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vigorously pursue the chance to reside at Universal.biz and/or Universal.info. On the other hand, the computer company might be interested in avoiding any dilution of its position at Universal.com and could also seek to occupy Universal.biz and/or Universal.info. But can the computer company automatically obtain domain registrations in the new TLDs? How can the other “Universals” increase their chances of owning Universal.biz? How will disputes be resolved between the occupants of new domain names and frustrated bidders? While several deadlines are fast HE SECOND GREAT LAND grab in the approaching, the tentative rules now in place do not New top level history of the is underway, provide clear answers to these questions. What is clear, domain names and many candy company owners will however, is that this uncertainty creates opportunity be surprised to learn that their and risk. will endanger valuable are available for the taking . . . again. NEW REGISTRATION PRACTICES ADD CONFUSION your Currently, the most valuable In a decision that will lead to a variety of inconsistent rights. Guest InternetT locations consist of addresses in the practices and results, ICANN selected different registry .com top level domain (TLD), such as operators for each of the seven new TLDs. Subject to ICANN authors Bill Hersheyfoods.com and Nestle.com. Candy approval, each operator can develop its own procedures to: companies obtained these addresses either by (1) decide who can register; (2) provide deadlines for Meyers and staking their claims early or, if they were too the submission of applications for registration; (3) determine Fred Cohen slow to the registrar's office, through the preference and priority of initial applicants when negotiations or litigation. Some companies multiple applicants seek the same domain name reveal strategies have spent millions of dollars in these efforts. (sometimes referred to as a “Sunrise” provision; and (4) The Internet Corporation for Assigned Names resolve disputes over domain name ownership. Each registry to protect your and Numbers (ICANN), the organization that operator is at a different stage in developing its procedures, oversees the primary Internet domain name and at least some of those procedures seem more likely to property. system, is attempting to increase registry operators’ profits than ease demand for .com provide a fair and efficient method of domains with the intro- awarding domain names. duction of seven new domain name suf- ICANN selected NeuLevel, Inc. fixes. The new TLDs are .biz, .info, .pro, The Internet is (www.neulevel.com) to administer the .coop, .name, .aero, and .museum. They expanding and new .biz TLD and , LLC will not affect existing TLDs, including top level domain (www.afilias.com) to administer .info. .com, .org, .net, .edu, .gov, and others. names are open These operators are furthest along in While the new TLDs are intended territory. CandyBUSINESS finalizing their procedures. Most to open new vistas and reduce details your protection importantly, for purposes of obtaining competition for the most valuable options. desired domain names, each has Internet real estate, they will likely lead developed its own multi-step process to to a host of disputes in the short run. make initial domain name assignments. Some candy companies will seek to extend their online presence from their STAKING YOUR .BIZ CLAIM current .com locations to similar .biz spots. At the same From now through September 17, NeuLevel is accepting time, those companies that lost out in the first Internet land applications for .biz domain names, which can be placed grab will be more aggressive, and smarter, this time around. through one of a multitude of ICANN-approved registrars. For example, the domain name Universal.com is owned (Ed. Note: At press time, more than 60 registrars around by a computer company offering “universal software.” Other the world had been approved). companies, including Universal Studios and the These registrars will then submit the applications to manufacturer of Universal-brand exercise equipment might NeuLevel. Effectively, these applications act as raffle tickets well be coveting the Universal.com address, and they might because in the event there are multiple applications for the same .biz domain name, NeuLevel will sunrise dispute resolution policy, or domain names. Services making these randomly select one applicant to through court action. representations often send unsolicited receive the registration. Applicants It is important to note the first faxes and e-mails. Before engaging a have several strategies for increasing rush for domain names resulted in service provider in this area, candy their chances of success, some of significant remedial legislation, such companies seeking a registrar should which are obvious from a as the Anti- Consumer review the FTC’s Consumer Alert careful reading of the applicable rules, Protection Act, as well as landmark regarding these scams (see while others require more creativity. court decisions resolving disputes www.ftc.gov/bcp/conline/pubs/ For example, a candy company between so-called “cyber pirates” alerts/domainalrt.htm) and carefully can file more than one application and trademark holders, as well review all unsolicited representations. (i.e., buy more than one raffle ticket) as disputes between competing Despite the uncertainties in the because it appears that each trademark holders. Given the nature process for assigning domain names application will have an equal chance of NeuLevel’s procedures, it is likely in the new TLDs, it will be of being selected. A NeuLevel that additional litigation will arise. significantly easier to register and representative confirmed that this maintain your domain name now multiple-filing strategy likely would TRADEMARK HOLDERS LOOK TO .INFO than it will be to reverse a registration be effective. Several methods are Afilias, the registry operator for the awarded to someone else. Indeed, available to increase the number of .info TLD, has developed a different candy companies which fail to applications you file. You can file multi-step process. During its first register now could face an expensive identical applications with the same phase, which at press time was slated undertaking or permanent loss of registrar, or you can coordinate the to start in late June, preferential rights down the road. filing of multiple applications through treatment will be given to .info New Internet real estate is for different registrars using related domain name applicants that own a sale, and those candy companies that company entities. Each strategy has its trademark that had a “national effect” wind up living at the best addresses own potential benefits and pitfalls. Of prior to October 2, 2000. will be those that create and execute course, each filing requires the Candy companies seeking .info a carefully planned strategy. CB payment of an additional fee to the domain names must also submit registrar, and the registry operator applications through their domain will take its cut. name registrars. Afilias’ first phase A company might also increase is scheduled to last 30 days. To its chances of obtaining a specific .biz avoid preferential treatment to the ABOUT THE AUTHORS domain name during the sunrise customers of any particular registrar, period by challenging a registration Afilias will select domain name Bill Meyers and granted to a competing applicant. applicants over several random Fred Cohen are litigation However, in order to make that rounds. Disputes between sunrise challenge, you must have already filed registrants and third parties will be partners in the Chicago- a statement of your rights (called an resolved under Afilias' sunrise based law firm of Goldberg, “IP Claim”), by August 6. dispute policy. Kohn, Bell, Black, The rules also allow some The second phase, which will Rosenbloom & Moritz, Ltd. jockeying to take place among start approximately 15 days Meyers chairs the firm’s applicants that do not receive the following the conclusion of the initial registration, again encouraging sunrise period, is open to the intellectual property group multiple filings and multiple fees. In general public and will remain open and assists clients in Meyers case more than one unsuccessful for 18 days. Again, if multiple maintaining existing service applicant files an IP Claim, NeuLevel applications for the same .info name marks and trademarks and will select one of these applicants at are submitted, a random, counsels clients on new random, and the selected applicant round-robin method will be used to will be allowed to challenge select a particular .info domain marks and corporate the winner's registration by using name registrant. Disputes during this identities. NeuLevel’s sunrise dispute resolution second phase will be resolved under Cohen frequently speaks policy. a separate dispute resolution policy on intellectual property If the challenger is successful, or through the courts. Finally, topics and has significant NeuLevel will transfer the domain during Afilias’ third phase, .info Cohen name to the challenger. The rules domain registrations will be made litigation experience in concerning the recourse available to available to the general public and cases involving trademark counterfeiting other unsuccessful applicants during will be processed in real-time, on a and infringement, gray market goods, the sunrise period are vague, and will first-come, first-served basis. copyright matters, and patent likely be fleshed out only in practice. If navigating through the infringement. They can be contacted Finally, there are other ways to actual rules were not sufficiently challenge the assignment of a domain challenging, the Federal Trade through the offices of CandyBUSINESS or name to another applicant, including Commission (FTC) has identified directly at (312) 201-4000. NeuLevel's post-sunrise dispute a slew of scams based on purported resolution policy, which places a guarantees of obtaining a particular relatively unfavorable burden of proof domain name or receiving preferential on the applicant compared to the treatment in the assignment of

Reprinted From Candy BUSINESS, July / August 2001