When the Internet appeared some years ago you might have registered your domain name in the only available Top-Level Domains (TLDs), .com, .org, .edu and .net, and no specific procedure was available for purposes of effecting said registration. However, the registration of domain names on those TLDs raised a very controversial issue regarding the protection of trademarks on the Internet. This led the Internet Corporation for Assigned Names and Numbers (ICANN) to change the way of registering domain names in the Cyberspace. This new way of registering domain names was a result of many meetings that took place last year, and is now in full force and effect.

This article will address the issue of why it is important to get acquainted with the procedure for registering domain names on the new TLDs, .info and .biz.

1. Background

On July 16, 2000, ICANN decided to increase the number of TLDs. For that purpose ICANN received suggestions from many Internet users and organizations that were concerned about the need for creating new TLDs. Later on, ICANN opened a public process aimed at obtaining proposals and comments from interested individuals or entities regarding the new TLDs. After this public audience was held, ICANN announced the selections of new TLDs since 1980. In November ICANN announced that the proposals with registry operators were already being negotiated and those were the following:

.pro with RegisteryPro, LTD.

.name with Global Name Registry, LTD.

.aero with Societe Internationale de Telecommunications Aeronatiques SC, (SITA)

.biz with New Level

.museums with Museum Domain Management Association.

.coop with National Cooperative Business Association

.info with Afilias, LLC

Although as of this date ICANN has only come to an agreement with the registry operators of .biz and .info, this entity expects to reach a consensus shortly with the other operators.

On May 15, 2001 ICANN accredited the new TLDs .biz and .info registration process.

According to the announcement of ICANN, which was published in their website, the Chairman of ICANN's Board of Directors, Mr. Vint Cerf, said: "This is a momentous step forward in the continuing evolution of the Internet´s domain name system. However, it is just one step among many in a long process of providing consumers with the benefits of competition through a variety of domain names options and services".

Thus, consumers will have the opportunity to register a domain name in the following TLDs: (i) .info which is an unrestricted TLD for any business or person and may be used for any purpose whatsoever; (ii) .biz which is a restricted TLD only to be used for commercial or business purposes.

2. Registration

Taking into account the experience pursuant to which the registration with TLDs .com, .edu, .org and .net did not meet any standards of organization and protection of the Intellectual Property Rights, NeuLevel and Afilias (operators of .biz and .info) created a three-step registration procedure to assure fairness, uniformity and order in the introduction of the new TLDs.

2.1. NeuLevel (.biz)

a. Intellectual Property Claim Service:

  • Term: Beginning on May 21, 2001 through July 9, 2001.

  • Purpose: Any trademark owner may file a "trademark claim" with the NeuLevel before the "application process" is opened. An official fee in the amount of US$90.00 will apply to this claim.

b. Domain Name Application and Selection:

  • Term: July 9, 2001 through September 30, 2001.

  • Purpose: Any person might apply for Domain Names for business. The application fee will be of US$2.00.

  • Procedure: The domain name application will be compared against the Intellectual Property Claims lists. If the domain name appears to be identical to the trademark claim, the operator will notify the applicant of this issue, and will request the applicant to respond if he/she wants to proceed with the application or not. If the applicant does not respond, the application will be disregarded. Otherwise, the trademark owner will be notified and will have a term to challenge the registration.

c. .biz Begins Operation:

  • From October 1, 2001 on, NeuLevel and the other registrars that might issue .biz gTLDs will become operational and will accept applications on a "first come, first served" basis. After October 1, 2001 the domain name applicants awarded will not be checked against the Intellectual Property Claims.

2.2. Afilias (.info)

a. Sunrise period:

  • Term: From June 1, 2001 through end of July, 2001.

  • Purpose: Any person with a valid trademark registration might apply for a .info domain name bearing the trademark.

  • Procedure: If a third party claims to have a better right over the domain name, he/she can avail of the procedure established by WIPO to challenge the domain name.

 

b. Domain Name Application and Registration.

  • Within 15 days after the conclusion of the sunrise period, Afilias will accept applications from the public in general and the registrars will grant the domain names on a "first come, first served" basis.

c. .Info Begins Operations.

After this brief summary on registration of domain names you might ask yourself if you should be worried about registering your domain names either in .info or .biz, and our conclusion is that, if you want to protect your trademarks on those TLDs you should begin to apply to those domain names rapidly in order to safeguard them. However, you might still have an opportunity to challenge a domain name registration on the grounds of trademark infringement.

This report was prepared and is copyrighted in 2001 by PARRA, RODRÍGUEZ & CAVELIER, a law firm with offices in Bogotá, Colombia. The general information herein contained does not constitute legal advice. Transcriptions and quotes are permitted citing the source.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.