The First Wave Of New Domain Names

Within a few months, domains ending in .biz and .info will be available for public registration. Prior to the registration period for these domains, trademark holders can take steps to prevent the registration of infringing .biz and .info domains by third parties.

Because the .biz and the .info domains are administered by different entities, the pre-registration trademark protection schemes for each are different. On one hand, .biz offers trademark holders an opportunity to contest a registration by a third party. On the other hand, .info offers trademark holders a chance to actually pre-register the domain names using their marks.

Starting on June 25th and ending on September 25th, potential registrants can file "applications" for .biz domains. There is no guarantee, however, that an applicant will get the .biz domain they apply for. Instead, if multiple applications are filed for a certain domain (such as shop.biz), the name will be awarded to a randomly selected applicant. An application is, essentially, a lottery ticket. During the week of September 26, and based on the filed applications, the applied-for .biz domains will be registered.

Before the end of the application period, trademark holders can file an "IP Claim" for each domain name using their marks. Filing an IP Claim does NOT entitle you to the domain name at issue, but it does provide three advantages:

1. It alerts you that someone has registered a potentially infringing domain, and alerts the registrant that you may have a claim against them;
2. It permits you to challenge the registration through a special version of the UDRP arbitration procedure that requires a (slightly) lower burden of proof than the regular UDRP arbitration procedure; and
3. It imposes a 30-day stay on all contested registrations. This means that infringing .biz domains will not be active for 30 days, giving trademark holders an opportunity to challenge the registration through the arbitration procedure.

The IP Claims service is not free -- it costs $90. (Note: this same service is being resold and rebranded by registrars that offer .biz domains, such as Register.com and Network Solutions. Some registrars might charge more for this service.) And a claim must be filed for each .biz domain you seek to protect. For example, our law firm may want to guard against registration of hughesluce.biz, hughesandluce.biz and hugheslucellp.biz -- the fee for these three IP Claims would be $270.

There is a deadline for filing IP Claims: claims must be filed before July 9, 2001. Visit Neulevel.com to learn more.

It is a good idea to submit an IP Claim for .biz domains that contain your most important trademarks. "The cost is artificially inflated," said Hughes & Luce intellectual property attorney John Patton, "but for vital trademarks, the advantages of filing are worth the cost." For lesser trademarks, misspellings, and variations of marks, it may not be worthwhile to file an IP Claim for each and every permutation. In the event of a dispute over a .biz domain, the standard UDRP arbitration procedure still remains available.

Unlike the .biz domains, trademark holders can register .info domain before the domains are made available to the public. During this so-called "Sunrise Period" trademark owners may register .info domains that exactly match their marks. But only certain trademarks will be eligible for sunrise protection: current marks having national effect prior to October 2, 2000. So, although the language does not state that unregistered, common law marks are ineligible for sunrise registration, it strongly implies that a federal registration (from any country) is the simplest way to prove eligibility.

Because the Internet is an international creature, it seems inevitable that cybersquatters in countries with lax trademark registration rules will try to grab .info domains using famous trademarks of large companies. In the event of an unauthorized sunrise registration, a special "Sunrise Challenge" procedure permits a party to challenge the registration. But since the attack is limited to the sole issue of whether the registrant met the Sunrise Period criteria, it may be necessary to challenge cybersquatters holding foreign trademark registrations through the standard domain name dispute procedure.

Afilias, the company overseeing the .info domain registry, estimates that the Sunrise Period will begin June 25th and end approximately a month later. Fees for registration have not been announced. But like the .biz domains, registration of .info domains during the Sunrise Period is likely to prove costly. Afilias has already announced that domains registered during the Sunrise Period must be registered for a minimum of five years. For more information visit Afilias.com

Trademarks that meet the requirements for the Sunrise Period are likely to be important to your business. Rather than dispute a later registration of .info domains using your company's nationwide trademark, it would be simpler to pre-register those domains.