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Worldwide internet domain name registrars will soon begin accepting registrations for the new “.biz” and “.info” generic top-level domains (TLDs). Under a new program instituted for both domains, trademark and service mark holders will be provided with preferential treatment in the selection and registration of new domain names within each of these domains, and need to act expeditiously to register the domain names they desire. Time is of the essence. The deadline for filing IP claims under the new “.biz” domain is July 9, 2001. At its November 16, 2000 meeting, the ICANN Board selected seven new TLDs — “.aero,” “.biz,” “.coop,” “.info,” “.museum,” “.name” and “.pro.” On May 11, 2001, ICANN signed registry agreements with Neulevel and Afilias to launch and administer the “.biz” and “.info” TLDs, respectively. Both registries have established procedures to provide preferential treatment to trademark and service mark holders in the selection and registration of new domain names. The launch timelines and IP protection procedures for each are summarized below. THE NEW ‘.BIZ’ TLD NeuLevel will permit registration of “.biz” domain names through any accredited domain name registrar. Applicants must use the registered domain names for “bona fide business or commercial use.” Cybersquatted registrations will not constitute a “bona fide business or commercial use.” The registration of a “.biz” domain name that would be used “exclusively for personal, noncommercial purposes” is prohibited. Accordingly, so-called “sucks.biz” domain names or the “use of a domain name exclusively for the expression of noncommercial ideas, the registration of domain exclusively to criticize or otherwise express an opinion on the products or services of a third party with no other intended business or commercial purpose” will be prohibited. NeuLevel has established a novel “IP Claims” process, and a related Start-Up Trademark Opposition Policy (STOP) conflict adjudication procedure. Under the IP Claims procedure, a trademark or service mark holder can submit text strings identical to its trademarks to NeuLevel (an “IP Claim”). A “trademark holder” is defined as any entity that has registered a mark, a pending application for a mark or who has used the mark on products or services provided by that entity (i.e. common law usage). NeuLevel will then notify any domain name applicant whose requested domain name matches those text strings and will also provide the applicant contact information for the trademark holder. If the applicant decides to proceed with the registration and is awarded a registration in the random allocation process, a 30-day cooling-off period is imposed. NeuLevel will then notify the trademark holder which submitted that IP Claim that the relevant domain name will become effective at the end of the 30-day cooling-off period, unless the trademark holder takes action. The IP Claim holder may then initiate a so-called STOP proceeding, which will be more streamlined than the current ICANN Uniform Dispute Resolution Policy (UDRP) and which carries a lower burden of proof for the trademark/service mark holder. It must be stressed that the filing of an IP Claim does not also constitute an application for a “.biz” domain name. Trademark and service mark owners should therefore submit both an IP Claim and a regular registration application at the applicable times specified below if they desire the relevant “.biz” domain name. Both of these can be done with various accredited registrars. IP Claims may only be handled through a pre-approved list of such registrars. The timeline for the “.biz” launch is as follows: 1. May 21, 2001 – July 9, 2001: the period for filing IP Claims. Only those IP Claims filed during this time will be acknowledged and qualify the claimant to use the STOP procedure; 2. June 25, 2001 – September 25, 2001: period for filing initial domain name applications; 3. September 26, 2001 – September 30, 2001: “.biz” random domain name selection performed by NeuLevel; 4. October 1, 2001: “.biz” domain goes live, except for those domain names still subject to a cooling-off period and/or a STOP proceeding; 5. After October 1, 2001: “.biz” domain name applications will be accepted on a first-come, first-served basis. THE NEW ‘.INFO’ TLD Afilias will permit the registration of “.info” domain names for any purpose. During an initial registration period, the so-called “Sunrise Period,” only applicants who hold a national trademark or service mark issued prior to October 2, 2000 may submit applications for domain names identical to the textual elements of those registered marks. It is estimated that the Sunrise Period will commence in late June and will last for a minimum of 30 days. Those interested in taking advantage of the Sunrise Period should check the Afilias Web site for announcement dates. Domain names registered during the Sunrise Period may not be transferred for 180 days, except in the case of a successful challenge, a decision in a UDRP proceeding or pursuant to a court order. Domain name applications during the Sunrise Period may be submitted through any accredited registrar. For those applications submitted during the Sunrise Period, registrations will be granted pursuant to a random selection process. A “Start-Up Period” will be provided during which non-trademark registration holders can submit domain name applications that will similarly be registered using random selection. The Start-Up Period will commence approximately 15 days after the conclusion of the Sunrise Period and continue for approximately 18 days. After the Start-Up Period, all applications will be registered on a first-come, first-served basis. Similar to the STOP procedure, “.info” domain name applications submitted during the Sunrise Period may be challenged pursuant to a special dispute resolution proceeding, the so-called “Sunrise Challenge.” Later filed applications may only be challenged under the UDRP and in court. If a domain name applied for during the Sunrise Period conflicts with the rights of a trademark/service mark registrant, then the registrant may bring a Sunrise Challenge against that applicant during a 120-day period following the end of the Sunrise Period. WIPO will be the exclusive venue for dispute resolution procedures for Sunrise Challenges. A Sunrise Challenge may be defeated due to any of the following factors: the challenger does not own a current trademark or service mark registration; the mark is not registered by a national office; the domain and “registered” mark is not identical; or the registration was not issued prior to October 2, 2000. ‘PRE-REGISTRATION’ A number of companies have advertised “pre-registration” services for the new TLD domain names. Neither NeuLevel nor Afilias provides for “pre-registration.” In fact, the initial registration period for each diminishes the value of first-to-file efforts because all applications within the prescribed initial periods are pooled together and then randomly selected for registration. Thus, third parties who charge fees to obtain “preferential treatment” for their clients’ applications or “guarantee” the success of any particular application may be engaging in misleading or fraudulent conduct. ICANN has stressed that “no one has been authorized to ‘pre-register’ domain names in the new TLDs. Persons who attempt to ‘pre-register’ such domain names do so at their own risk and with no assurance that they will receive the pre-registered names once the TLDs become operational.”

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