.XXX Trademark Owner May Be Harmed If sTLD Is Approved

May 11, 2010 1:00 PM PST
LOS ANGELES — Now that the comment period for the .XXX sTLD on ICANN’s site has ended, the debate whether to approve ICM’s application to sell the domain name is just heating up.

Many in the adult industry have spoken out against approving ICM’s application. But this issue goes beyond adult and affects business owners in mainstream as well.

A quick trademark search found hundreds of business’ that have registered XXX and use it either by itself or in conjunction with other terms.

One owner in particular, Mindy Nashif, who has a registered trademark for .XXX and uses the .XXX brand as part of her specialty crayons business, claims her company will be harmed if ICM’s application is approved.

“If a .XXX TLD is allowed by ICANN, it is virtually inevitable that my trademark would be tarnished, devalued and virtually destroyed,” she posted on the ICANN site. “No on .XXX TLD.”

She added, “Teens and children will always be a significant market for my .XXX crayons and crayon novelty products. Because of this, the likely TLD association of my crayon brand name with what will likely be hundreds of thousands of hardcore sex sites if ICANN allows the TLD, is particularly damaging to my brand as it applies to the child and teen market segment.”

Trademark attorney Annette Heller told XBIZ that while Nashif doesn’t own the extension, (ICANN is the body that controls the various extensions) she does own it as a trademark for her crayon business and may have a legal claim.

“If she has a viable product that is sold in the marketplace, if she can prove that the use of .XXX is causing her business disparagement, then she could get her case heard,” Heller told XBIZ.

Heller added that the burden of proof is on the business owner to establish and provide evidence that the business has suffered as a result of .XXX.

“I shudder to think what would happen if children or teens hoping to find a site selling my crayons type into their Internet browser something like ‘buy.xxx’,” Nashif said. “I strongly oppose ICANN’s allowing a .XXX TLD and respectfully ask that you do not grant the applicant’s petition for a .XXX TLD.”

One businessman, who didn’t want his name published, has trademarked DOTXXX and also owns an online dating site among several others. He told XBIZ that he applied for a .XXX trademark registration in 2000 related to adult online retail store services such as adult novelties, toys, marital aids and lingerie. The application was denied, but the DOTXXX trademark was approved. Though he says he wouldn’t make a claim in court, he feels the .XXX sTLD is a bad idea.

“I think it would segregate the adult industry and dilute the value of the trademark,” he told XBIZ. “It would create a lot of problems for the .com environment.”

Now that the comment period is over, ICANN's CEO and general counsel will review the comments submitted and prepare a summary analysis of the various submissions to present to the Board for consideration of the possible process options no later than ICANN's international meeting in Brussels.

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