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PUBLICATIONS

MAY.2001

Trademark Protection/Registration of New Top Level Domain Names

By Jeffrey A. O’Connell and Latisha R. Brown

The Internet Corporation for Assigned Names and Numbers (“ICANN”) recently announced that any company or individual that owns a registered trademark or service mark will have a special priority opportunity to register that trademark or service mark as a domain name under one of seven new top-level domains scheduled to open this year. Registrars for four of the seven new domains, (.info, .pro, .name and .biz,) have implemented a limited period, which they are calling the “Sunrise Period,” during which trademark owners can pre-register domain names containing their marks. If you own a registered trademark or service mark, you may want to protect your proprietary rights by securing a domain name with one or more of the new top-level domains. You must act promptly to take advantage of the priority period. The remaining three new domains, .AERO, .COOP and .MUSEUM, have not announced their plans at this time.

Afilias and .INFO

Afilias, the company in charge of the .info domain, will hold a 30-day pre-registration period, during which it will honor requests only from the owners of nationally registered trademarks. Afilias expects that it will begin to accept the first .info domain name applications in late June . Afilias has specific Sunrise Period Requirements and Restrictions, as follows:

  1. Those wishing to reserve their marks in the .INFO domain during the Sunrise Period must own a current trademark or service mark that was registered prior to October 2, 2000;
  2. Domain requests must consist of American Standard Code for Information Interchange (ASCII) characters (printable or plain-text characters) identical to the textual elements of the mark only (hyphens may be used between spaces within a registered mark);
  3. Sunrise Period registrations will be accepted only for terms of at least five years and will be processed after registration fees are paid in full;
  4. The domain names will be locked in registry for approximately 180 days following the last day of the Sunrise Period. We have contacted Afilias for an explanation of the term “locked in registry,” but have not yet received a response.

If you are interested in reserving your mark, the following information must be provided to a registrar, accredited by both ICANN and Afilias:

  1. ASCII character name of the mark;
  2. Date the trademark or service mark registration was issued;
  3. Country where the trademark was issued (Afilias has not specifically indicated that trademarks may be non-United States registrations); and
  4. Registration number.

Afilias will be providing “Sunrise Challenge” procedures for those who desire to dispute registrations during the Sunrise Period. This service will last for approximately 120 days following the Sunrise Period. According to Afilias, a challenge to a Sunrise Registration will succeed only if the registered domain name does not meet the eligibility requirements.

Neulevel and .BIZ

Neulevel is the company in charge of the .BIZ domain. Neulevel has a three-step approach for registration. Step One is the filing of an IP Claim Service during the initial period, which began on May 21, 2001, and will end on or about July 9, 2001. After this period, no additional filings for IP Claims will be accepted. Step Two is the Domain Name Application. Neulevel will monitor all applications for exact matches with its IP Claim database. If an exact match appears between the name an IP owner has claimed and a domain name application, NeuLevel will advise the applicant of the IP owner’s claim. The application period is scheduled to close on September 25, 2001, at which point domain names will be awarded to selected registrants. In case multiple applications for the same name, all applications will be randomized prior to the selection of one application to receive the name. At the start of Step Three, .BIZ domain names will go live, unless the domain name is subject to an IP Claim. An automatic 30-day hold is placed on any domain name registration that matches an IP Claim. Neulevel will charge a fee for the filing of each IP Claim, but has not yet made a pricing schedule available.

RegistryPro and .PRO

RegistryPro provides domain names exclusively for certified professionals. RegistryPro has begun to set up the new registry and, according to its web site, anticipates accepting registrations in mid 2001. RegistryPro has not yet released any information regarding the registration of a .PRO domain name.

Global Name Registry and .NAME

Global Name Registry will handle the registration of domain names for individuals and business entities within the .NAME domain. Global Name Registry has adopted Launch Phases, one of which is the Defensive Registrations Phase, whereby individuals and entities interested in protecting a name or trademark can use the Defensive Registrations service to prevent others from registering that name or mark. Global Name Registry does not yet have specific dates for the initiation of its Defensive Registrations phase or a fee schedule for the registration of domain names.

If you are interested in reserving your registered trademarks or service marks as domain names you should contact the proper registrar and submit the proper applications within the time permitted. Please contact Jeffrey O’Connell if you have questions or want assistance regarding domain name protection.

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