It appears I’ve found a blogging niche: the seedy, salacious, saucy legal topics everyone is too scared (or maybe smart) to write about. (And this topic doubles as a nice relief from the usual “holiday shopper gets mauled in battle over the last available Let’s Rock Elmo“ headlines.) Colleges, universities and businesses spent this holiday season shopping for a special kind of XXXmas gift — the gift of a good name.
On December 6, 2011, the new domain extension .xxx was gobbled up by the most unusual suspects, with more than 55,000 new names registered within the first 24 hours. The .xxx top level domain (TLD) was designed — prepare to be shocked here — exclusively for adult entertainment content. But ICM Registry, which is operating the new TLD, also opened up registrations to other organizations looking to protect their trademarks from scandalous misuse — or from those nefarious “cybersquatters” who might be looking for a buck NOT to put the domains to no good (like the brilliant entrepreneur who, in the wonder years of the Internet, operated WhiteHouse.com as a porn site (the real website is WhiteHouse.gov).
In other words, the Internet’s new red light district is open for business to those who were naughty OR nice this Christmas. But are the nice kids who come to the new .xxx marketplace late going to be at the mercy of the fast movers on the naughty list?
Buy Now or Sue Later?
To be clear, plenty of institutions out there aren’t waiting for the courts to protect them from their bizarro .xxx counterparts: the business of .xxx registrations is booming.
Schools such as the University of Chicago, BYU, the University of Kansas, and Northwestern have bought several .xxx domain names similar to their .edu web addresses to prevent those sneaky porn companies from registering those domain names and using them for not-so-scholarly pursuits. My own beloved alma mater, UC Berkeley, reportedly paid $1,200 for six .xxx web addresses based on variations of the school’s name. (Well, at least now I have a legitimate excuse for ignoring those alumni committee fundraising calls.)
Valerie Gill, Indiana University’s Director of Licensing and Trademarks told the Associated Press(probably with a straight face), “We’re not trying to think of every variation of Girls Gone Wild or Girls of Indiana or Hoosier Girls. The possibilities are endless, and we could be spending thousands and thousands on that. The majority of us are just trying to hit our main trademarks and use that as a means for fighting uses we can’t even dream up at this point.” (I can’t decide what part of this is my favorite: that a university staff member was paid to brainstorm a list of seedy web addresses to purchase, or that they’re afraid the staff member wasn’t sufficiently creatively dirty-minded. Next time, they could just call me. Or any group of pubescent boys.)
Nor are the scholarly minds in the ivory towers the only ones out there looking to protect their brands. FairWinds recently reported that 75% of the moneymakers and bootyshakers of the Fortune 500 — including prominent brand names like Nike, Pepsi, Target, Southwest Airlines, and Levi Strauss — have staked out .xxx domains. (Spokespersons for these companies say they don’t plan to use the domains. Oh, what a tragic waste! Just imagine the possibilities! Come on, Nike: “Just Do It.”)
I’ll Shop Here, But I Don’t Have to Like It
Interestingly, the noisiest opposition to the .xxx TLD has come from the adult entertainment industry itself. The Free Speech Coalition, the industry’s trade group, lobbied against its creation, expressing fears of censorship through the new domain and complaining about the registration fees payable by those who are just trying to protect their own business name — a $200 registration fee per domain. (ICM celebrates the fact that registrants pay a one-time fee rather, than a normal annual fee to hold the domain.)
The unfortunate reality (maybe not for trademark attorneys) is that with every new TLD that is added to the Internet, the opportunity for trademark infringement and dilution through cybersquatting increases substantially. And for that reason, some commentators have argued that, for all the concern about no-good cybersquatters registering domain names to either trade on the names of established business or sell off the domains for profit, ICM itself is the real cybersquatter. Allison Vivas, president and CEO of Pink Visual Productions, an adult website operator told the AP she thinks “it kind of becomes extortion” when her company — or any organization — has to pay ICM for a domain name it may never even intend to use just to protect its trademarks from .xxx poachers. Manwin Licensing, the operator of Playboy’s websites, is suing both ICM Registry and ICANN, claiming ICM is unfairly overcharging (10 times the amount of the .com name) for use of the TLD.
For Those Who Are Late to the Party
Not everyone was as diligent as UC Berkeley, and cybersquatters have apparently gone wild on these .xxx domain names. MSNBC reports that when it contacted Justin Crews, the owner of “Huffington Post.xxx,” he said he plans on selling the name to “anyone” who might be interested. When they contacted the purchasers of msnbc.xxx and nbcnews.xxx, the owners stated that they bought it strictly “to re-sell it” and to “make money; that’s the bottom line.” More entertainingly, Father Federico Lombardi, the Vatican’s spokesman, reported that an unknown party had purchased Vatican.xxx. The Vatican denies purchasing the site (of course, they deny a lot of things), so one can only imagine the sacrilege that may soon be plastered in the name of the Vatican. [Editor’s Update: Or not. Looks like the Vatican can rest easy.]
So what happens to those companies that failed to claim their .xxx domain before speculators and smut-peddlers got there first? And what happens to those naughty cybersquatters (other than coal in their stockings) if they decide to get X-rated instead of holding the domain names for the highest bidder?
As we first discussed on Law Law Land when the newborn Pac-12 sports conference discovered that pac12.com was already unavailable, cybersquatting is defined as bad faith registration of domain names, particularly names that are identical or confusingly similar to existing trademarks, with the intention of reselling them or otherwise profiting from them. Using a .xxx domain name to trade off the reputation of the trademark holder is a big legal no-no. In the U.S., the Anticybersquatting Consumer Protection Act (ACPA) was enacted in 1999 to thwart cybersquatters who register Internet domain names with the intention of selling the domain to the trademark owner or a third party, and creates a civil right of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name.
Trademark holders can also turn to the Uniform Domain Name Dispute Resolution Policy (UDRP) to resolve their dispute with the registrant. The UDRP process allows companies to file complaints when parties register domains which are identical to or include their trademarks and similar variations. Stuart Lawley (founder & CEO of ICM Registry) said that the rights protections that are built into its agreement with .xxx registrants gives ICM tools to combat malicious conduct. However, some trademark owners may prefer to bring a claim under the ACPA because it offers more remedies (including monetary damages) than the UDRP (which ultimately provides only for the cancellation or transfer of the domain name).
And as a word of warning to those tempted to switch to Santa’s naughty list for next Christmas: ICM recently announced that ICM would not be “complicit in the theft or abuse of intellectual property” and was suspending domain registrations “that appear to involve unmistakable, blatant cybersquatting.” In an unprecedented move, ICM also appears to be proactively suspending infringing domain names. Its swift move to suspend the questionable registrations shows an effort to nip this in the bud before trademark holders even have to resort to its dispute resolution policies — even if ICM somehow only got around to it after collecting the first 80,000 or so domain name registration fees.
You can’t help but wonder if all those colleges, universities, and Fortune 500 companies are now wishing they had donated those registration dollars to charity this Christmas and let ICM handle the regulation of the domain registrations itself. As my younger brother so wisely said this year, “Well, none of us really needs anything and people around the world need help, so you’re all getting mosquito nets donated in your name for Christmas.” Oh shucks — I was hoping he would reserve amberburroff.xxx for me. Doesn’t he know I’ve got a sterling reputation to protect?