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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