Will Larry Flynt sue over .xxx domains?

The porn publisher Hustler is “prepared to take whatever legal action may be necessary” to stop ICM Registry letting people register its trademarks in .xxx, according to a report.
I’ve been hearing rumors for several weeks that some companies are so unhappy about having to pay to block their brands in .xxx that they may consider legal action.
Now Xbiz reports that Hustler has said it refuses to be “shaken down” by the registry, but that ICM has not responded to its written demands for protection.
But will the company sue ICM (and ICANN?) over what may amount to just a few thousand dollars in defensive registration fees? And on what grounds?
In the US, the Anticybersquatting Consumer Protection Act, which has been on the books since 1999, is rather friendly to registries unless they behave really, really badly.
ICM will have some of the strongest trademark protection mechanisms of any gTLD, suggesting that it could have quite a strong defense to a cybersquatting claim.
Hustler could of course decide to sue based on a different law.
Threats of lawsuits are something that new gTLD applicants will need to bear in mind if they plan to apply for a TLD that encompasses an industry or community, as .xxx does.
Even if applicants manage to win the support of a portion of the affected industry, community members that think they’re likely to be cybersquatted or lose valuable real estate may well resort to the courts.
This is why about 30% of every new gTLD application fee goes into an ICANN war chest reserved in part for legal fees. ICANN knows what could be coming down the pike.
Xbiz quoted Hustler attorney Jonathan Brown saying: “We are constantly policing the registration and use of domain names that attempt to capitalize on Hustler’s trademarks.”
But the record shows that the company does not appear to be an especially aggressive enforcer of its marks in other top-level domains.
The magazine’s parent, LFP, has filed 29 UDRP complaints since 2002, all relating to Hustler and Barely Legal and, apart from hustler.tv, all for .com domains. The most recent filing was in 2009.
The company does not own the string “hustler” in .net, .org, .info, .biz or in a number of high-visibility ccTLDs that I checked. It does, however, own hustler.mobi.

Firm offers .xxx trademark checks

We’ve seen domain “reservation” services and “preregistration” services, now the soon-to-launch .xxx top-level domain is getting a pre-sunrise trademark verification service.
Trademark Fact Check is a new offering from EnCirca president Tom Barrett and Mark Kudlacik, formerly of NetNames and now president of Checkmark Network.
It’s an automated tool for checking whether a trademark will qualify for the .xxx sunrise period – and the sunrise periods of other new gTLDs – according to the service’s web site.
The output, among other things, consists of a list of domain names you qualify to register in the sunrise.
It supports about 30 national jurisdictions.
Checks will cost $10 a pop, but Barrett and Kudlacik think they can save applicants money.
If a sunrise application is rejected due to a filing error, the only option is to pay again to file again, which for .xxx is likely to cost at least $200 with the cheapest registrars.
There’s a money back guarantee if Trademark Fact Check says an application will pass and it does not.
I’m not sure how much of a market there will be for this kind of thing when the new gTLDs start to launch in 2013 and sunrise trademark validation will be largely handled by the Trademark Clearinghouse.

.xxx domains to get free virus scans from McAfee

ICM Registry has signed up with security software outfit McAfee to provide automatic virus scanning for all web sites hosted at .xxx domain names.
Under the $8 million deal, “every .XXX domain will be scanned for vulnerabilities such as SQL injection, browser exploits and phishing sites, reputational analysis and malware”, ICM said in a press release.
The subscription, which is based on the McAfee Secure offering, will be included in the price of the domain, which is expected to start at around $75 at the cheapest registrars.
McAfee normally charges a lot more than that; ICM has basically negotiated a bulk discount for its customers.
There are two ways to take advantage of the deal.
First, webmasters can choose to put some code on their sites that displays the McAfee Secure logo, potentially increasing customer confidence and ergo sales.
McAfee reckons sales can go up by as much as 12% when sites use this “trust mark”, based on some split-testing it did a couple years ago (results may vary, it adds).
Second, because McAfee is going to automatically scan every .xxx domain every day, whether the registrant wants it or not, porn surfers will be able to use McAfee SiteAdvisor, a free browser plug-in, to verify that a .xxx site is, for want of a better word, clean.
Whether you like .xxx or not, you’ve got to admit that this probably counts as a rare example of “innovation” from a domain registry.
On the flipside, registrars that already offer such services as add-ons, such as Go Daddy, won’t get the up-sell if ICM is giving it to every registrant from the registry side.
But that doesn’t seem to have stopped any registrars from signing up to sell .xxx domains.
Oddly, the press release does not name McAfee as the service provider, but its brand is all over the ICM web site so embarrassment is probably not a factor.
McAfee currently has about 80,000 sites using the service, which could easily grow to 500,000 or more if ICM gets as many registrations as it expects to.

How the US shaped the new ICANN

The US government pushed hard for ICANN to pay more attention to international governments, which caused it to delay .xxx and the new top-level domains program, a new document reveals.
A transcript of a December 2010 meeting between ICANN’s board and National Telecommunications and Information Administration chief Larry Strickling, published following a disclosure request by DomainIncite, outlines America’s “tough love” policy over ICANN.
It reveals that Strickling hauled ICANN over the coals over its opaque decision-making, its failure to adequately address its Affirmation of Commitments obligations, and its apparent lack of respect for its Governmental Advisory Committee.
The era of ICANN engaging maturely and in earnest with governments, witnessed over the last six months, arguably began in that meeting room in Cartagena, the evening of December 7, 2010.
But it did so partly because it fitted with Obama administration policy.
Strickling told the board that the multi-stakeholder model of internet governance was critical to US public policy on other matters, but that he wanted to ensure “the reality fits the model”:

we are cheerleaders for this. But as I’ve said to several of you, there’s a model but then there’s the reality. And it is incumbent on us at this particular point in time, more so than perhaps ever before, to do what we can to ensure the model, that the reality fits the model.
…
what it comes back to at the end of the day is our concern that we want to be able to demonstrate to the rest of the world that the quality of decision-making by this organization is absolutely top drawer.

ICANN was failing to live up to these ideals, he said. This was particularly true in the case of the new gTLD program, which many had expected ICANN to approve in Cartagena.
Strickling said that ICANN had not done enough to evaluate the pros and cons of the program:

I’ve heard expressed the idea that somehow I or the United States is opposed to the expansion of top-level domains. That’s not the case. I don’t have a view one way or the other. Frankly, that’s up to you to decide.
What I do care about is that when you decide that question, that you do it with a quality of decision-making with all of the information in front of you that you ought to have with the experts having given you the opportunity to ask questions and evaluate the pros and cons of decisions as fully as possible.

He later added:

It’s very clear that there are a lot of warning signs, just in the studies that have been done so far, incomplete as they are, to suggest that rushing headlong into this issue, I think, could be a mistake.
But I want to very quickly kind of backtrack from that remark in the sense that I don’t think it’s my place, in my role, to tell you how to make your decisions in terms of what the outcome should be.
And I do think I have a role to play and will play the role of evaluating the quality of decision-making, which largely is processes, but at the end of the day it really comes down to did the board have in front of it the facts it needed to have to make an informed decision, and does their decision, as reflected in their report of that decision, reflect a reasoned, mature, responsible decision.

It’s impossible to tell precisely what the tone of the meeting was from the transcript, but it’s possible to infer from the content that it was likely that of a parent scolding an unruly child.
At one point in the transcript, director Rita Rodin Johnston refers to Strickling as “Dad”, and Strickling says moments later that he does not want to “play schoolteacher” .
Seemingly pushing for it to mature as an organization, he urged ICANN to engage more seriously with the GAC, which had concluded a frustrating public meeting with the board just minutes earlier.

I don’t know what all of the top challenges are to ICANN in the next three to five years, but I absolutely believe that in that top three will be the issue of ICANN’s relations with foreign governments.
…
I think you all are missing a tremendous opportunity to deal with this issue of ICANN and Internet governance and the role of foreign governments, and it’s absolutely incumbent upon you all to find a way to work with the GAC along the lines that Heather [Dryden, GAC chair] and her fellow members expressed to you today.
…
I think that’s important for your ultimate preservation as an independent organization, and I cannot, I guess, emphasize enough the importance of working out these processes with the GAC in terms of receiving their advice, treating it with respect by responding to it promptly and fully, sitting down and mediating with them where it appears there are disagreements.

His words hit home.
Later that week, ICANN deferred a decision on approval of .xxx, pending formal discussions with the GAC, and it arranged to meet with the GAC in Brussels to discuss the new gTLDs program.
Over the last six months we’ve seen numerous changes to the Applicant Guidebook – addressing the concerns of trademark owners, for example – as a result of these consultations.
The structure of this process also appears to been formed during this private Cartagena meeting.
Strickling clashed with then-chairman Peter Dengate Thrush on their respective interpretations of ICANN’s bylaws as they relate to rejecting GAC advice.
Dengate Thrush expressed a view that could be characterized as “vote first, consult later” (my words, not his), which Strickling dismissed as “silliness”.
Strickling evidently won the argument; ICANN this year has started consulting formally with the GAC prior to voting on important issues.
The first beneficiary of this policy was .xxx applicant ICM Registry, which Strickling addressed directly during the Cartagena meeting:

But let me just say I don’t know how — based on, as I understand the facts on both top-level domains and ICM, how you can possibly have a mediation this week, in terms of the fact that information has not been provided to the GAC that they’ve asked for, the fact that they do not feel they understand exactly what the board has disagreed with and why.

This appears to be the reason we’re looking at .xxx domain names hitting the market in September, rather than right now.
Finally, I find it ironic that, given the meeting’s focus on transparency, it was Strickling, rather than ICANN, who asked for a transcription of the talks to be made.

>>PETER DENGATE THRUSH: We are currently scribing this session. But under our rules if you want us not to scribe this, we just turn it off.
>>LAWRENCE STRICKLING: I’m fine to be on the record. I have spoken to some of you individually, and I urged every one of you who I talked to individually to share my views as far as they wished. And I have absolutely no problem with anything I say here being in the public record.

Despite this exchange, the transcript did not become part of the public record until last Friday, 30 days after I filed a request using ICANN’s Documentary Information Disclosure Policy, which is a little like its Freedom Of Information Act.
I wish I’d filed it sooner.
You can download the PDF of the transcript here.

ICM names former ACLU chief to policy board

ICM Registry has appointed former American Civil Liberties Union president Nadine Strossen to the Policy Council of IFFOR, the oversight body responsible for the .xxx top-level domain.
Strossen held the role at the ACLU between 1991 and 2008. Her appointment to the largely volunteer role at IFFOR is a bit of a coup for the organization.
She fills the seat designated for a free speech advocate.
Also named to the council is Sharon Girling, a former British cop who was closely involved in many high-profile child abuse imagery stings, including Operation Ore.
Law professor Fred Cate has been appointed the council’s security/privacy expert, and first amendment lawyer Bob Corn-Revere is ICM’s appointed representative.
There will be five other policy council members, all drawn from the porn industry, named in July or August, IFFOR said in a press release.
IFFOR, the International Foundation For Online Responsibility, will get $10 a year from every .xxx domain name registered.

Governments get .xxx wish-list

National governments have been given the chance to block “words of cultural and/or religious significance” from the forthcoming .xxx top-level domain.
ICM Registry has told ICANN’s Governmental Advisory Committee that its members have until the end of July to provide lists of names they want banning from the .xxx namespace.
The GAC is due to meet during ICANN’s meeting in Singapore next Tuesday to discuss an “ICM Registry Request”, which is believed to be said block-list.
Approved strings would be marked as reserved and would resolve to a standard placeholder page. Unlike trademark holders, governments will not be required to pay a fee.
Strings in non-Latin alphabets will not yet be supported, according to ICM, but governments are allowed to submit them anyway, for future reference.
ICM will decide which strings make it to the list, but I can’t see it refusing reasonable requests — pissing off governments probably wouldn’t be a wise move given that some of them already plan to block the whole TLD at their national borders.

Go Daddy to sell .xxx domains

Go Daddy has become the latest registrar to agree to sell .xxx domain names.
It’s a bit of a big deal for ICM Registry, given how dominant Go Daddy is in the registrar channel.
There are about 50 .xxx registrars on this ICANN web page, which lists all the accredited registrars along with which top-level domains they’re approved to sell.
Go Daddy isn’t listed as a .xxx registrar yet, but its accreditation was just announced in a press release.
Read more at The Register.

Final call for .xxx policy volunteers

The International Foundation For Online Responsibility, which will set policies for the .xxx top-level domain, has issued its final call for Policy Council volunteers.
The deadline for nominations for the nine PC seats has been set at July 5, and IFFOR plans to announce the successful candidates in late August.
Five of the seats are reserved for members of the porn industry. Another will represent privacy/security interests, one will be drawn from the world of child protection, and one will be a free speech advocate.
The final seat will be occupied by ICM Registry, the .xxx manager.
My understanding is that a front-runner for the child protection role is Sharon Girling, a former British police officer who played a key role in child abuse stings including Operation Ore.
I know of a few people who have applied for the free speech spot. Most recently, outspoken .xxx critic “DarkLady”, author of the Dot-XXX Opposition blog, revealed she had put herself forward for the job.
While the PC members are ostensibly volunteers, they do get a $15,000 annual stipend and their travel expenses paid for.
IFFOR will receive $10 from ICM for every .xxx domain that is registered.

Survey shows .xxx is the Marmite TLD

The forthcoming .xxx top-level domain is accepted and hated by equal numbers of adult entertainment industry operators, according to a new survey.
Xbiz reports today that 35% of its members plan to buy .xxx domain names. Equally, 35% said they would not buy in .xxx because they do not want to support the TLD.
Marmite, if you’re puzzled about the headline, is a strongly flavored yeast-based sandwich spread sold primarily here in the UK. It’s cleverly marketed using the frank slogan “Love it or hate it”.
Just like .xxx, it’s banned in some countries.
It may not be an entirely apt simile, however. The Xbiz survey showed that a paltry 13% of the respondents planned to develop sites. The other 22% are only planning to defensively register their brands.
Xbiz, which surveyed 400 of its members, speculates that defensively registered domains “may be key to the TLD’s revenue stream and perhaps its survival”.
I’m not so sure. If ICM gets 22,000 defensive registrations from pornographers (twice as many sunrise registrations as .co reportedly got last year), that works out to only $1.1 million per year for ICM.
We’re likely to get our first indication of adult industry support when ICM announces its Founders Program partners – pornographers that are prepared to publicly endorse .xxx before it launches.
Like any new TLD launch, anchor tenants will to a large extent determine acceptance of .xxx – ICM will need its o.co moment.
Last week, I attended an ICM-sponsored event at a strip joint in London, at which executives from a large British porn publisher expressed enthusiasm about the TLD, so it does seem to have some quiet support in the business.

Don’t rush to defensively register .xxx domains

Trademark owners trying to figure out how to protect their brands in the .xxx top-level domain should wait for ICM Registry to reveal its full suite of anti-cybersquatting measures before deciding whether to defensively register a large portfolio of domains.
With registrar prices for sunrise trademark blocks currently hovering around the $300 mark, an especially aggressive enforcement strategy could rack up six-figure bills for large brand holders.
But it may turn out to be more cost-effective to use ICM’s post-launch enforcement mechanisms to fight cybersquatting.
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.
But the company plans to have some of the most Draconian post-launch IP rights protections mechanisms of any new TLD to date.
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.
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.

It remains to be seen how much this will cost complainants (assuming there is a cost), and there are other unanswered questions such as the duration of the suspension, the ability of the complaint to have the domain transferred and the registrant’s right of appeal.
But it’s clear that trademark holders will very likely have cheaper options than UDRP, which can cost as much as $1,500 for a single domain name.
In addition, 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.
Combined with Rapid Takedown, and the high price of .xxx domains ($75 a year minimum so far), this will likely make cybersquatting a much less attractive proposition in .xxx than .com.
Trademark holders should wait for their full range of options to be revealed before panicking about high sunrise fees.
It may turn out to be more cost-effective to block just a few primary brands, and leave enforcement of other brands to post-launch mechanisms.