.xxx and cybersquatting: More complicated than thought

ICM (.xxx registry) has recently blocked some .xxx names which were registered by cybersquatters rather unexpectedly. Question is whether this action is as positive as it was meant by the registry and whether the registry didn’t cause confusion by doing this.

As we could expect, several .xxx names have been registered by cybersquatters since the go-live of the .xxx domain which started on December 6th 2011. Some examples of such names are businessweek.xxx, cnbc.xxx, geocities.xxx, nextag.xxx, snapfish.xxx, verizonwireless.xxx, washingtonpost.xxx, and gayroom.xxx. These names were blocked rather unexpectedly by the registry a few days ago. Stuart Lawley, CEO of the .xxx registry declares the following: ‘We have included in our policy that the registry may take action against cybersquatters and we’ve set the bar very high. We won’t tolerate any infringement on intellectual property by cybersquatters,’ Lawley says.

Domainincite now wonders whether the registry hasn’t done more harm than good by blocking those names. First of all it isn’t clear whether all the names that were blocked also infringe a trademark. Moreover it’s possible that some other trademark owners won’t be very pleased with this action. During sunrise B, which ran from September 7th until October 28th, trademark owners were encouraged to block their registered trademark under .xxx but they needed to pay in order to do so. Now it turns out that when a cybersquatter registers your name, your name is also blocked by the registry for free.

Also another question pops up. Will the blocked domain names ever again be released for registration? Take gayroom.xxx for example. This name also exists under the .com version, it’s a porn website and the owner of the name gayroom.com also owns the trademakr ‘gayroom’. However, this person decided not to register the .xxx version of its name. As you could expect, a cybersquatter did register gayroom.xxx. The name was then blocked by the registry. Question is whether the owner of gayroom.xom will be able to register the .xxx version if he ever wants to or will this name be blocked forever since a cybersquatter registered it first?

Moreover we’ll also have to wait and see which action we might expect in the future against cybersquatting under the .xxx domain. The registry also created a special procedure, the so called RES (Rapid Evualation Service), which allows owners of trademarks to file a complaint if their names was registered by a cybersquatter under .xxx. Via this procedure, it will quickly be verified whether the trademark is indeed infringed. If this is the case, the name will be blocked. Question is how successful this procedure will be since it isn’t for free.

And last but not least one can ask the question which role the registry itself plays towards the cybersquatters. A cybersquatter has the intent to sell the domain name, which he registered in bad faith, for a lot of money to the owner of the trademark. Before the sunrise began, the registry decided to block several name as so called ‘premium names’. Those names couldn’t be registered by anyone and can be sold later by the registry amongst the members of the Sponsored Community to the highest bidder. A few examples of such names are poker.xxx and big.xxx. Since those names were blocked by the registry, it wasn’t possible for the owners of those trademarks to register those names during the sunrise. One could ask the question what’ the difference between the registry trying to sell a premium domain despite several sunrise applications and the cybersquatter registering gayroom.xxx hoping to catch a lot of money by selling this name to the trademark owner.