BLOCKING ADULT DOMAIN NAMES FROM HIJACKING YOUR DOMAIN NAME

On June 16, 2012 in a post labeled http://www.chicagotrademarkattorney.net/new-domain-names-bring-new-challenges-to-protecting-your-brand/ I alerted trademark owners to the establishment of new generic top level domains. Among those new domains were .XXX, .ADULT, .PORN & SEX and I wrote that “When the .XXX domain was created for adult sites last year, operators of adult businesses had the opportunity to identify themselves as adult businesses by using that domain suffix. At the same time, non-adult businesses could park .XXX domains and thereby make them unavailable for use by adult businesses thereby preventing what might be an unsavory association, e.g., GOOGLE.XXX. Now both owners of adult websites and owners of non-adult websites that wish to avoid such associations will have to deal with .ADULT and .PORN as well.”

Now, the domain name registry responsible for the .XXX, .PORN, .ADULT and .SEX domain names, the ICM Registry, has come up with a new mechanism to protect brands at a lower cost than filing a defensive domain name registration. An example of a defensive domain name registration would be, in the case of Apple, Apple registering the domain names APPLE.XXX, APPLE.PORN, APPLE.ADULT and APPLE.SEX so as to prevent another entity from diluting its brand by registering an “adult” suffix domain name incorporating their registered house mark.

The ICM registry is now offering a service called AdultBlock. It lets brand owners block the registration of terms registered in the Trademark Clearinghouse and will block that term in all four TLD’s, namely, .XXX, .PORN, .ADULT and .SEX, and will even block the adoption of confusingly similar marks with that those suffixes. It will not block existing domain names but will block future domain names. When the problematic “adult” suffixed domain name becomes available, both the AdultBlock and AdultBlock+ service will add the newly available domain name to the block for the remainder of the service period. Once a domain name is blocked by the AdultBlock or AdultBlock+ service no other users can register the domain name during the service period.  In addition, the AdultBlock+ service will block confusingly similar characters, such as replacing an “L” with a “1” and an “E” with a “3”. See http://adultblock.icmregistry.com/ for further information.

Note that to use this service you will need to obtain a Signed Mark Data (SMD) file from the Trademark Clearinghouse. Any trademark holder can submit a trademark record to the Clearinghouse. A trademark record is a registered trademark, a court validated trademark, or a trademark protected under statute or treaty. A Signed Mark Data (SMD) file is similar to a token. It is a file generated by the Trademark Clearinghouse once the trademark record and Proof of Use of that mark have been verified. This SMD has a public and encrypted identification part and allows trademark holders access to Sunrise Periods for new GTLD’s and to request other services such as to initiate a URS proceeding to recover a cybersquatted domain name. Detailed information on how to submit Proof of Use of your mark and obtain your Signed Mark Data file (SMD) may be found at http://www.trademark-clearinghouse.com/sites/default/files/files/downloads/how_to_submit_and_change_a_proof_of_use_0.pdf See also the following videos http://www.trademark-clearinghouse.com/content/how-register-clearinghouse , http://www.youtube.com/watch?v=aL0n_pNTVgE&feature=youtu.be , http://www.youtube.com/watch?v=kxHDrOS6qYI&feature=youtu.be &http://www.youtube.com/watch?v=FaW-S5G6y6A&feature=youtu.be          

Registering a trademark with the Clearinghouse costs $150.00 for the first year and can be registered for up to five years at a discount based on the length of the term. Up to ten trademark registrations can registered with the Clearinghouse on a single credit card.

If you need additional information, please let me know.   

About ERIC WACHSPRESS

The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at markscounsel@gmail.com, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
This entry was posted in News. Bookmark the permalink.