In our November 2000 newsletter, we reported that seven new generic top level domains would become available in mid-2001. On 15 May 2001 the Internet Corporation for Assigned Names and Numbers (“ICANN”) announced that it had finalised accreditation agreements with the new .biz and .info top level domain registries. The .biz domain name application process will commence on 21 May 2001 and the .info process is anticipated to commence in late June 2001.
.biz Process
The .biz gTLD is intended to be used primarily for bona fide business or commercial purposes. In order to avoid cases of cybersquatting, an “anti-speculation clause” has been added such that registering a domain name solely for the purpose of:
- selling, trading or leasing the domain name for compensation; or
- the unsolicited offering to sell, trade or lease the domain name for compensation
shall not constitute a bona fide business or commercial use of that domain name.
To ensure that the introduction of the new .biz gTLD takes place in a fair and orderly environment, NeuLevel (the .biz registry), in conjunction with ICANN, has developed a three phase process leading up to the launch.
Phase 1 – Intellectual Property Claim Service
This phase will commence on 21 May 2001 and is expected to close on 9 July 2001. During this phase a business or individual may file an Intellectual Property claim form. This will enable owners of registered, pending or common law trade marks to notify their interest in a .biz domain name before the application process is opened to the public. Under this procedure, if a third party applies for a domain name which is identical to an IP claim then the applicant will be notified of the IP claim and must then notify NeuLevel whether it will continue with the application. The risk that an individual may unknowingly infringe the trade mark rights of another is therefore minimised.
Should the domain name applicant be successful in registering the domain name then the IP claimant will have a 30 day window to challenge the registration before it becomes operational using a streamline dispute resolution process known as Start-up Trademark Opposition Policy (“STOP”).
The official fee to file an IP claim form is likely to be US$90.
Filing an IP claim does not create any rights over the domain name and does not remove the need for the IP claimant to file its own application for the domain name.
Phase 2 – Application and Selection
During this phase, anyone who wishes to obtain a particular .biz domain name can file an application for the name. If there is more than one application for the identical name then the successful applicant will be randomly selected. There is no limit to the number of applications which may be filed for the same name.
The official fee for filing a domain name application is likely to be US$2.
Phase 3 – Name Selection Phase
During this phase, all applications for the identical domain names will be batched and one domain name will be selected at random.
Phase 4 – Go Live Phase
This is the date from which the Registry will accept applications on a first come first serve basis. At the Go Live date, the successful Phase 2 applicant for .biz domain names will also be notified. If an IP claim form has been filed then the domain name will be placed on hold for a 30 day period to allow the IP claimant to initiate a STOP procedure.
Note
The Australian Domain Administration (“auDA”) is currently considering whether .biz and .info will be adopted in the .au name space.
.Info Process
.info will be an unrestricted gTLD open to any business or person to register for any purpose. The Start-up Phase is different to .biz and is set out below.
Phase 1 – Sunrise Period
Beginning in late June and ending in late July, anyone with a registered national trade mark may apply to register the identical domain name in .info before the name becomes available to the general public.
However, the trade mark must have been registered with national effect as from 2 October 2000. In addition, the trade mark must not contain any design or logo elements. If there is more than one application for the same domain name then the successful registrant will be selected at random.
Phase 2 – Application and Registration
Within 15 days after the conclusion of the Sunrise Period, Afilias (the .info registry) will begin accepting applications for .info domain names from the general public. Again, if there is more than one request for the identical domain name then the successful registrant will be selected at random.
Phase 3 – .info Begins Operation
Names awarded during the Sunrise Period will become operational one week after the beginning of the general application and registration process. The remainder of the awarded .info names will become operational promptly after Afilias processes them.
What You Need To Do
- Evaluate your trade mark portfolio and decide whether you should file any IP claims in .biz or Sunrise applications in .info
- Decide which .biz/.info domain names your company wishes to register.
- Decide on a strategy for securing your .biz/.info domain name – Given that there will be a random selection, there may be merit in filing multiple applications for the one name.
Davies Collison Cave is experienced in trade mark and domain name management and we would be pleased to assist in reviewing your trade mark portfolio, and developing and executing a strategy for securing your .biz and .info domain names.