By J. DeVoy
At Likelihood of Confusion, guest blogger Matthew David Brozik provides an overview of the .xxx roll-out, which is happening in phases beginning now. For those unfamiliar with the domain name, there are two types of initial availability: Sunrise A, where existing adult companies can get .xxx domains to correspond with their .com domains, and Sunrise B, where non-adult companies can permanently de-reigster their hypothetical .xxx domain names (e.g., ToysRUs.xxx), and ensure they will never exist. After that, there will be a “landrush” period for adult companies to get new .xxx domains to develop new brands and services, and then a perpetual period of general availability so that adult companies can get new domain names on a first-come, first-serve basis; trademarks outside of adult can also be de-registered during this time. To understand the importance of this open registration period, bear in mind that 10 years ago the acronym CFNM was meaningless, whereas now it’s a popular porn genre, and “twitter” was similarly a nearly meaningless (and antiquated) intransitive verb. Or noun. Anyway…
Some groups, such as the Free Speech Coalition, are against the .xxx sTLD. Others are agnostic, or open-minded regarding the extension. Informal research reveals that many companies are indeed buying the domains, optimistic that they will generate more traffic and search engine recognition, and at a minimum protect the brands they have created. Still, others eschew it.
Some non-adult entities are embracing .xxx to make a splash for themselves. PETA, for example, is getting a .xxx domain name. But, this likely is more of a publicity stunt than a lasting foray into adult. After all, this is the same PETA that had some sycophant legally change his name to KentuckyFriedCruelty.com.
Brozik’s post is informative, but I do have one bone to pick with it. Brozik contends:
So we’re almost certainly not going to see lawsuits over the likes of pepsi.xxx, kleenex.xxx, or xerox.xxx.
Don’t be so sure. Perhaps there won’t be disputes over those domains and peer brands, but there is an interesting question brewing as to whether paying for de-registration of a .xxx domain name is essential to keeping it from being registered. Within the adult space, Manwin Licensing International – owner of many prominent brands and valuable domain names, including Brazzers.com and YouPorn.com – has demanded that the .xxx registry’s operators prevent “exploitation” of those domains (or those that are confusingly similar) even without paid de-registration, or turn them over to Manwin, free of charge. Making matters more interesting, the .xxx registry has preemptively de-registered domain names that constitute famous names, for both celebrities and politicians. This step was apparently taken free of charge. There may not be lawsuits brought by Pepsi and Xerox against cyber-squatters, but there may be more attempts by owners of established brands to get something for nothing.
If the .xxx registry’s operators commit trademark infringement for failure to provide de-registration where no registration has yet occurred, it would be a novel theory of liability. Can one be liable for potential infringements that have not yet occurred? If nobody registers the domain names, there seems to be a problem of standing, (and a lack of imminent harm, if the registry’s procedures prevent the domain names from being registered). Other countries, however, may have different standing requirements. Also, some infringement of the trademarks has to occur (or be sufficiently imminent for standing to exist) for there to be a cause of action for infringement. Ron Coleman’s interest in secondary trademark infringement notwithstanding, infringement has to occur for primary or secondary liability to attach – just as with copyright infringement.
Given the novelty of the .xxx space and the brands at stake, it is unlikely that this issue is dead, or that it will be for some time to come.