• Domain Update
  • April 30, 2003 | Author: Valerie du Laney
  • Law Firm: Miller Nash LLP - Seattle Office
  • Today businesses and opportunists are submitting their claims to acquire intellectual property in the form of new domain names. In November, 2000, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that seven new generic Top-Level Domains (gTLDs) had been selected for use beginning in 2001. These new gTLDs -- .biz,.info,.name,.pro,.aero,.coop, and .museum -- are all expected to "go live" by the year 2002. This means that trademark and tradename owners should take action either to secure domain names they want or to monitor new registrations for potential infringement and cybersquatters.

    The Dot-Biz Domains
    Dot-biz is a restricted gTLD, available only for commercial or business purposes. ICANN has accredited NeuLevel, a neutral third-party provider of global registry services, with operating the dot.biz domain name registry.

    NeuLevel's pre-registration "sunrise" process allowed owners of registered trademarks to submit online requests (at a nominal application fee) to pre-register domain names corresponding exactly to their registered marks. For multiple submissions for the same domain name, the process provided for one claimant to be chosen randomly as the owner of the domain. About 200,000 domains were pre-registered. If a desired domain name has been pre-registered by a third party, that pre-registration might still be subject to challenge.

    n addition, although the pre-registration process ended on September 16, there may still be opportunities for trademark owners to reserve new domain names corresponding to their trademarks. NeuLevel opened ".biz" to general registration on Nov. 7, 2001, about two weeks later than originally planned.

    The Dot-biz registration process has been fraught with difficulties. First, the "sunrise" process required each domain name applicant to own a valid trademark registration corresponding to the domain name sought. NeuLevel reports that numerous sunrise period applicants relied on trademark registrations which did not exist. Second, those dot-biz domain names sought by more than one "sunrise period" claimant are at the center of a dispute. Plaintiffs in California filed suit in Los Angeles Superior Court to block NeuLevel from awarding any domain name sought by multiple claimants. They claimed that NeuLevel's method of choosing among multiple claimants constituted an illegal lottery. The judge agreed that the plaintiffs had a reasonable chance of prevailing at trial, and so issued an injunction halting distribution of 58,000 pre-registered dot-biz domain names for which more than one application had been filed. However, on October 25, 2001, the court-ordered injunction on NeuLevel's distribution of the contested domain names was lifted because the plaintiffs failed to post a required bond. In addition, after Amazon.com threatened suit against NeuLevel on grounds similar to those alleged by the California plaintiffs, Neulevel filed a declaratory judgment action against Amazon.com. More information about dot-biz registrations is available on the registry website at www.neulevel.com..

    The Dot.Info Domains
    Afilias is the third-party provider of services accredited by ICANN to operate the new dot.info domain name registry. Anyone may register a dot.info domain for any purpose. Afilias, like NeuLevel, provided a pre-registration "sunrise" service for owners of trademarks which were registered (with any country's federal authority) by October 2, 2000. They could pre-register domain names identical to their registered marks. That "sunrise registration period" was effective from July 25 until August 27, 2001. According to Afilias, applications for more than 52,000 dot.info addresses were submitted this summer during the sunrise period intended for trademark owners. Some of those registrations are being challenged because the applications included false trademark data.

    Afilias's pre-registration "Sunrise Challenge" period is now in effect. During this period, which began on August 28 and extends through December 26, 2001, any sunrise registration can be challenged·for failure to meet sunrise application criteria. Challenges must be filed with the World Intellectual Property Organization (WIPO).

    General dot.info registrations began September 12, 2001. According to recent data from Afilias, more than 600,000 dot.info domain names have already been claimed. Further information about dot.info domain names is available at www.afilias.com.

    The Other Domains
    Dot.Name domain names are intended solely for personal, non-commercial use. The dot-name registry, operated by Global Name Registry (GNR), a British company, allows for registration of third-level Domain Names. i.e., the "First name" part of "Firstname.lastname.name." Dot.name Internet addresses are to begin "going live"on January 15, 2002. Domain names can be pre-registered now.

    A "Sunrise Phase," during which trademark owners can "defensively register" trademarks as dot.name domains, ends on December 17, 2001. During the "Sunrise Phase," owners of trademarks which were registered with a national authority by April 16, 2001 may register a dot.name domain corresponding exactly to their trademark. A defensive registration will last for ten years. GNR also offers a "NameWatch" service whereby anyone may pay for notice of attempts by third parties to register a domain name corresponding to a trademark, a specific name, or any other word. Additional information is available at www.theglobalname.org.

    Dot.Pro domain names will be for use exclusively by professionals such as lawyers, doctors and accountants, and their associations. An example of a possible new dot.pro domain is MillerNash.law.pro. The registry, to be operated by RegistryPro, plans to require applicants to submit proof of their professional credentials to reserve a domain name. Further detail may be found at www.registrypro.com.

    Dot.aero domain names are to be reserved for members of the air transport industry and civil aviation sector, including airlines, airports and related industry bodies. This registry will be run by the Societe Internationale de Telecommunications Aeronautiques S C. (SITA). SITA, which is still negotiating its final agreement with ICANN, anticipates opening its application process sometime in the first quarter of 2002. Detail is available at www.sita.com.

    Dot.coop domain names are reserved for business cooperatives, such as credit unions, agricultural grower's coops, and rural electric cooperatives. The registry is sponsored by the National Cooperative Business Association (NCBA), supported by the International Cooperative Alliance (ICA), with Poptel Ltd. serving as the technical registry operator. According to the registry website, DCLLC began offering select groups of co-operatives, including ICA members, the opportunity to reserve .coop names earlier this year through a pre-qualification process. The registry reports preregistration of more than 2,000 domain names. Active service for pre-registered domains is scheduled to commence on January 30, 2001. More information is posted at http://www.coop.org/dotcoop.html.

    Dot.museum domain names will be registered through The Museum Domain Management Association ("MuseDoma"), a non-profit trade association founded by the International Council of Museums and the J.Paul Getty Trust. According to its website www.musedoma.org, MuseDoma has been accepting preliminary requests for the reservation of subdomain names in the dot.museum top-level domain. The new domains will begin to go live during 2002.

    Overall, according to data published by Domain Name News Watch (http://cf.vi.net/dnnw/index.cfm), more than 30 million gTLD domains had been registered as of October 15, 2001. Of these, over 23 million were dot.com domain names, 4.5 million were dot.net domains, and 2.9 million were dot.orgs. A "land rush" for registering new gTLDs is not expected to occur again any time soon. Therefore, trademark owners would be well-advised to consider whether the value of their company name, trademarks, and tradenames would be protected by investing in additional domains while they remain available.