Domain Name Registration in the New .biz and .info

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					                                          Domain Name Registration in the New
                                              .biz and .info Top-level Domains
        On May 15, 2001, the Internet Corporation for Assigned Names and Numbers (ICANN)
signed registry agreements establishing two new top-level domains (“TLDs”)  .biz and .info 
administered by Neulevel and Afilias, respectively. Trademark owners must act quickly to take
advantage of the new registrars’ procedures for protecting intellectual property. Set out below is
a brief overview of .biz and .info registration procedures, including general recommendations for
protecting intellectual property rights.1

I.       NEULEVEL’S .BIZ REGISTRY 2

         A.       Restrictions on Use of .biz

         The .biz top-level domain, scheduled for launch on October 1, 2001, is available only to
parties who intend to use their domain names for a “bona fide business or commercial use.”3
Neulevel has expressly prohibited use of the .biz TLD for personal, non-commercial purposes,
expression of non-commercial ideas (e.g. – trademarksucks.biz), and domain name speculation,
that is, registering domain names for the ultimate purpose of sale, lease, or trading for profit.

         B.       Procedure for Protecting Trademarks and Service Marks

        Neulevel provides an Intellectual Property Claim Service, allowing owners of common-
law, registered, or pending trademarks to file Intellectual Property Claims (“IP Claims”) before
Neulevel begins to accept applications for domain names. IP Claims may be filed, for a fee of

1
        The U.S. Federal Trade Commission recently issued a consumer alert advising consumers
to avoid any domain name pre-registration service, other than those described herein, that
purports to guarantee particular new TLDs or preferential treatment in assignment of new TLDs.
www.ftc.gov/bcp/conline/pubs/alerts/domainalrt.htm.
2
        Information concerning the .biz registry is located at www.neulevel.com.
3
        Business or commercial use is defined as:
               The bona fide use or bona fide intent to use the domain name or
               any content, software, materials, graphics or other information
               thereon, to permit Internet users to access one or more host
               computers through DNS:
               a.      to exchange goods, services or property of any kind;
               b.      in the ordinary course of trade or business; or
               c.      to facilitate (a) or (b) above.


*This memorandum is intended to provide clients with information on recent developments, not to render legal advice.
$90.00, only between May 21, 2001 and July 9, 2001. When Neulevel begins accepting domain
name applications, on or about June 25, 2001, it will monitor applications for exact matches
between the subject domain name and the trademark or service mark in the IP Claim. Whenever
an application matches an IP Claim, the applicant will be notified of the identity of the IP
Claimant, the mark at issue, the goods and services in connection with which that mark is used,
and the date on which that mark first was used in commerce. The applicant then must notify
Neulevel if it wishes to proceed with registration in spite of the IP Claim.

        On or about the date that the .biz registry launches operations (anticipated to be October
1, 2001), Neulevel will notify IP Claimants of any .biz domain names that exactly match IP
Claims. Neulevel will provide the IP Claimant with contact information for the domain name
applicant. If the IP Claimant is unable to come to a satisfactory arrangement with the domain
name applicant within twenty days of notification, the IP Claimant then will have the option of
utilizing dispute resolution services provided under Neulevel’s Start-up Trademark Opposition
Policy (“STOP”).

       Specific procedures for filing an IP Claim, including information that must be included in
an IP Claim, are set out at www.neulevel.com/countdown/step1.html.

        C.      Start-up Trademark Opposition Policy (“STOP”)

       STOP is a streamlined version of dispute resolution procedures under ICANN’s Uniform
Dispute Resolution Policy (“UDRP”), and will be implemented through the arbitrators approved
to administer the UDRP. Complaints filed under STOP will be “first in line” for resolution. A
STOP Complainant also will benefit from a lower burden of proof than that required under the
UDRP.4 Under STOP, a Claimant must show that:

        (1)     the domain name at issue is identical to the mark subject to the previously filed IP
                Claim;5

4
        Under the UDRP, a complainant may succeed in obtaining a mandatory transfer of a
disputed domain name upon a showing that:
        (1)    the domain name is confusingly similar to the mark in which the Complainant has
               rights;
        (2)    the registrant has no legitimate rights or interests in respect of the domain name;
               and
        (3)    the registrant has registered and used the domain name in bad faith.
5
        For domain names that are not identical to the mark for which an IP Claim was filed,
once the domain name is in use (assuming that the use is in “bad faith”), the mark holder will be
able to pursue dispute resolution proceedings under the UDRP.

Sutherland Asbill & Brennan LLP                                                                  2
        (2)     the domain name registrant has no rights or legitimate interests in respect of the
                domain name; and
        (3)     the domain name has been registered or is being used in bad faith.6

        The requisite “bad faith” registration may be demonstrated by showing circumstances
indicating that the domain name was registered for the purpose of:

        (1)     selling, renting, or otherwise transferring the domain name registration for a price
                in excess of expenditures directly related to that registration;
        (2)     preventing the complainant from using its mark in a corresponding domain name;
        (3)     disrupting a competitor’s business; or
        (4)     intentionally attempting, for commercial gain, to attract Internet users to the
                website by creating a likelihood of confusion between the domain name and the
                complainant’s mark.

      Neulevel will put an automatic thirty-day hold on any domain names subject to a
complaint filed under STOP. If a registered domain name is subject to several IP Claims,
Neulevel will establish a priority among potential STOP complainants on a random basis.

        D.      Recommendations

        Because IP Claims (and corresponding STOP proceedings) are effective only against
domain names that exactly match the mark in which an IP Claimant claims rights, a mark owner
may wish to file an IP Claim for each and every version or common variant of its mark.7
Moreover, if the mark at issue is relatively weak, such that there may be more than one potential
IP Claimant concerning a particular domain name, it may be advisable to file IP Claims for a
particular mark both on behalf of a corporation and separately on behalf of each of its affiliates or
subsidiaries which legitimately may be said to hold rights in the mark at issue, and thereby
enhance chances of retaining a high priority among IP Claims subject to random prioritization.

        In addition to filing IP Claims during the period ending on July 9, 2001, mark owners
should, of course, file applications for .biz domain names corresponding to their marks or
common variants thereof. Neulevel will accept applications for registrations for a two-month
period beginning on or about June 25, 2001. All applications (except those for which an
applicant was notified of an IP Claim and did not inform Neulevel that it wished to proceed with
registration) will be included in the name selection process, currently scheduled to occur on a

6
      Note that the UDRP requires registration and use in bad faith.
7
      If the mark is, for example, “TYPE FAST,” the mark owner may wish to file IP Claims
for TYPEFAST and TYPE-FAST.

Sutherland Asbill & Brennan LLP                                                                      3
purely random basis between September 26 and September 30, 2001. Because the selection
process is random, it may be advisable to file applications in the name of a corporation, and in
the names of appropriate subsidiaries and/or affiliates, to maximize selection chances. On or
about October 1, 2001, Neulevel will begin accepting domain name applications on a first-come,
first-served basis.

        E.      Important Dates for .biz Domain Names

      DATE                                             EVENT
 May 21 – July 9,                               Submission of IP Claims
       2001
     June 25 –                         Submission of Domain Name Applications
September 25, 2001
  September 26 –                          Domain Names Randomly Assigned
September 30, 2001
  October 1, 2001                      Domain Name Launched (unless subject to
                                                       an IP Claim)
October 1 – October                    IP Claimants have 20 days from receipt of
     30, 2001                          .biz notification to pursue STOP or other
                                                        remedies.


II.     AFILIAS’ .INFO REGISTRY 8

        A.      Use of .info

       The .info top-level domain is an unrestricted domain that is open to use for any lawful
purpose.

        B.      Procedures for Protecting Trademarks and Service Marks

       Afilias will provide a “Sunrise Period” for pre-registration of domain names that
correspond to the “exact marks” for which a mark holder had obtained a federal or foreign
trademark or service mark registration on or before October 2, 2000.9 A “Sunrise” registration

8
       Information concerning the .info registry is located at www.afilias.com.
9
       The registration may be in any country, so long as it is of “national” effect.
       Although Afilias requires that a Sunrise preregistration request correspond to the exact
mark registered on or before October 2, 2000, Afilias will allow mark owners to preregister
domain names that use a hyphen in place of the space between two words. It seems that the

Sutherland Asbill & Brennan LLP                                                                   4
must be for a term between five and ten years. Afilias will accept “Sunrise” registrations, which
may be filed through any ICANN-approved registrar, in five rounds, and will process Sunrise
requests on a random “round-robin” basis, to avoid granting an advantage to any one applicant or
registrar. Sunrise preregistration requests may be filed through any ICANN-approved registrar.
If there is more than one preregistration request for a particular domain name, Afilias will
randomly select one request for preregistration. It currently is anticipated that the Sunrise Period
will begin on or about June 25, 2001. Afilias will provide at least thirty days of public notice
before the beginning of the Sunrise Period.

       Mark owners who do not possess mark registrations pre-dating October 2, 2000, may
apply for domain name registrations during the .info Start-up period, currently scheduled to begin
in mid-August, 2001. Start-up applications will be processed on a random basis.

        C.      Sunrise Challenge Policy

        For 120 days beginning at the end of the Sunrise Period, parties may dispute the validity
of any Sunrise registration on the basis that the registrant does not own a valid and effective mark
registration, that the domain name at issue does not exactly match the mark registration, or that
the mark registration was not issued before October 2, 2000. Sunrise registrations will remain
inactive throughout this period. The World Intellectual Property Organization (“WIPO”) has
agreed to provide dispute resolution services during the .info Sunrise Challenge period. The
rules which will govern Sunrise challenges are still under development.

        D.      Recommendations

       Mark owners should ensure that they possess certified copies of mark registrations pre-
dating October 2, 2000, so that they are able to rebuff challenges during the Sunrise period.

        During the Start-up period, mark owners may be advised to file applications for
registration of domain names incorporating all versions or common variants of their marks. In
addition, corporate mark owners may wish to maximize chances of being selected in the random
application sorting process by applying for registrations in their own name, and separately in the
names of those subsidiaries and/or affiliates who legitimately may be said to have rights in the
marks/domain names at issue.



owner of a trademark registered before October 2, 2000 such as “TYPE FAST,” for example,
could apply to preregister both TYPEFAST.info and TYPE-FAST.info. A mark consisting of
both words and a design will be evaluated, for purposes of an “exact match,” on the basis of the
words only.

Sutherland Asbill & Brennan LLP                                                                  5
        E.      Important Dates for .info Domain Names

            DATE10                                        EVENT
         Sunrise Period                        Trademark owners may pre-
     June 25 – July 24, 2001                  register as domain names their
                                              marks which were registered as
                                                    of October 2, 2000.
      15-day Quiet Period                               No Activity
   Sunrise Challenge Period                     Third parties can challenge
 July 25 – November 25, 2001                       Sunrise registrations
        Start-up Period                         All parties can register for
    Second week of August/                       domain name registration
  Beginning September, 2001                          (random process)




10
        All dates are approximate.

Sutherland Asbill & Brennan LLP                                                6