‘.xxx’ registry deals blow to mark owners; good news regarding ‘.sucks’ sunrise fees

ICM Registry has dealt a blow to trademark owners who had blocked their terms in the ‘.xxx’ string, expecting to receive similar protection in other adult strings: those seeking protection in the ‘.porn’ and ‘.adult’ strings will now have to pay for the privilege.

When ICM Registry launched the ‘.xxx’ string, it intended to introduce a ‘grandfathering plan’, whereby trademark owners that blocked a ‘.xxx’ domain would also obtain protection in the ‘.sex’, ‘.porn’ and ‘.adult’ strings free of charge. However, the registry has now announced that its original grandfathering plan contravened the Internet Corporation for Assigned Names and Numbers’ (ICANN) Rights Protection Mechanisms. Nevertheless, ICM CEO Stuart Lawley believes that the registry’s new domain matching programme “means that 98%-99% of our underlying ‘.xxx’ domain registrants and Sunrise B participants will be given the chance to register the directly matching ‘.porn’ and/or ‘.adult’ name”.

Meanwhile, Vox Populi Registry – which had announced its intention to charge trademark owners a $25,000 registration fee during the ‘.sucks’ sunrise period – was reported to have reconsidered its strategy after winning the auction for the ‘.sucks’ generic top-level domain (gTLD). CEO John Berard told World Trademark Review that the “pricing for the names will be much closer to current practices seen in other new gTLDs”.

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Counsel comment:

The recent news regarding ICM Registry’s change in policy is certainly disappointing to brand owners, although ICM appears to have pursued, and been denied, nearly every possible avenue to obtain ICANN approval for its grandfathering programme. Trademark owners expend significant resources protecting their trademarks and this change in policy will require further allotment of resources to protect brands in the new gTLD space. That said, brand owners should appreciate some of the other concessions that ICM has agreed to undertake, including low-cost sunrise, sunrise B and domain matching phases, which will allow them to protect their trademarks in ICM’s new TLDs at reasonable rates.

Brian Winterfeldt, Katten Muchin Rosenman LLP

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