court cases are won in court, not on blogs or in the press. But, it should improve the sale of popcorn if things escalate. 🙂
Jp says
“you can’t sue us” is a foolish thing to say. The ability to sue someone or something and winning or losing a lawsuit are mutually exclusive.
John Berryhill says
“the full ruling re: “contributory liability””
There was no ruling on contributory liability.
That was a decision made on a motion to dismiss the case for failure to state a claim.
First, it was not a decision on the merits of the claim. This type of motion – called a 12(b)(6) motion – is a typical attempt to dismiss a lawsuit at a very early stage by pointing to the allegations of the complaint and stating that, taking all of them as true, the complaint fails to make out a cause of action. For example, if you are suing me for hitting you with my car, and your complaint says, “I was hit by a car, and I have a broken arm”, I would make this kind of motion because your complaint, taken as true, does not allege that I hit you with a car.
Second, there may be later developed facts which indicate that the defendant was or was not a participant in the alleged cybersquatting activity. Hence, one can make out a sufficient complaint, but the suit may stand or fall on facts which have not yet been developed in the record.
The point is that this kind of ruling is about whether the suit alleged a sufficient ground to go to the step of figuring out whether the things alleged really happened.
There is probably no question that many new tld registries will be sued. For $350 one can file a federal lawsuit that might survive preliminary dismissal motions. However, making a claim, and actually proving and prevailing on one, are two different things.
John Berryhill says
““you can’t sue us” is a foolish thing to say”
I agree, JP.
Who, exactly, said that?
D says
So they published their legal opinion. Looks like they didn’t tell their lawyers that they were going to have a reserved list where they systematically chose thousands of names that they intentionally excluded from the sunrise periods. Sorry, all this ‘knowledge cannot be imputed to a registry’ stuff doesn’t wash when you made a list of premium names to keep for yourself. ACPA only allows for limitations on liablity if the registry sells a domain name without a specific intent to profit on that domain name. Auctioning off a premium domain name would not qualify for that limitation.
TheBigLieSociety says
“they systematically chose thousands of names that they intentionally excluded…”
=====
That seems to be Par for the Course in the ICANN.WORLD
When the Peer-2-Peer .XXX Registry gets rolling there is no way to exclude names because there is NO SINGLE POINT of CONTROL – The Network IS the Registry
Google://NameCoin
c0ffee says
it will be fun to watch indeed. it will be like the vanity phone number business trying to stop phone makers from implementing a speed dial feature. meanwhile it’s been included it with phones for decades. d’oh!
everyone has speed dial. anyone can use it. there is no added, per-use cost. and it works just as well as a vanity phone numbers for being easy to remember. what happens when users figure that out?
users are not yet aware they can do their own names in speed dial-like fashion or that they can exchange name info with others, or that they can connect directly to their friends, peer-to-peer. but when they get a taste of this, they will want nothing less.
however there’s the small matter of needing a reachable number. it’s a show stopper. how many users today have one? that’s why peer-to-peer is so rare. but this will change.
it will be good business for isp’s. it might also push ipv6 if isp’s can’t meet the demand for directly reachable numbers. today’s isp’s are the telephone companies of the future.
it’s extrememly difficult to call someone else directly if both of you are behind sitchboards and neither of you have a direct dial number. users will start to demand direct dial once they get a taste of it.
or, alternatively, none of this will come to pass. users will stay ignorant and continue being manipulated, mistyping an endless supply of silly domain names++ from now until forever.
++most of them all pointing to the same few numbers
unknowndomainer says
“You Can’t Sue Us”
That is, I believe, the Michael H Berkens short but sweet summary.
===
I find everything very disingenuous – the argument that the registration of a name doesn’t legally amount to a TM violation seems to contradict the notion of setting up a period where companies can, ahead of normal users, register their TM names.
I also find the whole conversation of UDRP being sufficient as being somewhat laughable. ICANN sets up a system that essentially is a peanut gallery court -making decisions that are binding, except when they’re not and they are legally challenged.
It seems to me that the most wonderful thing about all of this is that ICM is set to make money from TM protection and the IP lawyers of the world are set to make money from arguing about it on behalf of clients.
My summary is that UDRP fails to meet any real legal standard and defers to “local jurisdiction” through appeal – I’m sure it’s easy to sort out the situation if the infringer happens to register the domain in say, I don’t know, the Cayman Islands.
Question 1: I thought that ICANN was going to be named in the complaint and that one component of the complaint was that the ability to allocate domain name extentions like .XXX would be in conflict with the Sherman Antitrust Act
Question 2 And of far more interest to me. It does appear to me that when the governance and management of domain names falls entirely into the realm of a private industry that it would be increasingly difficult to try and manage any concept of TM management and ownership. If there exists 100+ TLDs and each run by a private industry, why would a domain name, in effect, be any different than a Facebook page, a WordPress subdomain, a Blogger Account, a Twitter Id, and Apple or Android Ap or even something like Hustler.UnknownDomainer.com should I choose to use subdomains? I can’t see how the ACPA can ever hold up long term even WITHIN the limit jurisdiction that currently exists.
P.S. I am not a lawyer, which I am sure will be obvious to the educated and skilled legal experts who commented before me.
unknowndomainer says
No idea why I’m commenting on such an old post, I must be really bored or stupid or both.