LOS ANGELES—DomainIncite.com has posted an article suggesting that companies thinking about defensively registering .XXX domains should hold off doing so until details regarding “ICM’s post-launch enforcement mechanisms to fight cybersquatting” are clarified.
“So far, all we’ve seen from ICM is a white paper, prepared by its partner IPRota, that outlines the policies that will be in place during the pre-launch sunrise period,” wrote Kevin Murphy. “But the company plans to have some of the most Draconian post-launch IP rights protections mechanisms of any new TLD to date.”
The new protections come despite claims that defensive registrations will not be an issue in the upcoming rollout of gTLDs. In Feb. 2010, a survey conducted by Minds + Machines concluded, “A survey of the domain registration behavior of Fortune 100 companies reveals that they have not registered many of their trademarks in recently created generic top-level domains (gTLDs). A sample of 1043 brands were registered in less than 30 percent of the eight new open gTLDs created after 2001. If historical registration data is a guide, brands are unlikely to undertake many defensive domain name registrations in the proposed new gTLDs, and furthermore are unlikely to be the victims of cybersquatting.”
While the survey was focused on the planned rollout of gTLDs, the question whether or not to protect one’s trademark is of more immediate concern with respect to the .XXX sTLD, which was recently approved by ICANN and is speeding toward implementation. While .XXX domains may only be actively used by sites containing adult content, ICM Registry ICM and its partner, IPRota, have prepared a white paper that outlines rights protection mechanisms for all trademark holders.
A site called XXXempt.com created for the same purpose states, “The key innovation from ICM is providing an opportunity for rights owners, from outside the adult entertainment industry i.e. the sponsored community, in the case of .XXX, to opt-out.”
That “key innovation” implies a certain expectation that rights owners from outside the industry will in fact be interested in protecting their trademarks within the .XXX TLD, despite the findings in the Minds + Machines survey. Whether they will or not, the unambiguous message from Murphy is that rights holders should wait because the “Draconian” post-launch IP protections may be far cheaper and faster to use than opting out.
“If, as a registrant, you think the Uniform Rapid Suspension policy ICANN plans to enforce on new TLDs is tough, you’ll likely have a bigger problem with Rapid Takedown,” wrote Murphy. “Rapid Takedown is expected to be modeled on the Digital Millennium Copyright Act. It will use UDRP experts, but will only take 48 hours to suspend a domain name. ICM has described it like this:
Rapid Takedown
Analysis of UDRP disputes indicates that the majority of UDRP cases involve obvious variants of well-known trademarks. ICM Registry does not believe that the clearest cases of abusive domain registration require the expense and time involved in traditional UDRP filings. Accordingly, ICM Registry will institute a rapid takedown procedure in which a response team of independent experts (qualified UDRP panelists) will be retained to make determinations within 48 hours of receipt of a short and simple statement of a claim involving a well-known or otherwise inherently distinctive mark and a domain name for which no conceivable good faith basis exists. Such determinations will result in an immediate termination of resolution of the domain name, but will not prejudice either party’s election to pursue another dispute mechanism. The claim requirements will be modeled after the Digital Millennium Copyright Act.
The cost to utilize Rapid Takedown has not been set yet, however, and Murphy stated that other questions regarding the duration of suspensions and the ability of the complaint to have a domain transferred and a registrant’s right of appeal also have yet to be addressed.
“In addition,” Murphy added, “ICM plans to permanently ban cybersquatters that are ‘found to have repeatedly engaged in abusive registration.’ Abusers will lose their .xxx portfolios, even their non-infringing domains, and will not be able to register any more.
“Trademark holders should wait for their full range of options to be revealed before panicking about high sunrise fees,” he concluded.
The panic is not completely unfounded. Murphy reported two days earlier that it could cost up to $650 to purchase a .XXX domain or keep your name off one.
“A report in World Trademark Review (registration required) this morning suggests that some brand owners may shell out over $100,000 in what it calls a ‘.xxx tax,’ if they choose to defensively enforce their entire portfolio of hundreds of valuable trademarks,” Murphy wrote, adding, “They are under no obligation to do so, of course. ICM has some of the highest prices and strongest intellectual property rights protection mechanisms of any domain extension to date, which may help to discourage mass cybersquatting.”
Rights holders aside, the cost to claim a domain before the official launch of the top-level domain will be high enough. According to Murphy, “Porn sites can expect to pay about $300 if they want to claim their .xxx domains before the official launch. They do not have to own a trademark, however—simply owning a string in an existing extension such as .com or .co.uk will be sufficient to register during ICM's ‘sunrise’ period.
“In the event that a porn site and a non-porn site both apply for the same domain name,” he continued, “the porn site will be given priority, although they will be given a warning that a trademark owner is also interested in the domain, and may find themselves on the receiving end of a complaint.”
