Trademark Protection Under the New gTLDs
by Erik M. Pelton, Esq.
Seven new global top level domains (“gTLD’s”) have been approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”), the Internet agency which controls the domain name framework. The seven new domain extensions are: .info, .biz, .aero, .name, .pro, .museum, and .coop. Each new extension will have different procedures for trademark owners to protect their names from being infringed by new domain registrations. Many of these provisions are available for all trademark owners, not just those who have obtained Federal registration of their trademarks. For more information about what a trademark is and the rights of trademark owners, please download the trademarks pamphlet at http://www.tmarksman.com/webtmguide.pdf
The following is a summary and analysis of the registration and pre-registration procedures for each of the seven new domain extensions, as well as the bottom line for trademark owners.
Company: Neulevel (www.neulevel.com)
Summary: Following an initial period when trademark owners may create an IP Claim, or warning to potential domain registrants, an applicant for registration of a .biz domain must certify that the domain name is reasonably related to is commercial business and provide a description of the business. If a domain application matches and IP Claim, the domain applicant will have to acknowledge the IP Claim before proceeding with the application. But Neulevel will not refuse to register any requested domains – all enforcement is left up to the parties.
IP Claim Period
Initial Domain Name Application Phase
Regular Domain Registration
May 21 - July 9, 2001
July 9 - Sept. 25, 2001
after Sept. 25, 2001
IP Claim Period: From May 21 through July 9, 2001, the IP Claim period will allow owners of registered and common law trademarks to place their trademark into the registry’s IP Claims database for a fee of $90. Common law trademarks are those which have not been registered but are used in commerce.
The IP Claim database will automatically warn .biz domain applicants during the initial Application Phase of matching IP Claims and about the intellectual property rights claimed and the UDRP provisions. However, the listing of a registered trademark during the IP Claim period will only cause the registry to make the domain applicant acknowledge the claim. An application for registration of a .biz domain name will not be refused merely because there was an IP Claim submitted for that domain. Since multiple parties may own trademark registrations for the same wording (ex: Delta faucets and Delta airlines), multiple matching IP Claims may be submitted.
Since the IP Claim is only to warn others who may attempt to register a domain, the IP Claimant must still file an application for the domain registration when the Application Phase runs from July 9 to September 25, 2001.
All IP Claimants and domain applicants will agree to a modified version of the Uniform Dispute Resolution Policy (“UDRP”), called the Start-Up Trademark Opposition Policy (STOP). STOP provides for an expedited arbitration of a dispute if the .biz registration is awarded to one party when another party has filed an IP Claim for the same domain.
Initial Domain Name Application Phase: From July 9 to September 25, 2001, the applications for .biz domain names will be accepted. Domain name applications which exactly match an IP Claim will have to acknowledge the claim before continuing. The existence of a matching IP Claim will not prevent the applicant from trying to register the domain name.
At the end of the Phase, for those domains which have multiple applicants, there will be a random selection process to select and registrant. A party may submit more than one domain name application during the Initial Phase to increase their odds in the random selection.
Applicants who were not selected, but who filed an IP Claim, will be given the registrant's information and permitted to filed for arbitration pursuant to the STOP provisions. A contested .biz domain name will be put on hold for 30 days.
Regular Domain Name Registration: Once the Initial Domain Name Application Phase is closed, registration of all remaining .biz domain names will be available on a normal first-come-first-serve basis. IP Claims will no longer be used.
BOTTOM LINE: All registered and unregistered trademark owners who are concerned that competitors or similarly named companies or products may register a competing .biz domain name should file an IP Claim. In addition, those trademarks made up of descriptive wording and which are therefore very likely to be sought as domain names by others, will be unlikely to prevent another party from registering the corresponding .biz domain if they did not already file an IP Claim.
At the commencement of the Initial Domain Name Application Phase, all trademark owners, both registered and un-registered, should apply for registration of the .biz domain names which correspond to their trademarks and begin consistent monitoring of the WHOIS database for potential infringement.
There is no "race to file" during the IP Claim period or the initial domain name application phase, as multiple IP Claims may be filed for a trademark and the domain name registrant will be randomly selected after the close of the phase.
An IP Claim really only provides a warning to a potential domain registrant with an exactly matching domain. The only other significant benefit is access to the expedited dispute resolution process. No rights or opportunity to register the .biz domain are lost if a trademark owner does not submit an IP Claim, even if a company using the identical trademark were to submit an IP Claim.
Company: Afilias, LLC (www.afilias.com)
Start Up Period
Post- Start Up Period
beginning June 25, lasting at least 30 days
beginning approx. 15 days after the end of the sunrise period;
lasting approximately 18 days or until the volume of registrations submitted through the randomized, round-robin queuing process are completed
following the start up period
Sunrise Period: Afilias will adopt a Sunrise mechanism to permit early registration by Trademark owners, beginning June 25, 2001 and lasting for at least 30 days.
The Owner of any trademark or service mark registration having national effect which was issued prior to October 2, 2000 will be eligible to register a domain name that is identical to its mark, using ASCII characters only. Registration during the Sunrise period will be for a minimum term of five years.
In the event that separate applicants submit registration requests for identical trademarks, the registry will use and round-robin random selection process to choose a registrant. The randomization is scheduled to occur after following an initial period of 7 days, then again after rounds following each other of 3, 2, and 2 days or until real-time registration can be handled.
Challenge Period: Following the close of the Sunrise registration period, there will be a 120 day period during which any party may challenge a registration under the UDRP through WIPO. A party may challenge a registration obtained during the Sunrise Period on the following basis: (i) the registrant did not own a corresponding subsisting trademark or service mark registration; ()ii) the trademark registration was not of national effect; (iii) the domain name was not identical to the trademark or service mark registration; or (iv) the trademark or service mark registration did not issue prior to October 2, 2000. All challenges will be subject to a challenge fee of US $295 for each party. A registrant who successfully defends a challenge will be refunded their challenge fee.
Start Up Period: Beginning approximately 15 days after the close of the Sunrise Period, the Start Up Period will be an open period when anyone may register a .info domain. The Start Up Period is anticipated to last approximately 18 days. The applications during the Start Up Period will be subject to the same round-robin randomization process used during the Sunrise Period. The minimum term for registration during the Start Up Period will be two (2) years.
Post - Start Up Period / Normal Registration: Once the Start Up Period is completed, registration will be open to the general public, will be unrestricted, and will be on a first-come first-serve basis.
BOTTOM LINE: Registered trademark owners should register the .info domain name corresponding to their registered trademark during the Sunrise period. Un-registered trademark owners should monitor the registrations during the Sunrise period for infringement and register the corresponding .info domain name at the commencement of the general registration period. To have the greatest chance of registration, an .info application must be submitted in the first 7 (seven) days of the Sunrise period. Both registered and un-registered trademark owners begin consistent monitoring of the WHOIS database for potential infringement during the Sunrise period and continue to monitor the database once registration is open to the public. Trademark owners unable to submit an application during the Sunrise Period because the trademark is not registered must submit an application in the first 7 (seven) days of the Start Up Period to have the best chance of securing the corresponding .info domain.
Company: Global Name Registry Limited (“GNR”)
Registration Process: Registration will be for the third level domain (e.g., john.smith.name) so that multiple registrations are permitted for each second level domain. Applicant s will be required to declare that the domain is for personal use and that there is a relationship between the requested domain and the applicant. But GNR will maintain a “hands off” policy and will not prevent registration or enforce the declaration.
Pre-Registration: Modified Sunrise Period: Trademark owner will not be able to register a domain name before launch of the service. However, trademark owners will be allowed to place .name strings on a WHOIS trademark list (for a fee?), which will then trigger notification if someone registers a matching domain name. But GNR will not prevent registration or enforce the policy.
Will adopt UDRP.
BOTTOM LINE: Businesses with a trademark containing the name of an individual (e.g. Ralph Lauren, Solomon Construction Co.) should sign up for the WHOIS trademark list during the modified sunrise period to protect their interests in the name. At the commencement of registration, such business should register the .name domain name which corresponds to their trademark and begin consistent monitoring of the WHOIS database for potential infringement.
Registration Process: Registration will be for third level domains (e.g., pelton.law.pro.), and during the initial phase, it is likely that .law, .med, and .cpa will be available. Applicants will be required to demonstrate they qualify as a member of their profession (for example, an applicant for a .law.pro domain name may be required to demonstrate admission to a state bar). RegistryPro will operate a WHOIS database with increased search capabilities.
Pre-Registration: RegistryPro will implement a Sunrise period to permit early registration by Trademark owners. Owners of trademarks and service marks having been registered in a national trademark office for at least one year prior to the creation of the new TLD will be able to pre-register on a first-come, first-served basis if they meet the other .pro requirements. There will also be a period during which sunrise registrations can be challenged under the UDRP. The .pro domain registrant will then be required to show proof of trademark registration. Anyone may challenge. A superior registered trademark owner who challenges will be awarded the domain name.
Will adopt UDRP.
BOTTOM LINE:Eligible professionals owning registered trademarks should register the .pro domain name corresponding to their registered trademark during the Sunrise period.
Un-registered trademark owners and non-professionals should monitor the registrations during the Sunrise period for infringement. Professionals with un-registered trademarks should register the corresponding .pro domain name as soon as the general registration is available.
Both registered and un-registered trademark owners should begin consistent monitoring of the WHOIS database for potential infringement during the Sunrise period and continue to monitor the database once registration is open to the public.
Company: Museum Domain Management Association (“MDMA”)
Registration Process: Restricted to entities that meet the International Council of Museums (“ICOM”) definition of “museum” (see below). Applicant must adopt a designation clearly derived from the well-known name of the applicant’s organization, submit compliance evidence, and certify that the domain sought is not confusingly similar to any registered or potential .museum domain. There will be a five-day cooling off period between acceptance of a registration and access to the registered domain. Registry will fully examine and research each application to ensure validity.
Pre-Registration: No Sunrise mechanism.
Will adopt the UDRP.
BOTTOM LINE: Museums should apply for registration of the .museum domain name(s) corresponding to the museum’s trademark(s) as soon as registration commences. Trademark owners who are not in the museum industry need not worry – the safeguards implemented by the MDMA should prevent registration of any infringing domain names.
From ICOM Article 2 - Definitions
1. A museum is a non-profit making, permanent institution in the service of society and of its development, and open to the public which acquires, conserves, researches, communicates and exhibits, for purposes of study, education and enjoyment, material evidence of people and their environment.
The above definition of a museum shall be applied without any limitation arising from the nature of the governing body, the territorial character, the functional structure or the orientation of the collections of the institution concerned.
In addition to institutions designated as "museums" the following qualify as museums for the purposes of this definition:
(i) natural, archaeological and ethnographic monuments and sites and historical monuments and sites of a museum nature that acquire, conserve and communicate material evidence of people and their environment;
(ii) institutions holding collections of and displaying live specimens of plants and animals, such as botanical and zoological gardens, aquaria and vivaria;
(iii) science centres and planetaria;
(iv) conservation institutes and exhibition galleries permanently maintained by libraries and archive centres;
(v) nature reserves;
(vi) international or national or regional or local museum organizations, ministries or departments or public agencies responsible for museums as per the definition given under this article;
(vii) non-profit institutions or organizations undertaking research, education, training, documentation and other activities relating to museums and museology;
(viii) such other institutions as the Executive Council, after seeking the advice of the Advisory Committee, considers as having some or all of the characteristics of a museum, or as supporting museums and professional museum workers through museological research, education or training.
Company: Cooperative League of the USA
Registration Process: Registration of .coop domain names will be restricted to entities that qualify under the National Cooperative Business Association’s criteria for a “cooperative.” <link to definition.> Applicants must submit legal documents demonstrating its status as a qualifying entity. Applicants must certify that to their knowledge, the registration or intended use of the domain name will not infringe upon or otherwise violate the rights of any third party, and that they are not registering the domain name for an unlawful purpose. There will be no pre-screening or enforcement, however.
Pre-Registration: During a modified Sunrise period during the first six months of registration, only applications submitted by NCBA active members and their members (for NCBA members that are associations of industry-specific co-operatives), NCBA associate members that are designated as non-U.S. co-operatives, and ICA members that have voting rights will be accepted. These categories of businesses have already established that they meet the established NCBA “cooperative” criteria.
Will adopt the UDRP.
BOTTOM LINE: Trademark owners will be protected against the potential infringement because .coop domain names will only be available to legitimate cooperative businesses. Qualifying cooperatives should register their corresponding .coop domain name when registration commences. Trademark owners (registered and unregistered) should begin consistent monitoring of the WHOIS database as soon as registration is open to the public.
Company: Societe Internationale de Telecommunications Aeronautiques (“SITA”)
Restricted to companies is the air transport industry. Applicants will be pre-screened and required to submit references. Registrants must declare that they have legitimate business in the industry and that they will not sell or rent the domain. Will create an “Air Name Policy Group” to help resolve disputes. During the initial implementation phase, only names of airlines and airports will be accepted.
Will adopt the UDRP.
No Sunrise period.
BOTTOM LINE: Trademark owners will be protected against the potential infringement because .aero domain names will only be available to legitimate businesses in the industry. Businesses in the air transport industry should register their corresponding .aero domain name when registration commences. Trademark owners (registered and unregistered) should begin consistent monitoring of the WHOIS database as soon as registration is open to the public.
[Note: The complete applications of the registrar’s have been published by ICANN at http://www.icann.org/tlds/app-index.htm]
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