- within Media, Telecoms, IT, Entertainment, Privacy and International Law topic(s)
Article by Joel Lutzker, Jennifer Baraban, Scott Kareff and Santo Manna
Originally published in: SRZ Client ALERT
On November 16, 2000, the Internet Corporation for Assigned Names and Numbers ("ICANN") announced the selection of several new generic top-level domains ("TLDs"). Over the course of the summer and fall of 2001, the first two new TLDs will start operations: .biz, available only for commercial web sites, and .info, available for all types of web sites.
The launch of the new TLDs presents an opportunity for you to register .biz and .info domain names incorporating your trademarks, even if you do not currently have such registrations for the traditional TLDs, e.g., .com or .net. However, it also represents a risk because it may give cybersquatters the opportunity to extort money from you by snapping up domain names corresponding to your trademarks during the start-up registration periods.
This memorandum briefly summarizes some of the procedures and deadlines that have been adopted to address this problem and to enable trademark owners to stake their claims under the new TLDs. It is not intended to be an exhaustive analysis, however, particularly since these procedures and deadlines are subject to change going forward.
I. Important Dates
A. .biz Deadlines:
Date--Event
August 6, 2001--Deadline for filing an IP Claim for .biz domain names.
June 25, 2001-September 17, 2001--Start-up registration of .biz domain names.
October 1, 2001--.biz domain names go "live" (unless subject to an IP Claim).
October 1, 2001 - October 30, 2001--Cooling-off period. Registered domain names that are subject to an IP Claim will be placed on hold to allow the parties a chance to resolve their dispute.
B. .info Deadlines
Date--Event
July 25, 2001 - August 27, 2001--Sunrise registration of .info domain names available to trademark owners whose trademarks were registered prior to October 2, 2000.
August 28, 2001 - December 26, 2001--Sunrise challenge period. Third parties can challenge sunrise registrations on specified grounds.
September 12, 2001 - TBD--Start-up registration of .info domain names.
September 19, 2001--.info domain names go "live".
Trademark owners should consider filing IP Claims and start-up applications under the .biz procedure, at least with respect to their important trademarks, and taking advantage of the sunrise registration period for .info domain names if they are eligible.
II. Important Aspects of the .biz and .info Procedures
A. .biz Procedures
Stage 1: IP Claims
During this stage, trademark owners may file IP Claims with the .biz registry operator, NeuLevel, to attempt to protect their existing trademarks. Filing an IP Claim confers the following potential benefits:
- Deterrence. If a third party applies to register a domain name that is identical to an IP Claimant's trademark, the applicant must acknowledge the IP Claim before NeuLevel will process the application.
- Notification. If any such applications proceed to registration, NeuLevel will notify the IP Claimant.
- Standing. IP Claimants will have standing to bring a Start-up Trademark Opposition Policy Proceeding (a "STOP Proceeding"), an administrative dispute resolution proceeding, to seek to obtain the domain name.
- Cooling-Off Period. Successfully registered domain names which are the subject of an IP Claim will be placed on hold for 30 days from the outset of live operations for .biz domain names, giving IP Claimants time to commence a STOP Proceeding or attempt to resolve the dispute amicably.
The primary drawback of filing an IP Claim is that the potential benefits may not be worth the cost, which is $90 per IP Claim. An IP Claim only covers domain names that correspond exactly to the claimed trademark. For example, an IP Claimant that files an IP Claim for the trademark XYZ would get notice of a third party registration for XYZ.biz, but not for XY-Z.biz. Further, even if you do not file an IP Claim (and therefore cannot initiate a STOP Proceeding), you can still bring an ICANN dispute resolution proceeding applicable to cybersquatting disputes generally. The ICANN procedure is virtually identical to the STOP Proceeding, except that the STOP Proceeding carries a slightly lower standard for the Claimant to meet in order to prevail.
Accordingly, you may want to consider filing IP Claims only for your most important trademarks.
It is important to note that an IP Claim is not a substitute for registration. In order to obtain a desired domain name, an IP Claimant should also file an application to register the .biz domain name corresponding to its trademark during the start-up registration period.
Stage 2: Start-Up Registration
During this stage, anyone may file applications to register .biz domain names. As between trademark owners who each have a legitimate claim to a given domain name (e.g., DELTA faucets and DELTA airlines), NeuLevel will allocate the domain name by randomly assigning it to one of the rival claimants.
Accordingly, you should consider filing multiple applications to register domain names corresponding to your most important trademarks in order to maximize your chances of obtaining the domain name over a potential legitimate rival claimant.
Stage 3: Live Operations
Once live operations have started, NeuLevel will accept applications on a first come, first served basis, and will no longer check applications against the IP Claims database.
B. .info Procedures
Stage 1: Sunrise Registration
During the sunrise registration period, trademark owners whose marks were registered before October 2, 2000 may apply for .info domain names corresponding to their registered marks. The domain name must be identical to the textual or word elements of the mark. If multiple trademark owners request the same domain name, the registrant will be selected at random.
Stage 2: Sunrise Challenge Period
During the sunrise challenge period, a third party may challenge a sunrise registration, but only on the ground that the registrant did not meet the sunrise registration eligibility requirements (i.e., the sunrise registrant's trademark registration was not current, was not issued prior to October 2, 2000, was not of national effect or was not identical to the registered domain name).
Stage 3: Start-Up Registration
During this stage, anyone can apply for a .info domain name. All applications will be pooled and allocated at random by a process similar to that used during sunrise registration. If there is a conflict between an application received from the general public and a sunrise registration application, the parties will have the option to engage in a dispute resolution procedure, the details of which have not yet been released.
Stage 4: Live Operations
Domain names in the .info TLD are currently scheduled to start live operations on September 19, 2001. Unclaimed domain names from that date onward will be assigned on a first come, first served basis.
Further developments relating to the new TLDs, including any changes to the deadlines discussed herein, will be posted at the ICANN web site (www.icann.org) and may also be obtained by visiting the web sites run by the applicable domain name registry operator (www.neulevel.com and www.afilias.com).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.