United States: Domain Name Registration in New .Mobi Top Level Domain

On May 22, 2006, dotMobi (the informal name of mTLD Top Level Domain, Ltd.) announced the launch of the .mobi domain registry for web sites formatted for optimum use by mobile devices. Beginning June 12, 2006, trademark owners may register .mobi domain names that correspond to their registered trademarks. Trademark owners are strongly encouraged to register .mobi domain names during the early "Sunrise Registration" period. Following is a brief overview of the procedures for Sunrise Registration and for challenging the abusive or speculative registration of .mobi domain names during the Sunrise Registration period.

The Sunrise Registration period is an exclusive registration period prior to general registration when trademark owners may register desired .mobi top-level domains, thereby preventing cybersquatters from registering the domains. Only qualified trademark owners may register domain names during the sunrise period, which closes on August 21, 2006.¹ Beginning on August 28, 2006, a "General Registration" period begins and .mobi domain names will be available for registration by the general public.

Trademark owners who wish to register .mobi domain names during the Sunrise Registration period must provide the following information to an accredited dotMobi registrar:²

• The Trademark (must be three or more ASCII characters);

• Trademark registration number;

• Date of trademark application filing (this date must be before July 11, 2005);

• Date of trademark registration issuance; and

• The tradmark office that issued the registration.

All domain registrations created during the .mobi Sunrise Registration period will be automatically "locked" upon creation. This is designed to preserve information about registrants and their associated trademarks and to allow potential challengers to review the validity of all Sunrise registrations.

Disputes regarding .mobi domain names registered during the Sunrise Registration period will be settled according to the Sunrise Challenge process. A Sunrise Challenge period follows the Sunrise Registration period and runs from August 28, 2006 to December 15, 2006. Sunrise Challenges will be decided by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO"). Any person or entity may initiate a Sunrise Challenge by submitting a challenge form to WIPO in accordance with the Sunrise Challenge Rules and Sunrise Challenge Policy.³ The party submitting the Sunrise Challenge must demonstrate the following:

• The sunrise registrant did not own a current trademark or service mark registration at the time of the .mobi sunrise domain name registration; or

• The .mobi domain name is not identical to the word elements of the registrant’s trademark or service mark registration; or

• The trademark or service mark registration upon which the .mobi sunrise registration is based is not a national registration; or

• The trademark or service mark registration upon which the .mobi sunrise registration is based stems from an application for registration filed on or after July 11, 2005.

A challenger seeking transfer of the .mobi domain name, rather than mere cancellation of the registration, must also submit evidence demonstrating the challenger’s own compliance with the .mobi Sunrise Registration conditions. WIPO’s decision whether the sunrise registration conditions have been met by the original Sunrise Registrant or the challenger will be based upon a prima facie examination of the relevant trademark or service mark registration certificate(s) and the information contained in the .mobi Whois database. There can only be one Sunrise Challenge case per .mobi domain name.

Trademark owners are encouraged to register corresponding .mobi domain names as soon as possible after commencement of the sunrise registration period on June 12, 2006. Registration of .mobi domain names during the sunrise registration period will ensure that the domain names are not registered by cybersquatters and will allow for avoidance of the extensive efforts that are often required to recover domain names from cybersquatters.

This article is for informational purposes and is not intended to constitute legal advice.