How to Protect Trademarks Against Infringing .XXX Domains

The .XXX top level domain became available for registration in September of 2011 making many companies concerned that their trademarks may be registered as .xxx domain names by third parties.

To protect their trademarks from misuse in the .xxx field, many companies (including Pepsi, Apple, Coca Cola, and Hilton, to name a few) already rushed to preemptively block their trademarks from registration during the “Sunrise B Period”.  This is why, for example, you will not stumble upon an adult-oriented website www.pepsi.xxx while googling PepsiCo’s products.    

Of course, the Sunrise B Period has long expired (meaning trademarks can no longer be blocked from .xxx preemptively), but trademark owners are not without remedy when it comes to protection against .xxx infringers and cybersquatters. There are good options that can be used to protect a trademark against infringement on .xxx:  

(1)   Complaint under the Rapid Evaluation Service (“RES”);

(2)   Complaint under the Charter Eligibility Dispute Resolution Policy (“CEDRP”);

(3)   Complaint under the Uniform Dispute Resolution Policy (“UDRP”);

(4)   Cease and desist letter; and

(5)   Law suit

Since sending a cease and desist letter or filing a law suit are old tools requiring no additional introduction, I will focus here on the first three options: RES, CEDRP and UDRP.                   

(1)        Complaint Under the Rapid Evaluation Service (“RES”)

The RES is administered by the National Arbitration Forum (“NAF”) and provides for an opportunity for trademark owners to quickly shut down infringing .xxx domains.  The main purpose of the RES is to provide “a prompt remedy to address a limited class of situations in which there is objectively clear abuse of well-known, distinctive registered trademarks or service marks of significant commercial value, or of personal or professional names of individuals.”

Generally, it takes an average of two-three days (and sometimes as little as half a day) to shut down a .xxx website.  This is some statistics from the NAF website about the Rapid Evaluation Service processing times:

As you can see, the Rapid Evaluation Service can be quite rapid indeed, and an infringing .xxx domain can be shot down quickly, assuming a complainant can prove certain elements. In general, a successful RES complaint must establish that you are a victim of either trademark abuse or impersonation.

A complaint alleging trademark abuse must show the following elements:

(i)    The .xxx domain is identical or confusingly similar to a nationally registered trademark that is being owned and used;

(ii)    The respondent has no rights or legitimate interests in respect of the registered domain name; and

(iii)   The domain name has been registered and used in bad faith or, if unused, cannot possibly be used in good faith.

A trademark abuse complaint can be filed against a domain that is identical to a trademark (e.g. YourTrademark.xxx), typographically or phonetically similar (for instance, YouTrademark.xxx, YourTrademarc.xxx, etc.) or when a trademark is combined with other terms within a domain (i.e., YourTrademarkAdult.xxx).

Although the RES complaint is a great tool to stop trademark infringement, it has its limitations.  For example, the RES complaint process cannot be used to enforce rights in geographic terms, designations to origin of goods, trade names and other protected signs, unless they are also registered as trademarks.  Further, you can file a RES complaint to enforce a nationally registered mark only. Trademarks registered within a U.S. state or common law trademarks cannot be enforced via the Rapid Evaluation Service.

The second ground for filing a RES complaint is impersonation, which is when a person’s name was used without authorization in registering a .xxx domain.  In cases involving impersonation, a RES complaint will need to show the following three elements:

(i)  The complainant is a natural person (or an agent of the person);

(ii)  The domain substantially corresponds to the name (including professional or “stage” name) of the person; and

(iii)  The domain name was registered with the purpose of harassing or embarrassing the complainant.

If registration and use of the domain is considered to be “fair use,” meaning any similarities are coincidental, or the domain was otherwise registered for legitimate needs, then a complaint against such domain is likely to be denied.

If you believe you can prove the necessary elements for a case of trademark abuse or impersonation, you can prepare and file your RES complaint electronically via the NAF’s website. Here is the link to the electronic complaint form

The electronic RES complaint form itself is relatively simple and self-explanatory.  You will need to provide information about yourself, the alleged infringer/abuser, the domain name subject to your complaint and certain other information.  Here is a link to the mock complaint that I drafted just to show how the complaint is supposed to look (it is a general example and is for illustration purposes only).

Once all the fields in the electronic RES complaint have been filled out, you will need to pay the $1,300 filing fee (which is no more complicated than making any online purchase), check the box confirming that you agree to the terms and conditions and click “Submit”.  And that is it.   You have successfully filed your complaint.  If you have questions, you can read further instructions for filing a Rapid Evaluation Service complaint here.

After you have filed your complaint, it should usually take the NAF around two-three days, sometimes less, to make a decision. If you prevail, the .xxx domain will be blocked and any resulting website disabled.  Although the NAF does not transfer.xxx domains to complainants, the ICM Registry (which administers the .XXX TLD) will gain control of the domain name you complained about and will prevent the domain from being registered to others again.  The domain will instead resolve to the standard landing page of the Registry.

In addition to the RES, the Charter Eligibility Dispute Resolution Policy (CEDRP) and the Uniform Dispute Resolution Policy (UDRP) are also available to trademark owners.

(2)        Complaint Under the Charter Eligibility Dispute Resolution Policy (CEDRP)

The CEDRP policy can be used to file a complaint when registration or use of a .xxx domain name is inconsistent with “community eligibility” or if a domain name was improperly registered during the “Sunrise A” registration period  (which lasted September 7 – October 28, 2011 and was limited to trademark owners and other IP holders within the adult entertainment industry.)

With respect to community eligibility, .xxx domain names are reserved to members of the adult entertainment industry only. Therefore, you may use a CEDRP complaint to request cancellation of a .XXX domain registered by a non-member of the adult entertainment industry.  Similarly, if a .XXX domain was registered during the Sunrise A” period by an illegible registrant, such a registration can be subject to cancellation as well.

You can view the entire Charter Eligibility Dispute Resolution Policy (CEDRP) here. An example of the Charter Eligibility Dispute Resolution Policy (CEDRP) complaint can be viewed here.

(3)            Filing a Complaint Under the Uniform Dispute Resolution Policy (UDRP)

 When appropriate, a UDRP complaint against a .xxx domain name can be a great option as well. To prevail, you will need to prove all of the following:

(i)  The .xxx domain name is identical or confusingly similar to a trademark/service mark to which the complainant has rights;

(ii)  The registrant of the .xxx does not have any rights or legitimate interests in the domain name; and

(iii)  The registrant registered the domain name and is using it in “bad faith”

A UDRP complaint process is rather formal and time consuming, and somewhat reminds litigation. However, it offers certain advantages over the RES, one of the most important of which is that the scope of trademark rights that can be enforced via the UDRP (“a trademark/service mark to which the complainant has rights”) is broader than the rights enforceable via the RES (“a nationally registered trademark that is being owned and used”). Detailed information regarding UDRP rules can be found here . For further guidance on UDRP complaints, click here.