More dots

Prepare now for the new Internet domain names dot-biz, dot-info
Last November, the Internet Corporation for Assigned Names and Numbers (ICANN) announced that it had selected seven new top-level domains (TLDs) for use in registering domain names. The new domains are intended to offer alternatives to the familiar dot-com and dot-net, while at the same time providing for some specialization among industries on the Internet.
The new TLDs are:
aero – Restricted to air travel and transport industry
biz – Partially restricted to bona fide commercial usage
coop – Restricted to certified cooperative businesses
info – Unrestricted
museum – Restricted to museums and museum-supporting organizations
name – Restricted to personal first-name or nickname registrations
pro – Restricted to licensed professionals – attorneys, doctors, etc.
There has been both great excitement and confusion in the rush to understand this expansion of Internet names, the first major development to the domain name system since the commercialization of the Internet. The names likely to receive the most use and attention are biz and info.
Following is important information you need to know now if you’re interested in a new domain name for your business.
biz
biz is designed for “bona fide business or commercial purposes” – the exchange of goods, services or property and other uses in the ordinary course of business. biz prohibits personal, non-commercial uses for biz domain names, including parody and criticism sites such as xyzcorpsucks.biz.
To help deter cybersquatters and domain name speculators, biz has introduced a “Start-Up Intellectual Property Notification” (SIPN) system. Any person or business may file a SIPN claim based on a trademark or business name. Filing a claim allows a company to be notified if another application corresponds exactly to a particular text string. The deadline for filing SIPN claims is Aug. 6.
The initial domain name application period for biz began on June 25, and it will end on Sept. 18. Keep in mind that even if you file a SIPN claim, you must also file an application in order to register the domain name in the initial stage. All the applications received by Sept. 18 will be compared to the SIPN claims database. If a claim matches a domain name application, the applicant has one week to withdraw the application. All remaining applications will be randomized and registrations will be processed on a first-come, first-served basis.
If a domain name registered in the initial phase matches a SIPN claim, the domain name is automatically placed “on hold” for 30 days. The SIPN claimant can then use the 30 days to negotiate directly with the applicant, file a trademark infringement lawsuit, or use a special arbitration policy for biz domain names. All biz domain names (except those on hold) will be activated on Oct. 1. After that, biz domain name applications will proceed on a real-time basis.
info
info is a completely unrestricted, general purpose domain intended as an alternative to com. Beginning around Sept. 12, anyone may apply for domain names in info on a first-come, first-served basis.
From July 25 to Aug. 27, however, info will accept pre-registrations for info names from registered trademark owners. Those “sunrise” domain name applications must exactly match a trademark registered on or before Oct. 2, 2000. For example, Quarles & Brady LLP may request quarlesbrady.info based on its federal registration, but not quarles.info or quarlesbradyllp.info.
Sunrise applications will not be checked against US or international trademark records. Rather, to deter false claims, sunrise registrants will be required to pre-pay for a five-year registration term, instead of the standard two-year initial term. info will randomize the order of applications to negate any “first to file” advantage among sunrise applicants. If more than one valid trademark owner applies for the same info domain name, the familiar first-come, first-served rule applies.
A special challenge policy has been designed in case of potential cases of cybersquatting. The owner of a trademark can file a challenge from early Sept. 2001 to Jan. 18, 2002. To win a challenge, the challenger must prove one of the following four points: 1. the domain name registrant does not own a valid trademark registration; 2. the trademark registration is not of national effect; 3. the requested domain name does not match the textual element of the trademark registration; or 4. the trademark registration did not issue before October 2, 2000.
A sunrise registrant can win the challenge by providing a certified copy of the trademark registration supporting the registered domain name. If the sunrise registrant misses the response deadline, he or she will lose the right to that domain name.
Status of TLD introductions
and strategic considerations
ICANN is currently negotiating contracts for the name and pro registries. ICANN will complete those “general purpose” TLD contracts before considering agreements for the restricted aero, coop and museum TLDs. As of now, the name and pro contracts should be finalized and approved by the end of September, with new domain names launching in late 2001 or early 2002.
As mentioned above, info expects to go live in mid-September, while biz is planning for an Oct. 1 starting date. Companies should prepare now to protect trademark rights and business objectives in the new TLDs.
The first step is to determine which of the new TLDs will be most appropriate for your new domain name registrations. Given a choice between biz and info, biz will likely be the more widely accepted TLD. biz and com have very similar connotations, while info seems to imply a search or directory function.
The info and biz pre-registration policies highlight both offensive and defensive considerations in domain name selection. Trademark owners may pre-register info domain names based on registered marks, staking out territory before general applications are accepted. By contrast, the biz notification policy only allows trademark owners to guard their marks against unauthorized registrations.
Companies should review and catalog their US and international registrations, followed by a review of competing trademark registrations matching the company’s marks. This process will provide a roadmap for possible domain name applications, as well as insight into possible competition for domain name applications.
The critical consideration in the info sunrise period is the ownership and maintenance of trademark registrations issued on or before Oct. 2. Turning to the biz proposal, the key issue is determining which names and marks to submit for notification purposes. For your most important marks, I suggest submitting SIPN claims for both hyphenated and continuous text versions of the marks. There is little risk in filing claims, and claims should deter encroachment of trademarks in the new domain names.
Finally, the trademark review offers a chance to plan for biz and info challenges. You may be pursuing and defending challenges at the same time, each with extremely short deadlines. A clear understanding of corporate priorities and a coordinated strategic plan is the key to protecting and preserving a company’s good name in the new domain name space.
Sean K. Murphy is an associate in the Intellectual Property and E-Commerce and Information Technology practice groups at Quarles & Brady in Milwaukee.
July 20, 2001 Small Business Times, Milwaukee