YNOT – Adult website operator Manwin Licensing International has demanded dot-xxx registrar ICM Registry either disallow “exploitation” of the 57 domain names it owns in other spaces or allow Manwin to register all of those domains in dot-xxx free of charge.
A prepared statement distributed by Manwin said the unprecedented move was a bid to protect intellectual property, including trademarks. The company, based in Luxembourg but physically quartered in Canada, asserted it may pursue legal action should ICM allow registration of any names already used by Manwin in other spaces — or names that may be similar or misleading.
“The misuse of our intellectual property will not be tolerated,” Manwin managing partner Fabian Thylmann noted in the statement. “The onus is on ICM to honor and protect the rights of the adult content industry in their domain names and [Manwin] hopes that ICM will act responsibly to do so.”
Manwin’s attorney listed all 57 domains in a certified letter delivered to ICM Chief Executive Officer Stuart Lawley, and indicated service of the letter would be considered sufficient evidence of Manwin’s claim to the domains. The company’s current domain portfolio includes Brazzers.com, Men.com, Mofos.com, Pornhub.com, Spankwire.com, Tube8.com, Webcams.com, Xtube.com and YouPorn.com.
However, the situation is not nearly as clear-cut as Manwin’s attorney asserts, Lawley told YNOT.com on Wednesday. Companies in different countries and different business sectors may hold valid trademarks on the same terms. Because the internet is a global medium, it is not uncommon for more than one entity to attempt to claim the same domain name. Therefore, honoring demands like Manwin’s is out of the question.
“As courts have recognized, ICM — the registry operator of the [dot-xxx sponsored Top Level Domain] — is not in a position to independently assess global intellectual property rights,” Lawley said. “ICM Registry is, however, a steadfast advocate for rights holders. In fact, ICM Registry is offering better protections for trademark and other [intellectual property] holders than any other top-level domain registry in the world.
“As you will notice on our website, we have instituted an extensive Sunrise domain name registration process that enables trademark holders and domain name holders in other URLs to apply to protect any rights they have to the greatest extent possible,” he added. “Not only are we providing trademark owners with this special window of opportunity, but we also are supplementing ICANN’s [Uniform Dispute Resolution Policy] with two new dispute resolution procedures to prevent abusive registrations.”
The new procedures are:
- The Charter Eligibility Dispute Resolution Procedure, which will allow members of the “sponsored community” to challenge domain registrations by ineligible registrants (i.e., those outside the “sponsored community”).
- A Rapid Evaluation Service, which will facilitate quick resolution of challenges to claims involving well-known or inherently distinctive marks, sometimes within as few as 48 hours.
“ICM, as a registry operator, is not in a position to adequately assess competing claims to international intellectual property,” Lawley said. “So we will be working with third-party service providers with appropriate expertise to make the determinations in the above-mentioned dispute resolution procedures.”
Lawley also mentioned that adult industry insiders who remain concerned about protecting their IP rights in valuable domains that may be subject to exploitation in dot-xxx still have time to join ICM’s Founders Program. The Founders Program offers qualified members of the adult industry the opportunity to secure existing trademarks and domain name portfolios prior to the Sunrise, Landrush and General registration periods.
“This may be the surest, easiest and most cost-effective manner to protect any rights at issue,” he said.
Founders Program applications will be accepted through the end of July.
“ICM welcomes concerned intellectual property owners to review our policies, to participate in our dispute resolution procedures or to contact us directly if they wish to proactively prevent third parties from obtaining their trademarks,” Lawley said.
