Introducing Two New Top-Level Domains: .BIZ and .INFO

In the coming months, two new domains, similar to .com, .org and .net, will be launched for use over the Internet. Thus, one might expect, as with .com, .org and .net, that the masses will rush to stake their claim to popular, famous and effective domain names bearing the new .biz and .info top-level domains. Experience has shown us the great value of registering early for domain names and monitoring the registration of domain names which incorporate an entity’s trademarks. By giving notice of trademark rights and/or registering a domain name first, businesses may be able to prevent potential competing claims and disputes over domain names, including potential cybersquatting.

Mark Your Calendars: File Notice by August 6, 2001 for .BIZ,
and by August 24 for .INFO

Recognizing the numerous domain issues of the past, Neulevel (www.neulevel.com) and Afilias (www.afilias.com), the operators of the .BIZ and .INFO registries, respectively, offer unique approaches to avoiding potential cybersquatting. Before the general registration of domain names begins, both Neulevel and Afilias have created early-registration opportunities for a trademark owner to protect its interests by providing the registry operators with notice of their trademark rights. Specifically, trademark owners have until August 6, 2001 to give notice of their trademark rights for .BIZ domain names, and between July 25 and August 24, 2001 to file a preliminary application for .INFO domain names.

Time is of the Essence

In the world of cyberspace, time is of the essence. Recapturing domain name rights after someone has successfully registered a domain name which incorporates your trademark can be a long, tedious and expensive process. As a trademark owner, you can take steps now to protect your trademark assets by taking advantage of the advance notification and application periods offered by the .BIZ and .INFO registry operators. Although different in procedure, both the advance notification and application services are exclusive to trademark owners and are available for only a very limited time.

IP Claim Service for .BIZ — Extended Deadline: August 6

In order to take advantage of the Intellectual Property ("IP") Claim Service offered by the .BIZ registry operator (Neulevel), trademark owners may file with Neulevel an IP Claim for a .BIZ domain name for a string of characters that refers to their word trademark or service mark (for example: reedsmith.biz). The IP Claim may be based upon a trademark or service mark registration, application or unregistered use of the mark. A $90.00 fee must accompany each IP Claim.

The IP Claim Service helps forestall potential disputes between trademark and service mark holders and .BIZ domain name applicants. When an applicant for a domain name ("Domain Name Applicant") applies for the exact trademark or service mark that has been filed previously as an IP Claim, Neulevel will notify the IP Claimant about the Domain Name Applicant. Neulevel will also provide to the Domain Name Applicant the following information: the IP Claimant's company name; a description of goods and services provided by the IP Claimant relating to the IP Claim; and the IP Claimant's legal contact information. Thus, from the very start, an IP Claimant will have the opportunity to prevent a domain name registration by contesting the domain name during a "freeze" period before the domain name goes live. The deadline for registering with .BIZ’s IP Claim Service has been extended to August 6, 2001.

During this "freeze" period, IP Claimants can take advantage of Neulevel’s unique dispute resolution policy. This policy may be less costly and more expeditious than the traditional means of domain name dispute resolution (the Uniform Dispute Resolution Policy ("UDRP")). Unlike the UDRP, Neulevel’s policy lowers an IP owner’s burden of demonstrating that a Domain Name Applicant has registered a domain name in "bad faith." IP Claimants need only demonstrate that the domain name was either registered in bad faith or used in bad faith.

It is important to note that the IP Claim Service does not register an IP Claimant for a domain name. For the best chance to receive your first choice in a domain name, domain name applications should be filed between June 25 and September 25, 2001. Domain names are then assigned using a randomized selection process. After .BIZ goes live on October 1, 2001, a traditional "first come first serve" application process will be utilized.

Sunrise Registration for .INFO — Extended Deadline: August 24

In contrast to the IP Claim Service offered by Neulevel for .BIZ, the registry operator of .INFO, Afilias, provides a Sunrise Registration Period between July 25 and August 24, 2001 during which trademark and service mark owners may pre-register their exact marks as a .INFO domain name. The Sunrise Registration does not confer any special legal benefits. The opportunity for registered trademark and service mark owners to pre-register simply improves the likelihood of obtaining a domain name.

Pre-registration is limited to those trademarks and service marks that were registered in a national trademark office on or before October 2, 2000. No trademark variations can be pre-registered and, although stylized marks and design marks that have wording are included, purely graphical marks are not eligible.

The pre-registration process does not guarantee that a trademark owner will receive the requested domain name. All applications received during the Sunrise Registration Period will be considered for domain name registration using a randomized round-robin mechanism. For instance, if several owners of the same mark, used in connection with different goods and services (e.g., ABC AIRLINES and ABC TELEPHONE), apply during the Sunrise Registration Period, the domain name (e.g., ABC.INFO) will issue to a single trademark owner ("Sunrise Registrant"). In other words, it is possible not to receive a domain name even though it is your registered trademark. Upon the close of the Sunrise Registration Period, Afilias will notify the applicants as to whether they have received a registration.

Once the Sunrise Registration Period closes and a fifteen (15) day Quiet Period expires, a "Sunrise Challenge Process" commences. This period, lasting from approximately August 25 to December 25 (120 days), provides any third party the opportunity to challenge the assignment of any Sunrise Registration. All challenges of Sunrise Registrations will require the Sunrise Registrant to produce a certified copy of a national trademark registration asserted during the Sunrise Registration Period. Disputes that arise under the Sunrise Challenge Process will be regulated under rules currently being promulgated by the World Intellectual Property Organization.

The Sunrise Registration Period is offered only as an accommodation and as an opportunity to apply for a desirable domain name prior to the public registration period. In short, pre-registration applications only provide the possibility, not a guarantee, of obtaining a desired domain name.

If you would like further information regarding the new .BIZ and .INFO top level domains, or would like to discuss your particular circumstances regarding this topic, please contact one of the members of Reed Smith’s Intellectual Property Group listed on the front of this Bulletin or the Reed Smith attorney with whom you regularly work.

Attached for your convenience is a list of the critical dates upon which action should be taken.

.BIZ and .INFO Domain Names – Critical Dates

.BIZ Domain Names

File IP Claim for .BIZ Domain Name Registration — 8/6/01

Early Period to File .BIZ Domain Name Application — 6/25/01–9/25/01

.INFO Domain Names

Period to File Sunrise Application for .INFO Domain Name — 6/25/01–8/24/01