FSC Urges Adult Trademark Holders to Protect Brands from .XXX with Letter of Notice for ICM Registry

[Redrob]

FOR IMMEDIATE PUBLICATION
Aug 15, 2011
Contact: Diane Duke
[email protected]

FSC Urges Adult Trademark Holders to Protect Brands from .XXX with Letter of Notice for ICM Registry

CANOGA PARK, Calif. ? A letter template has been created by Free Speech Coalition (FSC) for adult online business owners to send to ICM Registry, to demand that their trademarks be protected from sale on .XXX domains to third parties.

The ?letter of notice? informs ICM Registry ? operators of the .XXX domain ? that the sender will consider any infringement on their trademark as potentially actionable. The letter also clearly states concerns about potential anti-trust issues and unfair businesses practices on the part of ICM, as well as the certainty of cyber-squatting and other exploitation of established trademarks in the .XXX domain.

?This template provides adult businesses which do not want the risk of participating in the precarious .XXX experiment with a path to protect their intellectual property and valuable brands,? FSC Board Chair attorney Jeffrey Douglas said. ?This template should be discussed with their lawyers and adapted to their needs, but it can be a valuable tool to prevent the damage to their long developed good will and valuable web names.?

The letter template is available for download at the FSC website and FSC Blog. Addressed directly to ICM CEO Stuart Lawley, the letter can be sent to ICM Registry?s address in Florida.

?FSC is inviting adult businesses to put ICM Registry on notice that they do not have permission to sell the .XXX version of their trademarked names and brands,? said FSC Executive Director Diane Duke. ?It is critical that ICM Registry understand that the adult community will not tolerate ICM?s business model, which is built on frightening existing adult companies into paying ICM in order to protect their brand and trademark.?

Adult companies that have already issued demands to ICM Registry to protect their trademarks from infringement include Hustler/LFP, Manwin, Pink Visual and AEBN. FSC encourages all adult online businesses to be pro-active and to put ICM on notice concerning any infringement of trademarks.

Currently, ICM is offering ?sunrise? period pricing for adult and mainstream businesses willing to pay to block sale of the trademarks in the .XXX domain. The letter template refers to sunrise period blocking practices as ?inadequate,? and that ICM is not relieved of liability in the event of trademark infringement or other possible intellectual property violations.

Recent reports indicate that only 20 percent of businesses registered for .XXX domains are adult-related.

FSC urges all adult online businesses to stay .COM and say NO to .XXX ? bad for the Internet and bad for your business.

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The Free Speech Coalition is the national trade organization to the adult entertainment industry. Its mission is to lead, protect and support the growth and well-being of the adult entertainment community.

Stuart Lawley, CEO
ICM Registry LLC
PO Box 30129
Palm Beach Gardens, FL 33420

Dear Mr. Lawley,
We write to you on behalf of (COMPANY NAME), Inc. in your capacity as CEO of ICM
registry (ICM) and the registry operator of the .XXX top level domain. We seek your
cooperation in preventing trademark infringement and related intellectual property concerns, as
well as unfair and anti-competitive business practices.

(COMPANY NAME), is the owner and user of numerous registered trademarks and unique
brand names, namely __LIST TRADEMARKS__. The value of these brands and trademarks is
the product of considerable effort and marketplace success. [Provide specific examples of such
success, such as awards, ALEXA ratings, etc.]

(COMPANY NAME) owns and operates numerous websites through which it distributes
sells and promotes its content to consumers under its well known brand names. As a result,
(COMPANY NAME) has invested substantial resources to register, maintain and police
(NUMBER OF DOMAIN NAMES) primarily within the .com TLD, including domain
names corresponding to its valuable trademarks. (COMPANY NAME) spends (AMOUNT
EXPENDED) each year simply to maintain these domain names, and it spends much more
promoting them. In order to protect this investment, (COMPANY NAME) has registered
many of its trademarks with the United States Patent and Trademark Office and has proactively
resolved domain name disputes with other adult companies. A list of (COMPANY NAME)?s
trademarks and domain names is attached hereto as Exhibit A. Each of these trademarks and
domain names is used in worldwide commerce in connection with the sale of goods and/or
services.

It is indisputable that the .XXX top level domain [TLD] has a commercial purpose. This letter
is intended to put you and ICM on notice that should the implementation of the .XXX TLD
allow for the registration and use by third parties of domain names corresponding to the valuable
trademarks and brands owned and used by (COMPANY NAME), substantial costs will be
incurred by (COMPANY NAME) to protect these assets. That is, (COMPANY NAME) will be
forced to choose between purchasing unwanted domain names from ICM which have little or
no inherent value to (COMPANY NAME) in a defensive posture, and engaging in legal claims
against the numerous third parties likely to use the .XXX TLD to infringe upon the intellectual
property rights of (COMPANY NAME).

The so-called ?sunrise? period, which provides intellectual property owners the opportunity to
pay ICM for the dubious privilege of protecting from infringement upon that which (COMPANY

NAME) already owns, is wholly inadequate. It certainly does not relieve ICM of its potential
liability. ICM has created a business model apparently designed to profit from creating fear
of infringement by legitimate intellectual property owners. Unlike other TLDs which are not
content-specific, any third party that purchases domain names associated with (COMPANY
NAME)?s valuable trademarks and brands inherently infringes upon (COMPANY NAME)
because the purchase of the .XXX domain name definitively positions the third party to compete
against (COMPANY NAME) in the same arena of commerce.

In contrast, if the holder of a trademark engages in selling specific products and services, a third
party purchasing a domain identical to the trademark in a generic TLD, such as .NET or .BIZ
only improperly competes against the trademark holder if the use of the domain name is directly
in competition with the holder?s area of business.

Because ICM is offering services where trademark infringement is predictable, it is obliged to
prevent illegal activity when it knows such activity is occurring. In contrast to its obligations,
ICM offers to prevent infringement only when the revenue from infringement is replaced by
income from the intellectual property holder. As you know, ICM has no legal right to profit
from ABCDE?s valuable intellectual property. It is irrelevant whether that profit comes from the
infringer or from the trademark holder.

Additionally, ICM?s intention to offer for sale to third parties the unlimited right to purchase
(COMPANY NAME)?s trademarks and other valuable brands is certain to contribute to
trademark infringement. Any attempt by any entity other than (COMPANY NAME) to register
a .XXX domain name that is identical or substantially similar to one of the trademarks or domain
names listed on Exhibit A would, per se, infringe upon (COMPANY NAME)?s intellectual
property rights and give rise to numerous claims, including claims for cybersquatting and
trademark infringement.

ICM is now on notice that the registration of any domain name using the .XXX extension that
is identical or confusingly similar to one of the trademarks or domains listed on Exhibit A will
violate (COMPANY NAME)?s intellectual property rights and constitute an unfair business
practice. ICM must take steps to prevent such activity before it can occur. Failure to take
affirmative steps to prevent this conduct will establish ICM?s substantial liability.

(COMPANY NAME) welcomes the opportunity to engage in meaningful dialogue with ICM,
should ICM choose to resolve these matters other than through litigation.

No Fear, Just Knowledge.

[JFK]

Recent reports indicate that only 20 percent of businesses registered for .XXX domains are adult-related.

FSC urges all adult online businesses to stay .COM and say NO to .XXX ? bad for the Internet and bad for your business.

[Chris]

I just got word that i was able to secure Fubarwebmasters.xxx i feel like i just won the lottery :D

[Barry-xlovecam]

"The “letter of notice” informs ICM Registry – operators of the .XXX domain – that the sender will consider any infringement on their trademark as potentially actionable. The letter also clearly states concerns about potential anti-trust issues and unfair businesses practices on the part of ICM, as well as the certainty of cyber-squatting and other exploitation of established trademarks in the .XXX domain."

Just pay the $200 extortion money for your trademark domains rather than a minimum $5K to $10K legal bill if you file alone... Write it off and curse Lawley to his grave ... This sounds like another massive joint member-plaintiff lawsuit to me that will not win.

[Redrob]

Everybody has to make their own decision in this matter based on what they think is best for their businesses.

Nobody can tell you what to do.

[Barry-xlovecam]

I am just being pragmatic — our broadcast servers are in Rotterdam and in Amsterdam and I think it highly doubtful that the "worst case scenario" of censorship and "ghettoization" would have any direct affect our operations in the EU.

However, many of our affiliates might be affected in some way, this I realize ... If their domains are not trademarked they will either have to take their chances or it is "payola" time. By "payola" I mean trademark your valuable names and either pay off ICM in some manner or be prepared to fight legally ... If a domain is not worth the costs — the risk to you is small.

This is hardly a good situation, or solution in the matter, but the battle lines are drawn.

BTW: ICMs lawyers are willing to challenge on this. I don't this this as a battle to pursue in the courts. If you are smart you choose you fields of battle to your advantage and live on to fight ;)

[Redrob]

Morning Bump with coffee....