Greenberg Traurig Alert

New .BIZ and .INFO Internet Domains to Become Operational -- Time-Sensitive Opportunity for Trademark Owners to Protect Marks

May 2001
By Alan N. Sutin and Daniel I. Schloss, Greenberg Traurig LLP, New York Office

  View or download the PDF version of this Alert here.

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, and .org.

"... 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.[1] 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.

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 commerce.

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.[2] 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.[3]

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 them.

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 live.

IP Claimants will also be the ONLY parties eligible to use the new "Start-up Trademark Opposition Policy" ("STOP")[4], 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.[5]

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.

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 domain name.

Footnotes:

1 See FTC press release available at: http://www.ftc.gov/bcp/conline/pubs/alerts/domainalrt.htm.

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

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