Since December 6, 2011, when .xxx domains became generally available for registration, brand owners and public figures have faced the reality that their trademarks and personal names may be registered by cybersquatters looking to make a quick buck, or by members of the adult entertainment industry who will use the name/mark with a pornographic website. While there are several new dispute resolution options available to such rights holders, including the Rapid Evaluation Service (RES) and the Charter Eligibility Dispute Resolution Policy (CEDRP), it is becoming clear that the traditional Uniform Domain Name Dispute Resolution Policy (UDRP) is still a viable option to recover domains under this new generic top level domain.
To date, the World Intellectual Property Organization (WIPO) has had ten .xxx domain name cases before it, and the National Arbitration Forum (NAF) has had seven. Of the seven cases before the National Arbitration Forum, two (heb.xxx and richardbranson.xxx) have resulted in the transfer of the domains, while one (foxstudios.xxx) was withdrawn. The remaining four cases are currently pending. Before WIPO, the statistics are similar; one case was terminated without transfer (valero.xxx), one domain was successfully transferred to the complainant (denizbank.xxx), and the remaining eight cases are still pending.
While we are early in the enforcement process for .xxx domains, some patterns are becoming evident. In the case of heb.xxx, where the panel ordered the transfer of the domain to the trademark owner, the respondent failed to make active use of the domain name and was not a member of the adult entertainment industry. Similarly, in the case of richardbranson.xxx, the registrant had no plans to commercialize or make active use of the domain name and was not a member of the adult entertainment industry. These decisions indicate that brand owners and public figures will have an easier time winning cases where the registrants are not members of the adult entertainment industry and are not making active use of the domains. It is also clear from these decisions that UDRP panels can, and will, consider both RES and CEDRP provisions when deciding a UDRP case, including the rule that a .xxx registrant must be a member of the adult entertainment industry (or a pre-existing rights holder). What remains to be seen, however, is how UDRP cases will be decided when the registrant is a member of the adult entertainment industry and is making active use of the website in connection with adult content.
Given the expense and uncertainty of recovering a domain registered by a cybersquatter or a member of the adult entertainment industry, brand owners should strongly consider applying for .xxx domain names incorporating their trademarks, company names, popular product/service names, and the like, through domain name registrars.