I just received this from Diane Duke of the FreeSpeechCoalition.com which “Urges Adult Trademark Holders to Protect Brands from .XXX with Letter of Notice for ICM Registry”:
A letter template has been created by Free Speech Coalition (FSC) for adult online business owners to send to ICM Registry, to demand that their trademarks be protected from sale on .XXX domains to third parties.
The “letter of notice” informs ICM Registry – operators of the .XXX domain – that the sender will consider any infringement on their trademark as potentially actionable. The letter also clearly states concerns about potential anti-trust issues and unfair businesses practices on the part of ICM, as well as the certainty of cyber-squatting and other exploitation of established trademarks in the .XXX domain.
“This template provides adult businesses which do not want the risk of participating in the precarious .XXX experiment with a path to protect their intellectual property and valuable brands,” FSC Board Chair attorney Jeffrey Douglas said. “This template should be discussed with their lawyers and adapted to their needs, but it can be a valuable tool to prevent the damage to their long developed good will and valuable web names.”
The letter template is available for download at the FSC website and FSC Blog. Addressed directly to ICM CEO Stuart Lawley, the letter can be sent to ICM Registry’s address in Florida.
“FSC is inviting adult businesses to put ICM Registry on notice that they do not have permission to sell the .XXX version of their trademarked names and brands,” said FSC Executive Director Diane Duke. “It is critical that ICM Registry understand that the adult community will not tolerate ICM’s business model, which is built on frightening existing adult companies into paying ICM in order to protect their brand and trademark.”
Adult companies that have already issued demands to ICM Registry to protect their trademarks from infringement include Hustler/LFP, Manwin, Pink Visual and AEBN. FSC encourages all adult online businesses to be pro-active and to put ICM on notice concerning any infringement of trademarks.
Currently, ICM is offering “sunrise” period pricing for adult and mainstream businesses willing to pay to block sale of the trademarks in the .XXX domain. The letter template refers to sunrise period blocking practices as “inadequate,” and that ICM is not relieved of liability in the event of trademark infringement or other possible intellectual property violations.
Recent reports indicate that only 20% of businesses registered for .XXX domains are adult-related.
FSC urges all adult online businesses to stay .COM and say NO to .XXX – bad for the Internet and bad for your business.
IMHO the Freespeechcoalition.com is good minded group but has no idea of how the Internet works, trademark laws work or the functionality of ICANN.
At the end of the day, 5 years from now, I predict that the vast majority of the members of the FSC will own an .XXX domain at a much greater cost to the domain holder than if they gotten on board at the forefront of the .XXX extension
Good for domainers.
“This template provides adult businesses which do not want the risk of participating in the precarious .XXX experiment with a path to protect their intellectual property and valuable brands,”
Huh? Trademark holders already possess avenues of redress in the event of the infringement of their brands. This is akin to telling an ammunition manufacturere that they can’t sell bullets because they might end up being used in a crime. The xxx registry has the right to sell whatever domain names they want and the mere acquisition or sale of same does not in and of itself constitute infringement, it is what is done with the domain name or how it is used that would determine that. While I have not read the “template” I’m prepared to say that its not worth the paper its written on.
Just wait till they find out about all the ones sold off BEFORE sunrise
This is going to get pretty interesting. 😉
In what way is it going to get interesting?
If you own the TLD you can do with it as you please
Its good to be king
“In what way is it going to get interesting?”
I just thought some .com owners or established websites may take issue with the advertising about the sunrise period (and what its for) when so many of the best domains have been sold off already.
Who knows? It was just a thought. Time will tell.
“Its good to be king”
There’s a few Kings in Europe that would beg to differ 😉
Its good to be the Prince, the prince gets all the girls telling them someday he will be King.
Mike I watched that video way back, if you remember that was a panel with the one guy from .xxx. Some adult owners showed they understood nothing about domains.
I read this twice because I am not sure what are they trying to accomplish here with this ?
I guess maybe they don’t want to pay to reserve the name in the registry and are trying to state they will fight any registration. I guess PinkVisual would say we won’t pay you to secure our name and we are warning you not to let anyone else get the name. Would you agree ?
.xxx is an sTLD, not a gTLD–an important distinction. You can open up Chevron Awards and Trophies, but you cannot open up Chevron Gas Station. You can open McDonalds Plumbing, but not McDonalds Hamburgers. So, I could go out right now and open Pink Visual Optometrists. But, I may not open PinkVisual.xxx
@Bogatoid I can’t speak for the US; but in the UK mere registration of a domain name has been held to amount to both passing off and registered trade mark infringement. That Appeal Court decision has been cited with approval in other common law countries.
So far, the claims have been against registrants. However, given that registries are now profiting from the registrations and are seemingly being put on notice, I am not sure a court would find it too big a leap to find them liable as well.
I do not know – could all be PR and hype – but why not ?
“That Appeal Court decision has been cited with approval in other common law countries.”
In the US, the statutory provisions of the Lanham Act are controlling. In particular, there used to be a habit of suing the publishers of telephone directories for contributory trademark infringement on the basis of advertisements placed in them by trademark infringers. The same section of the Lanham Act which confers immunity on telephone directories, newspapers, and other publishers of advertisements was amended by the ACPA to include safe harbor provisions for registries (15 usc 1114).
The very fact that that the ACPA exists at all to provide a cause of action against persons who register domain names in bad faith presumes that registries are not in the business of preventing that from happening. The fact that anyone can put anything they would like into a letter and send it to the registry doesn’t change the situation.
Perhaps someone would like to explain what the registry is supposed to do with these letters. If someone has a trademark for “EXAMPLE” in Europe, and wants to block the name, while someone else has a trademark for “EXAMPLE” in Canada, and wants to register and use the name, then what in your mind is the appropriate thing to do?
After answering that question, then whose responsibility is it to sort out those situations and at what cost to whom?