New Top-Level Domain Names Pose Legal Risks to Trademark Owners
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.
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 most 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.
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.
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 Louisiana, 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.