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Trademarks and the New ".biz" and ".info" DomainsBy Jay Hollander

Jay Hollander, Esq. is the principal of Hollander and Company LLC, www.hollanderco.com, a New York City law firm concentrating its efforts in the protection and development of property interests relating to real property, intellectual property and commercial interests, as well as related litigation.

The content of this article is intended to provide general information relating to its subject matter. Providing it does not establish any attorney-client relationship and does not constitute legal advice. Personal advice in the context of a mutually agreed attorney-client relationship should be sought about your specific circumstances.

Summary: As two new top-level domains -- ".biz" and ".info" -- are introduced, trademark owners have an unprecedented opportunity (and, some might say, obligation) to protect their property in cyberspace. This article explains the important procedures that trademark owners can use to stake their claims in these new domains.


Introduction

Ever since the early years of development of the commercial Internet, fast-moving entrepreneurs raced to register popular trademarks with a ".com" top-level domain name (TLD) ahead of their rightful owners so they could either profit by selling companies the right to use their own trademarks online or use the name to criticize or lampoon these owners.

When trademark owners became understandably irritated by these questionable examples of capitalism and social comment, legislation such as the U.S. Anticybersquatting Consumer Protection Act and other, faster dispute resolution procedures, such as the Uniform Domain Name Dispute Resolution Procedure (URDP) sprang up to allow trademark owners to fight back rather than remain victims of Internet extortion and misbehavior.

In November 2000, ICANN, the organization charged with administration of the global domain name regime, approved seven new TLDs, the first since the mid 1980s. The new "Magnificent Seven" are: ".biz", ".info", ".name", ".pro", ".museum", ".aero", and ".coop". ICANN has also announced it has finalized accreditation agreements with registrars for the first two of the seven with NeuLevel for ".biz"; and Afilias for ".info".

Several accredited registrars, working in coordination with NeuLevel and Afilias, are already accepting applications for ".biz" and ".info" names, and in the fall of 2001, the registry operators are scheduled to combine all of the applications received from all accredited registrars and will allocate names to applicants.

In an effort to prevent the first-come, first-served general public gold-rush style of registration for these new TLDs that accompanied the earlier availability of the ".com", and other original generic TLDs, new procedures have been instituted in advance of registration of the ".biz" and ".info" domain names so that trademark and service mark holders can protect their intellectual property rights from cybersquatters, allowing them to assert rights to their marks in the new TLDs from the very beginning of the process.

But the criteria and procedures are different for ".biz" and ".info", so let's look at them one at a time.

Trademark Claims and the STOP Program for ".biz"

Under the ".biz" framework, competing applications for the same domain name will initially be resolved by random assignment of the name to one of the competing applicants, instead of on a first-come, first-served basis.

Recognizing that this could adversely impact the rights of trademark or service mark holders, NeuLevel has created an "IP Claim" procedure to minimize the chance of accidental conflicting applications and to allow mark owners to stake their claim to their name before competing applicants try to obtain the same name.

Under this IP Claim Procedure, registered and common law trademark owners may file an "Intellectual Property Claim" ("IP Claim"), designed to serve as notification to prospective ".biz" applicants of conflicts with intellectual property claims, and allow those filing an IP claim to challenge any randomly awarded registrations that are in conflict with pre-existing claimed trademark or service mark rights.

Required to be filed by August 6, 2001, an IP Claim warns all competing applicants during NeuLevel's "Application Phase" of a mark owner's claimed trademark or service mark in a particular domain name and forces them to acknowledge receipt of the claim before they can go forward with their application.

If they choose to do so after notification, an election must be made by September 25, 2001. Then, once a disputed name is randomly awarded, the claimed name is placed on hold for 30 days, during which time the IP claimant can utilize the fast-track administrative STOP (Start-Up Trademark Opposition Policy) Dispute Resolution Procedure to establish its rights to the name if it was not given the registration originally.

On the other hand, if no IP Claim was timely filed, then, during the initial launch period, the domain name in question will be randomly assigned from among all competing applicants for the name, with no preference for anyone who may have trademark or service mark rights in it.

So, if you are a mark owner, there is an incentive to file an IP claim, so as to ensure eligibility for the 30-day hold and faster STOP procedure, activated upon the random assignment of the disputed name to an applicant other than the IP claimant.

Additionally, reasons to file for the IP Claim procedure go beyond fear of cybersquatting alone; the procedure can prevent others having similar but different names from extending the reach of their name into your space.

For example, if your company's domain is www.nameco.com and you have trademark rights to "nameco", you might want to sign up to prevent an applicant like "namecompany" from getting too creative in the ".biz" space and attempting to use "nameco" as an alternative reference.

In this way, if "namecompany" decides to expand its name into every possible ".biz" permutation, as many did in the ".com" space, and tries to file for "nameco.biz" in addition to "namecompany.biz", it would quickly be notified of your IP Claim under NeuLevel's program.

It's important to remember that just because you apply to register a ".biz" name, you aren't automatically registered for the IP Claim service. The reverse is also true. You must actually apply for the ".biz" name even if you have filed to qualify for IP Claim protection.

Also, filing an IP Claim is a strategic decision in that cost is a factor. NeuLevel charges $90 for each IP Claim, an amount that can quickly add up for someone filing many IP Claims. Even though registrars affiliated with NeuLevel can set their own IP Claim filing prices, they are all pretty much in the same financial ballpark.

How STOP Works

STOP is a one-time remedy, available only for disputes regarding the initial award of ".biz" names during NeuLevel's launch phase of random domain name assignments, and only with respect to domain names for which IP Claims were timely filed. After the end of the launch phase, only the UDRP or the federal courts will be available to affected mark owners.

Under STOP, the disputed name must be identical to the one set forth in the IP Claim, without deviation , prefix or suffix. So a trademark owner filing an IP Claim for the name "mycompany.biz" will not be notified of "1-800mycompany.biz" or "myco.biz", and STOP will be inapplicable to such a dispute.

Unlike the UDRP, where complainants must prove that the competing domain name has been both registered and is being used in bad faith, STOP claimants need only prove that the disputed name is identical to that of the trademark or service mark contained in the IP Claim; the accused has no rights or legitimate interest in the contested domain name; and that the name was registered in bad faith or used in bad faith.

An illustrative, but not exclusive list of acceptable evidence of the registration or use of a domain name in bad faith under STOP, as well as defenses to such a claim, may be found on NeuLevel's web site.

Under this STOP procedure, if the IP Claimant is the prevailing party, it will be awarded the registration and the original registration will be transferred. Conversely, if the IP Claimant fails in its STOP proceeding, then the party initially awarded the registration under the random assignment process will keep the name, without prejudice to further remedies under UDRP or in the federal courts by the IP Claimant.

Pros and Cons of STOP vs. UDRP and RDRP

While the STOP program is only available in the context of certain ".biz" applications, it's important to remember that registrants under this new TLD still have all pre-existing dispute resolutions remedies available to them, such as federal court and UDRP.

When and why might you choose STOP rather than the UDRP? And what about the second protective layer, provided only to ".biz" applicants, called RDRP, or Restrictions Dispute Resolution Policy? Let's consider some of the pros and cons of STOP compared to these other remedies.

First, STOP is a faster procedure, 30days from start to finish, as opposed to the typical three- or four-month UDRP process, and it's easier to prove violations than under the UDRP.

One the other hand, STOP is a limited time remedy, available only for ".biz" names for which a timely IP claim was filed, and will be used only during the launch phase. After that, the availability of the STOP procedure will, itself, stop in favor of the other more traditional remedies.

Second, as already described, STOP requires that the disputed name must be identical to the alphanumeric character string contained in the IP Claim, a limitation not applicable to proceedings under the URDP, which allows filings pertaining to a name that is identical or confusingly similar to the trademark owner.

Despite this limitation of STOP, it's considerably easier to prove violations under STOP than under the UDRP. Unlike the UDRP, where complainants must prove that the competing domain name has been both registered and is being used in bad faith, STOP claimants need only prove that the disputed name is identical to that of the trademark or service mark contained in the IP Claim; the accused has no rights or legitimate interest in the contested domain name; and that the name was registered in bad faith or used in bad faith.

There are procedural differences, too. For example, under UDRP, either the complainant or the respondent can elect to have the case heard by three panelists instead of just one. If such an election is made, the complainant chooses the first panelist, and the respondent gets to choose the second, and the third is appointed as presiding panelist. Under STOP, there is one arbitrator only for all disputes, and neither side gets to choose who it will be.

The RDRP is a separate and additional fast-track procedure designed for one purpose only: to quickly weed out applicants for a ".biz" name that aren't really businesses. If, for example, someone tries to register for a ".biz" name that is identical to your name, and you can prove they aren't a business and have no intention of ever being one, you automatically will prevail under the RDRP process. If, using a hypothetical example, my name were Jay Kraft, and I decided it'd be fun to have a family site to announce family reunions and new babies to everyone in the Kraft family and I decided to apply for the name www.kraft.biz, thinking it'd be adorable to use that name for our family "business," the Kraft Corporation could block me quite simply using the RDRP procedure. In short, ".biz" means biz only. For more information on the RDRP, see NeuLevel's web site.

Some Other ".biz" Considerations

Despite the obvious attention being paid to the rights of mark owners, merely being a trademark holder is no guarantee that you will be granted the ".biz" name for which you apply at the outset. If two or more apply for the same name, the initial granting of a name will be random. It's for that very reason the STOP and RDRP procedures are so valuable. Without their expedited procedures, you could otherwise face a longer and conceivably more expensive struggle to get your name back, during which time your opponent is free to use the name.

Note that you don't have to have a registered trademark to file your IP claim. Common-law trademarks qualify. So, if your name has been identified with your business or product in your field or industry, and you can prove it, you may also have sufficient intellectual property rights to entitle you to file an IP Claim. Speak with your attorney to explore whether you qualify for common-law trademark or service mark status.

It's possible for two or more applicants to genuinely have the same name protected in different business areas. If United Air Lines and United Van Lines were each to apply for "www.united.biz", and could prove that they owned corresponding marks, each could have a valid claim, and it's not possible to know in advance which would get the domain. So just having a trademark is not a guarantee that you will receive the domain name that matches your trademark -- but that's true everywhere in cyberspace, which may explain why "www.dodge.com" belongs to a software company in Surrey, England, and not to the U.S. car maker.

It's also wise to consider the impact of not applying for this added protection might have on any future trademark infringement lawsuits, since trademark owners must take steps to protect their trademarks or leave themselves open to a claim of abandonment.

You don't have to use STOP, just because you have filed your IP claim, but the advantage of signing up is that it expands your choices, and depending on who does what next, it's a choice that could save you time, money and disappointment.

Speaking of time, because it's such a quick process, it's certainly prudent to find an attorney before notification of a competing claim, because the STOP procedure is streamlined, and you don't want to waste valuable time hunting for an attorney during the very brief time you have to act. Likely you will want to seek an attorney's advice and help in filing your trademark claim with NeuLevel's IP Claim service, so as to avoid any mistakes should you later need to utilize the STOP procedure. It's also a good idea to send right now for a certified copy of your trademark registration if you don't have one in hand, so you will have it ready, in case you have a dispute and need to quickly provide it during the accelerated procedure.

What About ".info"?

Come September 2001, ".info" is scheduled to be the Internet's first unrestricted top-level domain since ".com", being available for all uses, including business, personal and not-for-profit web sites. Applications are being accepted now.

Similar to ".biz" and its STOP procedures, ".info" has a rollout procedure, called the "Sunrise" period by the TLD's registrar, Afilias, lasting from July 25 to August 27, 2001.

During this Sunrise period, only holders of trademark and service marks registered as having national effect and issued before October 2, 2000, will be able to register a ".info" domain, and registrants will need to provide proof of their mark registrations to qualify.

How does Sunrise work in the event of a dispute?

First, only the World Intellectual Property Organization (WIPO) can be used to resolve disputes during the ".info" Sunrise challenge period. After the deadline, the UDRP or the courts must be used.

Second, the Challenge period is scheduled to begin August 28, 2001, and all challenges must be submitted no later than December 26, 2001. Afterwards, the only available remedies will be the court system or the UDRP.

Substantively, the only bases for a valid challenge to a Sunrise registration, according to Afilias, will be if:

  • At the time of registration of the domain name, no current trademark or service mark registration was issued in the registrant's name, The domain name registered is not identical to the textual or word elements of the trademark or service mark that is registered, or
  • The registration of the trademark or service mark registered is not of national effect or was not issued prior to October 2, 2000.

For more details on this Challenge period for ".info" domain names, see Afilias' web site.

If the challenge is successful, the challenger will have the right to have the registered mark canceled or transferred. If, on the other hand, the registrant is successful, both the particular challenge and any other challenges to the domain name that may have been later filed, will all be dismissed.

Without a doubt, if you are a trademark owner, the ".info" rules have been created with your interests at heart.

Copyright © Jay Hollander, 2007. All Rights Reserved.

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