New Top-Level Domain Names Pose Legal Risks to Trademark Owners
June 4, 2001
Paul F. Kilmer- Washington
Trademark owners face a new challenge from the Internet with the release of
the new ".biz" and ".info" top-level domains (TLDs). Like
the ".com" phenomenon, a significant risk exists that unauthorized
persons may register a domain name containing your trademarks or service marks
in one of the new TLDs.
Fortunately, agreements signed by the companies proposing the
".biz" and ".info" TLDs with the Internet Corporation for
Assigned Names and Numbers (ICANN) offer some protection for owners of
trademarks and service marks if they act promptly.
.BIZ
The ".biz" TLD may be registered only with the bona fide intent to
use the domain for commercial purposes. This restriction offers some protection
against non-commercial enterprises applying to register names with the
".biz" extension. However, there is a better way for trademark owners
to protect against misappropriation of their marks.
Beginning on May 21, 2001, and extending through July 9, 2001, trademark and
service mark owners may file what is called an "IP Claim" with ICANN-
accredited registrars or directly with NeuLevel itself (the registry of the .biz
domains). In the IP Claim, the trademark owner must give specifics about its
trademark rights. It is anticipated that a fee of approximately $90 will be
charged for each IP Claim filed, though fees may vary by registrar. A separate
application must be made if you wish to actually register the domain name (for
an additional fee).
Applications to register ".biz" TLDs will be received commencing
July 10, 2001. Through September 25, 2001, those filings will be checked against
the database of IP Claims. In the event of an overlap by someone other than the
trademark owner, the ".biz" applicant will be informed of the details
of the IP Claim and will be required to indicate whether they wish to proceed
with the application. If the applicant fails to respond, its application will be
considered abandoned. If they decide to proceed, the trademark owner who has
registered an IP claim will be notified. Any ".biz" domain name that
reproduces a trademark set forth in an IP Claim will be put on hold for 30 days
to allow the trademark owner to challenge the application under a special
Start-Up Trademark Opposition Policy (STOP). The STOP is similar to the existing
Uniform Dispute Resolution Policy (UDRP) which provides an expedited, e-mail
based dispute arbitration. However, the claimant's burden will be lower than in
an UDRP in that no proof of actual use of the domain name will be required; mere
registration in bad faith is sufficient. If two or more persons apply for the
same ".biz" domain name during this pre-launch period, the successful
applicant will be selected at random.
Starting on October 1, 2001, NeuLevel and the registrars accredited to
register ".biz" domain names will accept applications on a first-come,
first-served basis. Those applications will no longer be checked against the IP
Claim database.
Trademark owners will still have the opportunity to challenge
".biz" registrations under the U.S. anti-cybersquatting statute (if
the cybersquatter is subject to U.S. jurisdiction), governing trademark
theories, or the UDRP arbitration process. However, trademark infringers may be
entitled to continue the use of the offending domain name during the course of
some of those proceedings and a trademark owner's burden of proof may be higher.
Depending on your particular circumstances, filing an IP Claim may or may not be
the mosr appropriate procedure. However, actually registering your mark in the
.biz domain as a defensive measure is probably advisable in most cases,
especially because after the startup process the IP Claim protection will no
longer be in effect, and because the cost of policing and pursuing
cybersquatters likely will exceed the cost of registration.
.INFO
Anyone may register a ".info" domain name. This means the threat to
trademark owners is even more pronounced than is the case with the somewhat more
restricted ".biz" names.
Beginning in June 2001, and lasting through late July 2001, Afilias, the
company that proposed the ".info" TLD, will operate a so-called
"Sunrise" process. A trademark or service mark owner having a
nationally registered mark registered on or before October 2, 2000, may file an
application with an ICANN-accredited registrar for a ".info" domain
name containing the exact registered mark. As part of the "Sunrise"
process, applications must include specifics of the trademark registration upon
which the ".info" application is based.
If more than one person applies for the same name, the first successful
applicant (using a "round-robin" processing scheme) will be entitled
to registration of the name in the ".info" domain. Because of the use
of this round-robin approach, certain strategies may be available to increase
the likelihood of having your application processed first during this phase. In
contrast with the .biz procedure, the Sunrise phase will result in actual
registration of the mark as a domain name. Thus, although there is a randomized,
round-robin procedure to process the applications submitted to the registrars,
if multiple legitimate owners of the same mark (for different goods or services)
apply, the first one processed will be the successful registrant.
A dispute resolution system, known as the "Sunrise Challenge," has
been established for disputes arising from registrations effected during the
"Sunrise" period. It may thus be advisable to start obtaining
certified copies of your registrations from the national trademark authority in
case these are needed to defend a Sunrise Challenge, as it may take some time to
obtain such certified copies.
About 15 days after the Sunrise period concludes, there will be a start-up
period in which anyone may apply for ".info" domain names. Those will
also be processed in a randomized fashion. Thereafter, domain name applications
will be taken on a first-come first-served basis.
As is the case with ".biz" domain names, trademark owners will
still have the opportunity to challenge ".info" registrations under
the U.S. anti-cybersquatting statute (if the cybersquatter is subject to U.S.
jurisdiction), governing trademark theories, or the uniform domain name dispute
arbitration process. However, trademark infringers may be entitled to continue
to use the offending domain name during the course of some of those proceedings,
and the cost of such enforcement will likely exceed the cost of the defensive
registration of the mark in the .info domain. Therefore, applying for
"Sunrise" protection is the best mechanism to prevent infringement of
a registered trademark.
Other Challenges
In addition, ICANN has conditionally approved the following TLDs: (i) .NAME;
(ii) .PRO; (iii) .COOP; (iv) .MUSEUM; and, (v) .AERO. Agreements to implement
these TLDs remain under negotiation. Complicating matters, some registrations
are now also available in the .com and other gTLDs using alphabet characters
from non-English languages. Further, some countries permit unrestricted
registration in their "country code" top level domains (ccTLDs) and
some have actually marketed these as generic domains (e.g., Tuvalu's .tv for
television; Moldova's .md for physicians; LaO People's Democratic Republic's .la
for Latin America, Los Angeles and Lousiana, etc.). Worse, some of these ccTLDs
have not adopted the ICANN uniform dispute resolution arbitration procedure,
making cybersquatter control an expensive, if not impossible challenge.
Holland & Knight Solutions
Holland & Knight LLP can help you sort out these issues, take advantage
of the opportunities, and protect against the risks posed by the domain name
registration and maintenance process and the issuance of these new TLDs. Members
of our Intellectual Property practice can provide you with services specifically
designed to meet your domain name registration and trademark protection needs
including coordination of domain name and trademark watch services, domain name
escrows and transfers, domain name lockdown services, stealth registrations, and
domain name consulting services, among others.
If you would like more specific information on how we can assist you, please
call Jose Rojas, Paul Kilmer or your Holland & Knight LLP Intellectual
Property partner toll free at 1-888-688-8500.