Protecting Your Federally Registered Trademark From XXX Cybersquatting

The Coalition Against Domain Name Abuse, Inc. (CADNA), a 501(c)(6) not-for-profit corporation founded in 2007, estimates that cybersquatting costs brand owners worldwide over $1 billion every year from diverted traffic, loss of goodwill, and the increasing expense of protecting consumers from Internet-based fraud.[1] Top-level domains (“TLD”) generically categorize webpages on the Internet; .com, .edu, and .net are some of the most common extensions. The Internet Corporation for Assigned Names and Numbers (ICANN) recently approved the release of the .xxx sponsored TLD for use by the adult entertainment industry. Those outside the adult industry have the option of blocking the use of their federally registered trademarks in a .xxx extension domain name.

ICM, the entity responsible for operating the .xxx TLD, will provide owners of federally registered trademarks a “sunrise period” to block their marks from being used by another in a .xxx domain name. This sunrise period, called Sunrise B, expires October 28, 2011. To protect a mark during the Sunrise B period, the holder of a registered trademark must apply with an accredited domain name registrar and pay a fee.  To be eligible to have your mark blocked, your business cannot be part of the sponsored community (the adult entertainment industry), the mark must be federally registered as of September 1, 2011, and the domain name sought to be blocked must correspond with the complete textual component of the registered trademark.

For additional information on this topic or other related intellectual property issues, please contact one of the authors, Elliot P. Fitzgerald or Robert Michaux.

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Related Practice Areas

• Intellectual Property Litigation and Transactions