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ICM reveals tough .xxx cybersquatting rules

Kevin Murphy, August 18, 2011, Domain Policy

ICM Registry has finally taken the wraps off its rapid domain name takedown service, which promises to make life difficult for cybersquatters in the .xxx top-level domain.

The Rapid Evaluation Service, as it is known, is basically a souped-up version of the familiar UDRP that tilts the overall balance in favor of legit trademark holders.

It’s designed for companies or individuals who don’t want to be associated with .xxx domain names, and has the remedies to match.

Using RES, brand owners will be able to get a domain temporarily suspended in less than a week, and later have it switched off for good.

That’s right, if a name is lost under RES it goes into registry-reserved status. The complainant does not get control of the domain, and they don’t have to pay recurring renewal fees.

But it will not be cheap. The National Arbitration Forum is the only organization authorized to handle RES work, and it’s charging $1,300 per domain, with no discounts for multiple-domain cases.

RES does not replace UDRP, but it is based on it.

Like UDRP, its three pillars are the domain’s confusing similarity with the complainant’s trademark, the rights and legitimate interests of the registrant, and the question of bad faith registration.

While much of the RES has been copied straight from the UDRP, there are key differences.

ICM has codified some of the good case law that has emerged from the last decade of UDRP and eschewed some of the bad, arguably making RES less open to interpretation.

Notably, unless you’re filing to protect a personal name — celebrities, porn stars or just the average Jo(e) — RES is for nationally registered, in-use trademarks only. Other marks don’t seem to count.

Typos are explicitly included in the definition of confusing similarity (no microsfot.xxx), as are brand+keyword domains (microsoftporn.xxx).

Phonetic similarity also makes an appearance, which seems like it could open a great big can of worms.

The bad faith component of RES is very similar to UDRP, but with the addition of a typosquatting ban and the removal of the requirement to show the registration was made for “commercial gain”.

As far as registrants are concerned, there are some additional protections you won’t find in UDRP, notably this text, which seems to specifically make many generic terms immune:

(iii) the domain name in the .XXX TLD has a primary meaning apart from its secondary meaning as a trademark or service mark associated with the complainant, and is being used in connection with its primary meaning in association with which the complainant has not acquired distinctiveness in the adult-entertainment industry.

Technically, and very hypothetically, I interpret this to mean that if you registered apple.xxx (which you won’t) and used it to publish videos of men recreating that scene from American Pie, you probably couldn’t lose the domain to an RES complaint.

American Pie I expect this is largely of concern to companies that have registered trademarks that correspond to dictionary words. They may have to use UDRP as usual.

RES has previously been billed as a 48-hour solution, but in reality cases could take anywhere between three and five days before a Preliminary Decision is handed down.

After a complaint is filed, there’s a one-business-day turnaround for an administrative check, then another two business days for the panelist to decide what to do.

If a respondent has lost three or more RES cases in a year, the panelist will be entitled to presumptively consider them an “abusive registrant” for a preliminary decision.

Preliminary decisions can stop a domain resolving immediately, if the panelist thinks the complainant is likely to win and that there’s no “substantial likelihood of harm” to the registrant.

Registrants then have 10 days to respond before a final decision is made. If they default, maybe because they’re on vacation, they have up to three months to appeal.

In short, we’re looking at the bastard son of UDRP here.

I suspect the trademark lobby is going to quietly love it. If that’s the case, it might help the domain industry look a bit more respectable.

If you’re more likely to be a respondent than a complainant, you’d be well-advised to familiarize yourself with RES (and ICM’s other policies) before investing in gray-area .xxx domains.

The huge glaring problem with the policy as far as I’m concerned is that neither ICM or NAF is going to publish any of its decisions in full, only aggregated statistics.

This is ostensibly to protect the identities of the complainants, but it’s also going to cover up (probably inevitable) sloppy decision-making, which won’t be good for confidence in the .xxx TLD.

But if somebody cybersquats your mom, you’ll probably be glad of it.

ICM reveals .xxx launch dates, extends sunrise

Citing demand, ICM Registry has lengthened the .xxx sunrise period, which begins September 8, by three weeks. It will now end October 28, running for 50 days.

The new deadlines apply to all three sunrises, which will run concurrently.

Sunrise A-T – for porn publishers with trademarks.

Sunrise A-D – for porn publishers with matching domains in other TLDs.

Sunrise B – for anyone outside the porn business who wants to “turn off” their trademark in .xxx to prevent cybersquatting.

Successful Sunrise B applicants will see their chosen domains resolve to a standard information page explaining that the domain is not available for registration.

Post-launch, anyone can register a non-resolving domain that returns an NXDOMAIN response, but they’ll have to pay for it annually. Sunrise B applicants pay a one-time fee.

If applicants from Sunrise A and Sunrise B both apply for the same domains, the porn applicant will be given precedence, although they will be warned about possible trademark infringement.

If more than one Sunrise A applicant applies for the same domain, the fight will be taken to an auction, managed by Pool.com. Auction rules will be published at a later date.

The sunsrise is outlined in a policy document (pdf) ICM published on its web site today that sets out the rules for its pre-launch period.

The company has not yet announced details of its Charter Eligibility Dispute Resolution Procedure, nor its Rapid Evaluation Service, though it has said it expects them to cost between $750 and $1,500, depending on what deals it can come to with dispute resolution providers.

The Rapid Evaluation Service, previously referred to as “rapid takedown” will be an interesting one.

It’s expected to be a little like the Uniform Rapid Suspension process ICANN’s new gTLDs will have to implement, except it will only take about 48 hours to take down an obviously cybersquatted domain.

ICM says it expects to publish these policies before the sunrise begins.

Landrush is now expected to run November 8 until November 25. General availability will begin December 6.