NEW DOMAIN NAMES SLATED FOR A FALL DEBUT
Trademark Holders Must Act Now to Protect Their Rights

By: Elena Muravina and Bryan Armstrong

Date: June 2001

Domain name applications from business and the general public will soon be accepted for the two newest top-level domains (TLD) recently approved by the Internet Corporation for Assigned Names and Numbers (ICANN).  The .biz domain names are intended for bona fide commercial or business use.  The use and registration of .info domain names will be unrestricted and open to anyone for any purpose.  While the creation of these new domain names will supplement the current .com, .net and .org domain names, it may also pose a new threat to a trademark holder.

If a trademark holder does not take the necessary steps prior to the registration of these new domains, it could find .biz and .info versions of its marks registered to others.  Each administrator of the new domains has devised different safeguards to protect the holders of intellectual property (IP) rights.  These measures allow the trademark holder to protect against registration by others of domain names attempting to use its marks, whether registered or unregistered, long before registration is open to the public.

.biz Domain Names

The .biz domain names are being administered by NeuLevel™ (www.neulevel.com).  NeuLevel aims to protect the trademark holder by allowing the filing of a "Trademark Claim Form" by August 6, 2001.  Although the filing of a Trademark Claim Form does not automatically reserve or register a domain name for the trademark holder, it does provide important benefits.  If timely filed, a Trademark Claim Form will result in the trademark being entered in an IP Claims database.  If subsequently the administrator receives a Domain Name Application which matches an entry in the IP Claims database, NeuLevel will advise the applicant of the potential conflict with the trademark of another party.  This notification may be sufficient to dissuade an applicant from registering a conflicting domain name.  Domain names will be awarded to applicants on a randomly selected basis, and may or may not be awarded to the trademark holder.  In any event, if a Trademark Claim Form was filed, the trademark holder is provided with the contact information for the new domain name registrant.

The filing of a Trademark Claim Form by August 6, 2001 also allows the trademark holder to take advantage of a streamlined dispute resolution process designed specifically for the launch of the .biz domain names.  This process, Start-up Trademark Opposition Policy (STOP), will be less time-consuming and have a lower burden of proof than the standard ICANN Uniform Dispute Resolution Policy (UDRP).  However, the UDRP will still be used for all disputes after the launch of the .biz domain names is completed.  NeuLevel will also place an automatic 30-day hold, or cooling-off period, on all domain name registrations which have IP Claims against them.  Access to the streamlined dispute resolution and automatic hold are only available to those trademark holders filing a Trademark Claim Form by August 6, 2001.

As explained above, to preserve all rights, it is not enough to file a Trademark Claim Form; to reserve its domain name, a trademark holder must also submit a Domain Name Application prior to September 17, 2001.  Domain Name Applications received after this date will not be considered for Domain Name Selection.  Registrants will be randomly selected in the case of multiple applications for the same name.  On October 1, 2001, .biz domain names will be available to businesses all over the world.

.info Domain Names

The .info domain names are being administered by Afilias (www.afilias.info).  Afilias is allowing the holders of trademarks registered as of October 2, 2000 to register .info domain names during the "Sunrise Period" from July 25, 2001 to August 27, 2001.  The registrars will take "turns" submitting domain name applications until they have none remaining.  Registration will be open to the general public on September 12, 2001.

Disputes over domain names registered during the Sunrise Period will be resolved through the Sunrise Challenge Process, which will commence on August 28, 2001.  Dispute resolution during this period will be handled exclusively by the World Intellectual Property Organization (WIPO).  The deadline for challenging Sunrise registrations will be December 26, 2001.  Untimely Sunrise Challenges, as well as all other .info domain name disputes, will be resolved under ICANN 's UDRP.

Registering Domain Names

The costs of registering either a .biz or .info  domain names will vary depending upon the registrar.  Registration of .biz domains will be for a minimum of two (2) years.  Registration of .info domains during the Sunrise period will be for a minimum of five (5) years, but will only be processed after registration fees are paid in full.  Lists of approved domain name registrars are available at the web sites of both NeuLevel and Afilias.

If you would like more information regarding these important new developments, want us to handle the filing of a Trademark Claim Form or an application for domain name registration,  or wish to discuss your IP portfolio and other IP needs, please do not hesitate to contact your counsel at RM&S or Elena Muravina/Bryan Armstrong.

Elena Muravina is a partner in the Beverly Hills based entertainment law firm of Rosenfeld, Meyer & Susman, LLP Ms. Muravina’s practice emphasizes entertainment, intellectual property and unfair competition areas.

  Return to top