Greenberg Traurig Alert
New .BIZ and .INFO Internet Domains to Become Operational -- Time-Sensitive
Opportunity for Trademark Owners to Protect Marks
By Alan N. Sutin and
Daniel I. Schloss, Greenberg
Traurig LLP, New York Office
View or download the PDF version of this Alert
On May 15, 2001, two private companies finalized agreements with the
Internet Corporation for Assigned Names and Numbers ("ICANN") enabling them
to become registry operators for the new generic top-level domains ("gTLDs")
to be known as ".biz" and ".info." This will mark the first introduction
of new gTLDs since the mid 1980s, when the current domain name system became
operational. These new gTLDs will supplement the familiar gTLDs .com, .net,
|"... both registry operators
are affording trademark owners time-sensitive opportunities to minimize
the most egregious forms of "cybersquatting"..."
The general public cannot yet register .biz and .info domain names, and
the Federal Trade Commission has cautioned the public to be wary of various
third-party offers to "pre-register" such domain names.
However, both registry operators are affording trademark owners time-sensitive
opportunities to minimize the most egregious forms of "cybersquatting" abuses
of their trademarks. The trademark procedures for the .biz domain are currently
more extensive than those available for .info.
.biz Intellectual Property Claim Service
Although .biz registrations are not yet being accepted, NeuLevel, Inc,
the newly accredited registry that will operate the .biz domain, will be
allowing trademark owners to file "IP Claims" asserting their trademark
rights. IP Claims can specify any trademark or service mark covering specific
goods and services – whether the mark is actually registered, the subject
of a pending application, or simply used in commerce as a "common-law" trademark.
IP Claimants must also indicate the effective date of the applicable registration
or application (if any) and the date on which the mark was first used in
NeuLevel has announced that it intends to charge $90 for each IP Claim
filed, and that it will accept IP Claims only between
May 21, 2001 and July 9, 2001. The filing of
an IP Claim does NOT mean that any particular domain name will be registered
to the IP Claimant. Applications to register domain names must be submitted
separately – not to NeuLevel, but to an ICANN-accredited registrar authorized
by NeuLevel to accept applications for .biz domain names. NeuLevel will
soon be providing a list of authorized registrars and announcing the exact
date when applications will be accepted by authorized registrars.
The main purpose of NeuLevel’s IP Claim service is to decrease the chances
of obvious cybersquatting by someone other than the trademark owner who
manages to register a domain name consisting solely of a third party’s exact
trademark and the .biz gTLD. This is particularly important, because
rushing to submit applications for domain names may not be enough to secure
Unlike the system currently in place for established top-level domains
such as .com, initial applications for .biz domains will not be immediately
accepted or rejected in "real time." Instead, there will be an initial
period — following the IP Claim period — in which applications for .biz
domain names will be collected and held without being granted, rejected,
or actually "going live." Domain names for which multiple applications are
submitted will be randomly assigned by a computer to one applicant.
If an applicant submits an application for any .biz domain name consisting
entirely of a trademark for which an IP Claim has been filed, the applicant
will be automatically notified of the IP Claim. If the applicant opts to
proceed with the application after being informed of the IP Claim, the trademark
owner will be automatically notified of the domain name application. If
the random selection process grants the domain name to someone other than
the party that filed the IP Claim, the domain name will automatically be
placed "on hold" for a period of thirty days after .biz domain names go
IP Claimants will also be the ONLY parties eligible to use the new "Start-up
Trademark Opposition Policy" ("STOP"), which carries
a lower burden of proof than the existing Uniform Dispute Resolution Policy
("UDRP") now applicable to domain names registered by ICANN-accredited registrars.
In order to prevail under the STOP, an IP Claimant bringing a Complaint
will need to demonstrate, among other things, that the domain was either
registered or used in bad faith.
Some registrars, such as Register.com, are offering package services
to submit IP Claims as well as application submissions for particular domain
names. There is no guarantee that any particular domain name will be secured
in this manner, although some applicants may find it convenient to submit
IP Claims and domain name applications simultaneously.
.info Sunrise Period
Afilias Ltd., the registry operator for the new .info gTLD, has taken
a somewhat different approach that begins directly with applications to
register .info domain names prior to the formal launch of the .info gTLD,
during a stage known as the "Sunrise Period." Afilias will soon announce
the dates of the Sunrise Period, estimated to run from late June to late
July, which will be reserved exclusively for owners of
marks that were registered at a national level on or before October 2, 2000.
Here too, domain names that are the subject of multiple applications
will be randomly assigned by computer. In theory, there should be fewer
initial conflicts, given the requirement to provide evidence of a trademark
registration. Conflicts arising during the Sunrise Period may be resolved
via an expedited procedure called a "Sunrise Challenge." The rules and requirements
for Sunrise Challenges are still being finalized and will appear on Afilias’
web site at http://www.afilias.com.
Preliminary information available from Afilias, however, states that the
basis for a Sunrise Challenge will be quite narrow and focus strictly on
whether the domain name registrant actually owns a national trademark registration
issued on or before October 2, 2000 for a mark that is identical to the
1 See FTC press release available at:
2 These dates are subject to change by NeuLevel.
3 This information will be available on NeuLevel’s
web site at http://www.neulevel.com.
4 This dispute resolution framework is also referred
to by ICANN as the "Startup Dispute Resolution Policy" or "SUDRP").
5 The normal UDRP requires a showing of both
use and registration in bad faith.
© 2001 Greenberg Traurig
For more information, please review our Intellectual Property Practice
description, or feel free to contact one of our attorneys.
This GT ALERT is issued for general purposes only and is not intended
to be construed or used as legal advice. Greenberg Traurig attorneys provide
practical, result-oriented strategies and solutions tailored to meet our
clients’ individual legal needs. The Firm’s responsive approach to client
service often cuts across legal subject matter, applying the right experience
and resources to provide cost-effective solutions.