YNOT – Trademark owners may be able to protect their intellectual property from dot-xxx cybersquatters by sending registry operator ICM Registry a “letter of notice” demanding specific URLs be blocked from registration, the Free Speech Coalition advised Monday. By using a letter template prepared by FSC, trademark and service mark owners will be able to alert ICM that they do not intend to engage in any “defensive registrations” to protect their marks while also serving notice that allowing third parties to register potentially infringing domains may subject the registry to legal action.

The letter also outlines concerns about what the FSC believes may be anti-trust issues and unfair businesses practices on the part of ICM.

A copy of the template is available online in PDF and Microsoft Word formats. Addressed directly to ICM Chief Executive Officer Stuart Lawley, the letter may be mailed to ICM Registry’s address in Florida, and FSC statement noted.

“This template provides adult businesses which do not want the risk of participating in the precarious dot-xxx experiment with a path to protect their intellectual property and valuable brands,” said FSC chairman and attorney Jeffrey Douglas. “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 goodwill and valuable web names.”

Adult companies that already have issued similar demands to ICM Registry include Hustler/LFP, Manwin, Pink Visual and AEBN.

“FSC is inviting adult businesses to put ICM Registry on notice that they do not have permission to sell the dot-xxx version of their trademarked names and brands,” FSC Executive Director Diane Duke said. “It is critical that ICM Registry understand 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.”

Dot-xxx pre-registration periods have commenced at a number of domain registrars worldwide. “Sunrise” periods — during which registrants may nab domains they wish to protect prior to the opening of general registration — are scheduled to begin Sept. 7 and run through Oct. 28. During the sunrise periods, adult and mainstream companies may block registration of potentially infringing domains by paying a one-time, per-domain fee of between $200 and $350, depending upon registrar. The registration block lasts 10 years.

The FSC’s letter template calls ICM’s sunrise blocks “inadequate,” stating the procedure does not relieve ICM of liability should intellectual property violations occur due to a property owner’s unwillingness to pay for protection.

ICM feels differently about the matter.

“It has been suggested — perhaps carelessly — that if any domain name is registered … [and] incorporates a term or terms in which another party claims to hold pre-existing rights, ICM would be subject to legal claims for trademark infringement, unfair competition, and the like. There is no authority for this astonishing claim,” the ICM whitepaper “Registries and Trademarks” states. “United States federal courts have been exceedingly clear in holding that neither domain name registries nor registrars are liable for the mere processing of domain name registrations. As one court presented with such a claim explained, ‘Congress did not cause defendant as a domain name registrar, or as keeper of the registry, to be subject to civil liability,’ because if [Congress] had done so, ‘it would cause the domain name registration system in its entirety not to be feasible.

“Under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (ACPA), … registration of a domain name with a ‘bad faith intent to profit from the mark’ may constitute a violation of the Lanham Act in certain circumstances,” the whitepaper continues. “However, courts have made clear that ‘none of the conditions and conduct listed [in the ACPA is] applicable to a person functioning solely as a registrar or registry of domain names.’ A registrant may have numerous defenses to claims of cybersquatting, including but not limited to fair use, the existence of a license from the trademark owner, independent trademark rights in other classes of goods and services or geographic areas than the plaintiff trademark owner, and the like.”

Lawley told YNOT.com that while he welcomes communication from companies with questions and concerns about dot-xxx, the FSC’s suggested “letter of notice” serves no legitimate legal purpose.

“The logic appears to be that a registry will be held liable under the ACPA if notice was given to the registry,” he said. “There is no basis for that reasoning. There is presumptive public notice of registered trademarks, and the language of the ACPA presumes that persons will not be prevented by the registry from registering trademarks. In other words, if it is the registry’s job to prevent registration of domain names corresponding to trademarks, then why would the ACPA have a safe harbor for registries in the first place?

“Obviously, administering a meaningful sunrise policy imposes costs, and the question boils down to whose burden is it to police the trademarks of the world,” Lawley continued. “The ACPA suggests that the sole responsibility of a registry is to abide by court orders that may issue in relation to a domain name. The provision of prospective and remedial administrative policies to help others to police their marks are not requirements of running a registry.”

Recent reports in mainstream media indicate only 20 percent of dot-xxx pre-registration applications were submitted by companies or individuals who already work in the adult entertainment space.