Dot-biz: The Next Big Thing in Web Names?

14 June 2001
Hold on to your seats. After years of speculation, it looks like .biz will be joining .com, .net and .org as an Internet extension or generic Top Level Domain (gTLD). The old New Economy race was to get a prized dot-com. Now, the next prize in the new New New Economy may be a catchy dot-biz like "business.biz" or "YourCompanyName.biz." While dot-biz may be the next big catch, in November 2000, the Internet Corporation for Assigned Names and Numbers (ICANN) actually approved seven new TLDs.

We'll have .info which will be for unrestricted use; .name will be for individuals. With this one, you might see "Mark.Grossman.Name."

Accountants, lawyers and physicians can get .pro; .museum will be for its obvious use. I have to wonder if the rules will allow a museum to register "museum.museum." It would be great branding like "the Pill." Any doubt about what pill I'm referring to?

The air-transport industry will get .aero. I didn't realize that their lobby was as good as the ones for the accountants, lawyers and physicians.

For co-ops, the will be .coop, and then we'll have .biz to round out the seven.

Protect Trademark

Especially with dot-biz, but to some extent with the others too, the trick is going to be to protect your trademarks. You will want "YourTrademark.biz." Trust me on that.

If you would like a dot-biz gTLD, you should immediately go to http://www.neulevel.com/countdown/index.html or other registrars like register.com, which allow you to make an Intellectual Property claim and register your trademark with the Intellectual Property (IP) Claim Service. By doing that, you'll hopefully discourage cybersquatters from trying to grab the dot-biz gTLD, which should rightfully be yours.

The time period to register with the IP Claim Service is slated to end July 9. The situation is fluid and the law relatively untested in this area, so if you miss your chance to register with the IP Claim Service, it's unclear where you'll stand legally if somebody else grabs your name.

The best case possible will be that you can file an arbitration proceeding, using the old domain name dispute policy, or file a court action and still get your name back. Either of these alternatives will be more costly and time consuming than the new process associated with the IP Claim Service.

No matter how you analyze the situation, filing today with the IP Claim Service is a better option. When you register your mark, you'll provide basic information like the name and contact information of the person to receive legal correspondence regarding claims. Most important, you'll give the character string for which you're claiming intellectual property rights. This is the key piece of information because the IP Claim Service will only recognize a claim that consists of "YourPreciseCharacterString.biz."

Other information you'll give includes a description of your goods or services, the date your goods or services were first used in commerce, and whether you base your intellectual property rights on a registration or application with a national trademark office or a common law right.

In case you're not familiar with common law trademarks, the quick summary is that you acquire common law trademark rights by using a mark in commerce and registration isn't required. While common law trademarks do have value, they have less value than registered trademarks in the world of domain name disputes. This is yet another reason to register your marks. While filing with the IP Claim Service, and even with the Trademark Office for a trademark, aren't rocket science, they're still two tasks best left to your intellectual property lawyer. You want to maximize the value of your marks and a misstep with the required forms may hurt you down the road in ways you can't anticipate today.

Claim Service

The big advantage you get from filing with the IP Claim Service is that if a potential cybersquatter attempts to register the name you claim as your own, the IP Claim Service will warn the cybersquatter of your claim. They will then have to tell the registrar that they want to proceed with their attempt to get the TLD in dispute. At least they won't be able to say, "Gee wiz, I didn't know about your claim." Bear in mind that they may not get the TLD anyway because if more than one party wants a name, there will be a lottery to determine who gets it.

If they continue with the process and win the lottery, you'll be notified of their contact information. You'll then be able to start a dispute resolution process based on the "Start-up Trademark Opposition Policy." During this process, the domain name will be on hold for 30 days while the dispute is arbitrated.

If you've been sleeping while the dot-biz domain name launches, you haven't hurt yourself yet. Just use this column as the starting point in your education and get moving in protecting your rights.




Mark Grossman's "TechLaw" column appears in numerous publications. Mark Grossman has extensive experience as a speaker as well. If you would like him to speak before your group or corporate meeting, please call (305) 443-8180 for information.

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