thanks MW
NL- I downloaded this letter from the FSC website. ( http://fscblogger.wordpress.com/ ) I want to thank them for their help with this. This "lawyer letter" saves us all at least a couple hundred bucks if we wish to try and protect our websites from ICM selling our domains to someone else. I have lots of questions about the problems we are going to face when this goes out to the masses. I will address it further later this week.
Stuart Lawley, CEO
ICM Registry LLC
PO Box 30129
Palm Beach Gardens, FL 33420
Dear Mr. Lawley,
We write to you on behalf of (COMPANY NAME), Inc. in your capacity as CEO of ICM registry (ICM) and the registry operator of the .XXX top level domain. We seek your
cooperation in preventing trademark infringement and related intellectual property concerns, as well as unfair and anti-competitive business practices.
(COMPANY NAME), is the owner and user of numerous registered trademarks and unique brand names, namely __LIST TRADEMARKS__. The value of these brands and trademarks is
the product of considerable effort and marketplace success. [Provide specific examples of such success, such as awards, ALEXA ratings, etc.]
(COMPANY NAME) owns and operates numerous websites through which it distributes sells and promotes its content to consumers under its well known brand names. As a result,
(COMPANY NAME) has invested substantial resources to register, maintain and police (NUMBER OF DOMAIN NAMES) primarily within the .com TLD, including domain
names corresponding to its valuable trademarks. (COMPANY NAME) spends (AMOUNT EXPENDED) each year simply to maintain these domain names, and it spends much more
promoting them. In order to protect this investment, (COMPANY NAME) has registered many of its trademarks with the United States Patent and Trademark Office and has proactively
resolved domain name disputes with other adult companies. A list of (COMPANY NAME)’s trademarks and domain names is attached hereto as Exhibit A. Each of these trademarks and
domain names is used in worldwide commerce in connection with the sale of goods and/or services.
It is indisputable that the .XXX top level domain [TLD] has a commercial purpose. This letter is intended to put you and ICM on notice that should the implementation of the .XXX TLD
allow for the registration and use by third parties of domain names corresponding to the valuabletrademarks and brands owned and used by (COMPANY NAME), substantial costs will be
incurred by (COMPANY NAME) to protect these assets. That is, (COMPANY NAME) will be forced to choose between purchasing unwanted domain names from ICM which have little or
no inherent value to (COMPANY NAME) in a defensive posture, and engaging in legal claims against the numerous third parties likely to use the .XXX TLD to infringe upon the intellectual
property rights of (COMPANY NAME).
The so-called “sunrise” period, which provides intellectual property owners the opportunity to pay ICM for the dubious privilege of protecting from infringement upon that which (COMPANY
NAME) already owns, is wholly inadequate. It certainly does not relieve ICM of its potential liability. ICM has created a business model apparently designed to profit from creating fear
of infringement by legitimate intellectual property owners. Unlike other TLDs which are not content-specific, any third party that purchases domain names associated with (COMPANY
NAME)’s valuable trademarks and brands inherently infringes upon (COMPANY NAME) because the purchase of the .XXX domain name definitively positions the third party to compete
against (COMPANY NAME) in the same arena of commerce.
In contrast, if the holder of a trademark engages in selling specific products and services, a third party purchasing a domain identical to the trademark in a generic TLD, such as .NET or .BIZ
only improperly competes against the trademark holder if the use of the domain name is directly in competition with the holder’s area of business.
Because ICM is offering services where trademark infringement is predictable, it is obliged to prevent illegal activity when it knows such activity is occurring. In contrast to its obligations,
ICM offers to prevent infringement only when the revenue from infringement is replaced by income from the intellectual property holder. As you know, ICM has no legal right to profit
from ABCDE’s valuable intellectual property. It is irrelevant whether that profit comes from the infringer or from the trademark holder.
Additionally, ICM’s intention to offer for sale to third parties the unlimited right to purchase (COMPANY NAME)’s trademarks and other valuable brands is certain to contribute to
trademark infringement. Any attempt by any entity other than (COMPANY NAME) to register a .XXX domain name that is identical or substantially similar to one of the trademarks or domain names listed on Exhibit A would, per se, infringe upon (COMPANY NAME)’s intellectual property rights and give rise to numerous claims, including claims for cybersquatting and trademark infringement.
ICM is now on notice that the registration of any domain name using the .XXX extension that is identical or confusingly similar to one of the trademarks or domains listed on Exhibit A will
violate (COMPANY NAME)’s intellectual property rights and constitute an unfair business practice. ICM must take steps to prevent such activity before it can occur. Failure to take
affirmative steps to prevent this conduct will establish ICM’s substantial liability.
(COMPANY NAME) welcomes the opportunity to engage in meaningful dialogue with ICM, should ICM choose to resolve these matters other than through litigation.
