The launch of new adult-related top-level domains is reminiscent of the early days of cybersquatting, when domain name registrants created pornographic websites that contained trademarks owned by well-known brands. The new TLDs -- .adult, .porn, .sex and .sexy -- pose new threats for trademark owners online, especially for those who don't want their brands associated with the adult industry.
(To be clear, by "adult," I am referring here of course not to the definition of the word as "fully developed and mature" but instead to the definition as "dealing in or with explicitly sexual material.")
Already, cybersquatters using the new adult TLDs have begun to target trademark owners online -- and, in some cases, the trademark owners are fighting back.
For example, complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS) have been filed over the domain names <audi.sexy>, <citibank.porn>, <ibm.sexy>, <linkedin.sex> (disclosure: I represented the complainant), <marlboro.sexy> and <verizon.porn>. All of the reported decisions have been in favor of the trademark owners.
In one UDRP case, simply associating the .porn TLD itself with a well-known trademark -- even in the absence of a website using the domain name -- was sufficient for the panel to find bad faith (one of the three requirements in every UDRP proceeding). In that case, the panel wrote:
Complainant argues that Respondent’s use of Complainant’s CITIBANK mark in combination with the “.porn” gTLD tarnishes the CITIBANK mark through falsely implying that Complainant is somehow connected to the adult entertainment industry. The Panel agrees and finds that Respondent has demonstrated bad faith.
This conclusion is an unusual -- but increasingly popular -- reference to the relevance of the TLD in a domain name dispute. (See "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?")
Still, the <citibank.porn> decision is consistent with numerous other UDRP cases involving adult-themed websites, even before the arrival of the new TLDs. Indeed, nearly 2,000 WIPO and more than 700 Forum decisions contain the word "pornographic."
For example, in a 2005 decision involving the domain name <holidayinnmanassas.com>, one UDRP panel wrote that "[i]t is well established that using another’s well-known mark to attract Internet users to a pornographic website constitutes bad faith use of the domain name." (Disclosure: I represented the complainant.)
Another 2005 decision involved the domain name <gapclothing.info>, which was linked to websites "displaying pornography and other adult content as well as links to other sexually explicit sites." In that case, the panel found bad faith even though it was obvious that the content was not related to the owner of the GAP clothing trademark, due to the trademark doctrine of "initial interest confusion." The panel said:
The present case involves the deliberate diversion of Internet users who intend to access a website connected to the Complainant and the taking of unfair advantage of the Complainant’s goodwill. It is the case that internet users who visit the Respondent’s website would be unlikely to be confused into believing that it was the Complainant’s website. However, in the view of the Panel and in line with other decided cases under the Policy, the deliberate creation of “initial interest confusion” and the consequent diversion of internet traffic is sufficient to establish bad faith on the Respondent’s part.
Interestingly, the new adult TLDs are not the first adult TLDs. As domain name watchers and many trademark owners know, .xxx was launched in 2011 (five years after ICANN first rejected it). But, .xxx has never proven very popular, and only 36 UDRP disputes for .xxx domain names have been filed at WIPO and the Forum in the past 4+ years. All but one of the decisions resulted in a transfer to the trademark owner.
So, if .xxx is any indication, .adult, .porn, .sex and .sexy might not create too many problems for trademark owners online. On the other hand, the existence of five adult-themed TLDs instead of just one certainly offers more opportunities for cybersquatters.
In any event, the UDRP (which allows a disputed domain name to be transferred) and the URS (which allows a disputed domain name to be suspended) are effective legal tools for any company that finds its trademarks registered in the new adult TLDs. If past decisions offer any lessons for the future, trademark owners generally should be successful in fighting these cybersquatters.
