The .IN Domain
The .US Domain
Domain Names and Dispute Resolution Policies
The .BIZ Domain
The .INFO Domain
The .NAME Domain

Another potential area of conflict relating to the Internet pertains to the use and registration of country code top-level domain names (“ccTLDs”), which correspond to a particular country. .IN, for example, is the ccTLD for India. Currently, ccTLDs serve many purposes, including to designate a particular country under the domain name registrant registered the domain name, such as .DE for Germany, or reflecting another meaning, such as .TV for Tuvalu which has been marketed as a television-related ccTLD.

At this time, only a limited number of ccTLDs are governed by the ICANN UDRP, making harmonization of dispute resolution on the Internet, in the foreseeable future seem very unlikely. It is encouraging, however, that many ccTLD Registrars, while not adopting the UDRP, have followed the language of the UDRP in their respective dispute resolution procedures.

As noted, and as with most countries in the world, India has its own country code top-level domain, .IN, and registrants can register their domain names in the .CO.IN extension. Foreign companies are currently able to register their trademarks, service marks and company and trading names in the .CO.IN domain, provided that the following conditions are fulfilled [24]:

a) the domain name is not generic;

b) the domain name is derived from the company name; or

c) the domain name is the same as the trademark of the company;

d) the administrative contact for the domain name is from the company applying for the domain name;

e) the company has an Indian subsidiary incorporated by the Registrar of Companies, or a liaison office in India with the mandatory approval of the Reserve Bank of India.

While there is currently no provision under Indian law concerning the protection of domain names, Indian courts, particularly the Delhi High Court, have prevented the misuse and bad faith registration of domain names under such theories as passing-off. Similarly, the Delhi High Court has stated that a domain name can serve the same function as a trademark, but it has to date required a showing of secondary meaning in the domain name to warrant protection.

While many Internet users searching for a United States company on the Internet might intuitively believe that they should search under the .US domain, if not .com, this has generally not been the case. Even though almost anyone can register under the .US domain if they have some connection with the United States, e.g. state and local governments, schools, community colleges, technical schools, museums, libraries, organizations, businesses, and individuals, the organization of this domain has made it much less popular for United States companies, and others, than the original generic top-level domains, .COM, .NET and .ORG.

An example of the hierarchy of a .US domain name is ABC.LOS-ANGELES.CA.US. The ABC portion of the domain name represents the Registrant's chosen name, LOS-ANGELES represents the city to which the Registrant has a connection, and .CA refers to California. Clearly, attempting to locate a website intuitively using this extension does not appear to be a "user friendly" way of locating ABC in Los Angeles, California. Nonetheless, at the writing of this paper, and not taking into account the new domain extensions, .BIZ, .INFO and .NAME, the .US domain is approximately the sixth most popular domain suffix in the world.

Given the perceived demand for .US domains which would be used in the same manner as .com domains, the .US domain name Registry will shortly allow registration of those domains in the form ABC.US. Although the success of a given TLD is difficult to predict, this may be a very popular one and trademark owners would be prudent to familiarize themselves now with this TLD.

Other United States domains are .MIL, for the United States military, .EDU for degree granting institutions, and .GOV for the United States Federal Government. These domains are, of course, restricted as to purpose and as to whom may register in these domains.

On November 15, 2000, ICANN passed a resolution to add seven new top-level domains to the current .COM, .NET and .ORG domains. The new domain names will be .AERO, for the air-transport industry), .BIZ, for business, .COOP, for cooperatives, .INFO, for unrestricted use, .MUSEUM, for museums, .NAME for registration by individuals and .PRO, for registration by accountants, lawyers, physicians and the like.

ICANN has already reached agreement with the Registries of the .BIZ, .INFO and .NAME domains. The .BIZ domain is operated by NeuLevel, whose web site is located at NEULEVEL.COM; the .INFO domain is run by Afilias, whose web site is located at AFILIAS.COM; and the third domain, .NAME is operated by Global Name Registry, whose website is located at GLOBALNAME.ORG. Confusion has already arisen with the introduction of these new domains, and their corresponding dispute resolution policies, and it can only be expected that future consumer confusion is likely.

The .BIZ, .INFO and .NAME Registries each held an initial period whereby the owners of trademark rights could pre-apply to claim protection for their trademark rights in respect of these new TLDs. An overview of the initial "Sunrise" protection periods for each of these new domains follows. Specific information concerning the steps necessary to obtain protection under these new domains can be obtained from the Registries' respective web sites.

The new .BIZ TLD is a "restricted domain" limited to only those parties who intend to use the domain for a "bona fide business or commercial use." A bona fide business or commercial use or intent to use is defined as "(i) to exchange goods, services, or property of any kind; or (ii) in the ordinary course of trade or business; or (iii) to facilitate the exchange of goods, services, information, or property of any kind or the ordinary course of trade or business." It is not a bona fide business or commercial use to use or intend to use the domain name "exclusively for the expression of noncommercial ideas, i.e. registering ABCSUCKS.BIZ exclusively to criticize or otherwise express an opinion on the products or services of ABC company, with no other intended business or commercial purpose."

In addition, selling, trading , or leasing the domain name, or making an unsolicited offer to sell, trade or lease the domain name for compensation is not considered a bona fide business purpose or intended purpose.

In order to prevent potential "cybersquatting" with respect to the initial introduction of the .BIZ domain, NeuLevel, the .BIZ Registry, introduced an I.P. Claim Service to protect trademark holders from the expected initial "gold rush" in registering .BIZ domain names.

Under the I.P. Claim Service, trademark holders, whether common law, registered or pending trademarks or service marks, filed claims of their trademark rights electronically with NeuLevel, or other Registrars which had entered into agreements with NeuLevel. The claim of trademark rights was not an application for the domain name in question. The trademark owner needed to separately file applications for the domain name.

If a third party filed an application for the exact trademark upon which a trademark owner had electronically filed a claim under the I.P. Claim Service, the .BIZ Registry would notify the applicant of the trademark holders' claimed prior rights, and would also notify the trademark holder of the application, including the applicant's particulars.

The applicant would then have the opportunity to either notify the .BIZ Registry that it planned to maintain its application, in which case the application would enter the pool of applications which would be randomly selected for registration; or, if the applicant notified the .BIZ Registry that it did not wish to maintain its application or if the applicant took no action, the application would be considered withdrawn and would not be included in the random selection process.

If an applicant maintained its application and the application was randomly selected for registration, the domain name which was identical to the trademark upon which the trademark owner had filed a claim would be placed "on hold" so that no one could use the domain name during a "Cooling-Off Period," during which period the trademark holder could either resolve the matter amicably, or could file a "Start-Up Trademark Opposition Policy" (“STOP”) claim, a modified version of the ICANN UDRP. Under the STOP Opposition procedure, the trademark holder had to prove that the domain name was either registered or used in "bad faith," a much lower standard of proof than under the UDRP, which is applicable to disputes if the I. P. Claim procedure was not invoked by the trademark holder.

In addition to the STOP procedure, and the availability of the UDRP, there is also an on-going Restriction Dispute Resolution Policy (“RDRP”), to resolve claims that that the .BIZ domain name Registrant is not using or does not intend to use the domain name for a bona fide commercial purpose. Under the Policy, a third party with standing can file a complaint alleging that the "domain name is not being, or will not be, used primarily for a bona fide business or commercial purpose" and the Complainant "has been injured, or is likely to be injured, as a direct result of the third party's registration or use of the domain name." A mere claim of non-use of the domain name will be insufficient to succeed in such an action.

The .BIZ domain is currently active, although as could be expected merely from the description of the initial start-up procedures, problems were and are being encountered in its implementation.

The .INFO domain is a gTLD, similar to .COM, .NET, or .ORG, meaning that it is unrestricted in that anyone can apply for registration in this domain.

As with the .BIZ domain, the .INFO domain Registry attempted to protect trademark owners by having a "Sunrise Period" whereby those owning a trademark or service mark which had been registered on or before October 2, 2000, in any national trademark office, could pre-apply for the identical textual or word element of the mark as a domain name. Applications were randomly selected for registration, e.g. if United Airlines and United Van Lines both applied to register UNITED.INFO, either application, but not both, could be randomly selected for registration. Sunrise registrations could be subsequently challenged on narrow grounds. Otherwise, the UDRP would apply.

Challenges to Sunrise registrations could be based on the following grounds:

If the challenger was successful in the challenge, it would then have the opportunity to register the domain name, or the domain name would remain available for registration. WIPO was the exclusive Dispute Resolution Provider during the Sunrise challenge period. After the sunrise challenge period, all disputes are to be governed by the ICANN UDRP.

The .NAME domain allows individuals to register their names as personal domain names on the Internet, i.e. JOHN.DOE.NAME. The .NAME domain is an unrestricted domain in that anyone with rights in a name should be able to register in this domain. Eligible personal names are expected to include a person's legal name or the name by which that person is commonly known. The names of fictional characters will also be allowed if the registrant has trademark or service mark rights in the character's name. In addition, it will be possible to add numeric characters to the person's name, e.g. JOHN.DOE1957.NAME. There is still, however, a question with respect to other eligible names; for example, even Registrars and, apparently, the Global Name Registry have given contradictory advice concerning the ability to register the names of deceased persons. Domain names in the .NAME domain will only be open to registration in the <third-level>.<second-level>.NAME format. This format will allow users with the same last name to share the second-level TLD, while using a unique third-level domain, i.e. JANE.SMITH.NAME and JIM.SMITH.NAME.

The .NAME Registry provides special provisions for trademark owners whereby they can obtain Defensive Registrations (“DRs”) by which they can "reserve" a particular character string, e.g. ABC, to prevent others from using the string.

DRs can be filed at certain times to be determined by the Registry, for second-level domain names, third-level domain names, or a combination of both. Thus, it may be possible to register one-word DRs, although, confusingly, not one-word "regular" registrations.

DRs obtained during "Phase 1" of the process, when implemented, must be identical to the textual or word elements of a valid and enforceable trademark or service mark, having national effect, issued prior to April 16, 2001. According to the Registry, there will not be any eligibility requirements for DRs obtained during "Phase 2."

When a person attempts to register a domain name that conflicts with a DR, the applicant is notified of the DR, and is given a chance to withdraw the application. Otherwise, the applicant can request that the owner of the DR consent to registration. If the owner of the DR refuses to grant consent, a challenge against the DR under the Eligibility Requirements Dispute Resolution Policy (“ERDRP”) may be brought.

Under the ERDRP, the applicant must show that he meets the eligibility requirements for registering the domain name, or prove that the DR does not meet the eligibility requirements for a DR.

As an example of where an applicant would prevail in a dispute, if an unknown John Doe applied for JOHN.DOE.NAME, and a famous John Doe, who had previously obtained a DR on the character string JOHNDOE, attempted to challenge the application, the applicant in the case would prevail. If successfully challenged three times, referred to as "three strikes", the DR will be canceled.

Any person or entity may bring a challenge to a DR, registered domain name, or second-level e-mail address by submitting a complaint to an ERDRP Dispute Resolution Provider approved by ICANN.

The ICANN UDRP will also be available for .NAME domains, as with the other domain suffixes approved by ICANN.

In this ever expanding universe of domain name extensions and associated dispute resolution mechanisms, one thing is clear--that trademark owners and/or companies of all sizes, and even individuals, need to consult with their trademark and intellectual property counsel concerning strategies for dealing with domain names and their relationship to trademarks as well as corporate and personal names.