The first UDRP decision involving a .XXX domain name was handed down by a National Arbitration Forum (NAF) Panelist on Tuesday. HEB Grocery Company, L.P. prevailed in its Complaint against Eric Gonzales over the domain name HEB.xxx. The decision itself was unremarkable as Mr. Gonzales clearly lacked rights or interests to the domain name. In fact, Mr. Gonzales admitted to registering HEB.xxx simply because the grocery chain had failed to “exhibit a proactive approach” towards registering in the new .XXX top-level domain.
Mr. Gonzales’ move to register HEB.xxx reminded me of the early days of the Internet. Way back in 1994, when there were less than three full-time employees at the Internet Network Information Center (“InterNIC”) handling domain registrations in .COM and only one-third of Fortune 500 companies had registered their main trademark in the .COM space, Josh Quittner wrote an article inWired about corporate adoption of the Internet. In what now seems an almost quaint analysis, Quittner examined the practice of cybersquatting, which was burgeoning as companies that had yet to get the message about “the Next Big Thing” failed to register their domains and Internet intellectual property laws and domain dispute arbitration were still in their infancy. As Quittner saw it, companies that didn’t register their .COM domain name should suffer the consequences. To prove his point, he registered McDonalds.com. Without a UDRP procedure or a precedent for domain recovery arbitration, Quittner was able to hold on to McDonalds.com for over three months, and only surrendered it to the fast food chain after extracting a $3,500 donation to a public school.
Fast-forward 18 years, and Mr. Gonzales’ attempt to make a point about HEB Grocery’s failure to register in .XXX was met with a swift and sound decision from the NAF Panelist. As ICANN paves the way for the introduction of hundreds, possibly thousands, of new gTLDs, the first .XXX UDRP decision is a reminder that we’ve come a long way since 1994. And, like the domain name space itself, the ways in which brand owners protect their online reputations are continuing to evolve.
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