A Guide to the New Domain Names - Gesmer Updegrove LLP

The Internet Corporation for Assigned Names and Numbers (ICANN) has authorized new Generic Top Level Domain (gTLD) extensions. These new registries will supplement the existing .com, .net. and .org gTLDs

The new gTLDs being implemented within the next few months include:

.biz (for commercial/business names)
.info (for unrestricted use by any individual or business for any purpose)

The following additional gTLDs will be implemented in the future:

pro (for professionals – initially restricted to doctors, lawyers, and accountants)
.name (for personal and fictional names)
.aero (for use by air-transport industry)
.coop (for use by cooperative organizations)
.museum (for use by museums and other restricted organizations)

This article focuses on the procedure for obtaining what is likely to be one of the most popular of the new domain names, the “.biz” gTLD, and to a lesser extent on the “.info” gTLD registration process.

REGISTRATION PROCESS FOR .BIZ

The .biz gTLD is a “restricted” gTLD, open only to individuals and companies for bona fide business or commercial purposes. The registration process for .biz domain names will proceed in three stages.

Stage One – IP Claim Service

This is a voluntary process that allows owners of trademarks and service marks to assert claims of intellectual property rights in their marks, so-called “IP Claims.” The purpose is to prevent “cybersquatters” from rushing in to register a .biz domain name that is identical to a rightful owner’s trademark. The IP Claim Service will achieve the following goals:

It will serve to advise others of an owner’s claims of IP rights in a specific mark.
It will require the prospective registrant of a .biz domain name for the exact mark identified in an IP Claim to acknowledge possibly conflicting rights in the mark before the application will be processed. This may deter some people from pursuing the domain name application in the first instance.
It will provide the owner with notification of any competing .biz domain name application for the exact term identified in the owner’s IP Claim.
It will allow the owner to take advantage of an internal, pre-launch dispute resolution policy known as “Start-Up Trademark Opposition Policy,” or “STOP.” Only those who file IP Claims may take advantage of this procedure.
It will provide the owner with time to act against other conflicting .biz domain name registrants before the .biz address goes live.
It will institute an automatic 30-day freeze on .biz domain name registrations against which IP Claims are asserted.

When to File an IP Claim

Between now and July 9, 2001.

Where to File an IP Claim

IP Claims can be filed electronically at http://www.neulevel.com for a cost of $90 per domain name.
IP Claims also can be filed electronically with any ICANN-accredited registrar at a cost to be determined by each registrar. Many such registrars are offering combined IP Claim/Domain Name Registration packages. See links to select ICANN-accredited registrars below.

Should Owners File an IP Claim?

We do not believe that it is essential for trademark owners to file an IP Claim, except in limited circumstances, for several reasons. First, even without having filed an IP Claim, trademark owners will still be able to use ICANN’s Uniform Domain Name Dispute Resolution Policy (the “UDRP”). Disputes can also be resolved under common law, and state and federal trademark laws (including the 1999 Anti-cybersquatting statute), against cybersquatters and infringers. Second, the cost ($90 per mark) is not trivial for most businesses. Third, the benefits of the STOP procedure have not been tested, and are uncertain. For example, filing an IP Claim will not give a trademark owner rights over someone who uses the same mark for different products (a problem that has been endemic to the domain name system from its inception). Finally, trademark owners are free to apply for .biz domain names without filing an IP Claim.

Stage Two – Pre-Launch Domain Name Application Process

Owners can file .biz domain name applications prior to the launch of the .biz Registry. After .biz is launched, domain name applications will be accepted only on a real-time, first-come, first-served basis. Filing a pre-launch application may improve an owner’s chances for obtaining any given .biz domain name. Filing an application during Stage Two does not, however, guarantee that an owner will be awarded the .biz domain name for which it has filed an application. Where multiple applications are submitted for the same .biz domain name, the .biz domain name will be awarded to one applicant based on a neutral, randomized selection process. As noted above, this is true even if an owner files an IP Claim.

When to File a .biz Pre-Launch Domain Name Application

Applications may be filed at any time, but filing before September 25, 2001 may be important for some trademark owners, where there are competing legitimate rights to the same mark. Those owners who file before September 25, 2001 will be able to take advantage of the randomized selection process noted above. Those filing after that date will not be eligible to participate in that process, and may lose any potential right to the .biz domain name.

Where to File a .biz Domain Name Application

.biz domain name applications can be filed with the ICANN-accredited registrar of your choice. See links below.

Stage Three – Launch of .biz

.biz goes live. The launch date is scheduled to occur on October 1, 2001.
Applications for .biz domain names will be awarded on a real-time, first-come, first-served basis following that date.
Domain name disputes not covered under the STOP procedure must be resolved through the UDRP or through court action.

REGISTRATION PROCESS FOR .INFO

The .info gTLD is an “unrestricted” gTLD, open to all individuals and companies for any purpose. The registration process for .info domain names will proceed in three stages, but the implementation dates for the .info registration process have not been announced as yet. We will keep you informed of new developments with respect to the .info registration process.

Stage One – Sunrise Period

Allows owners of nationally registered trademarks and service marks, effective as of October 2, 2000, to apply for .info domain names before the application process is opened to the general public. Owners of common law or unregistered trademarks, or owners of nationally registered trademarks or service marks effective after October 2, 2000, may not submit applications for .info domain names during this stage.
Assigns the award of domain names based on a neutral, randomized selection process.
Allows the owner to take advantage of a pre-launch internal dispute resolution called “Sunrise Challenge Policy.”

Stage Two – Start-Up Period

Allows the general public to submit domain name applications.
Assigns the award of domain names based on a neutral, randomized selection process.

Stage Three – Post Start-Up Period

Allows the general public to submit domain name applications on a real-time, first-come, first-served basis.
Domain name disputes not covered under the Sunrise Challenge Policy must be resolved through the UDRP or through court action.

Please feel free to contact Susan Mulholland atsusan.mulholland@gesmer.com regarding any questions you may have regarding filing .biz or .info domain name applications with these new registries.

Appendix:

Additional information regarding the registration requirements and registration process can be found at the following web sites:


.biz	http://www.neulevel.com
.info	http://www.afilias.com

You may file an application for a domain name registration with any ICANN-accredited registrar. There are over forty accredited registrars in the U.S. alone. Based on cost, customer service, and other considerations, we recommend selecting one of the following registrars:

123 Easy Domain Names, Inc. dba Signature Domains

BulkRegister.com, Inc.

Melbourne IT Limited, d//a Internet Names WorldWide

Network Solutions, Inc. Registrar

We will provide information regarding other registrars upon request.