The .biz domain is one of seven new generic top level domains
authorised last year. The company charged with organisation of the
.biz registry is NeuLevel, based in the US. Several authorised
domain name registrars, including four in the UK, will take the
applications.
At present, an Intellectual Property (IP) Claim Service is being
operated by NeuLevel. Trade mark owners are invited to pay $90 to
stake their claims to a .biz name An applicant must identify its
trade mark, whether it’s a registered trade mark or what’s known as
a common law trade mark – which could be the case for a business
that has built a reputation in its name without registering the
name as a trade mark. For every word or phrase a business wants to
protect, it must pay $90. At this stage, nobody checks the validity
of the claims and more than one party can claim the same name.
The phased introduction of the .biz registry is more confusing
because NeuLevel has refused to guarantee the dates for each phase.
The first phase, the IP Claim Service, was due to end on 9th July
after which no more claims could be submitted. This week, NeuLevel
extended this deadline to 6th August, although the NeuLevel.com web
site continues to show conflicting dates on its pages.
This IP Claim Service does not mean the applicant gets the .biz
name. It just means that if someone else tries to register an
identical word as a .biz name between July and October, the party
to the IP Claim Service gets notification. It can then bring a
claim against that other person under a dispute resolution
procedure – which will cost the claimant an as yet unknown sum,
possibly around $1,500. If more than one other party has claimed
the same name, this cost could spiral. This procedure looks at the
parties’ respective rights to the name – it may be that one party
is trying to take the name in bad faith and hoping to profit from
it, in which case the legitimate applicant will likely win its
case. Alternatively, both parties’ interests in the name could be
as legitimate as each other, in which case the party bringing the
action might lose.
Come October, the $90 claims become redundant. If nobody has
already applied for a particular .biz name, it’s first-come,
first-served.
While this phased introduction of .biz is intended to protect
trade mark owners, it has other problems. It isn’t cheap. For
example, if you own widgetsonline.com, you could pay $90 to get
notification of anyone trying to register widgetsonline.biz; but
you must pay another $90 if you want notification of someone trying
for widgets-online.biz and again for widgetonline.biz. If the
competitors are cybersquatters, you will likely win your case.
Since January 2000, other domain name dispute rules have been
followed by the World Intellectual Property Organisation (WIPO) and
others. If you take a cybersquatting case before WIPO, you will
likely win your case, without paying the $90 notification fee, as
long as you’re prepared to wait a few months for the name.
The .biz dispute system is meant to favour trade mark owners,
but actually, it’s little different to the dispute resolution rules
followed by WIPO. The only significant difference in the rules that
apply is that, to prove cybersquatting under the rules followed by
WIPO, there are three tests, the third of which is that you must
show that the other party registered used a domain name in bad
faith. Under NeuLevel’s rules, only this last of the three tests is
different. With NeuLevel’s rules, the third test says you must show
that the other party registered used a domain name in bad faith.
The idea is to cover the situation where someone takes a domain
name in bad faith and doesn’t use it for a web site. However, WIPO
has been deciding cybersquatting cases for 18 months and, rightly
or wrongly, has at times applied its rules to cover the situation
where someone registers a domain name in bad faith and doesn’t
actually use it for a web site. The point to make here is that WIPO
is likely to decide most cases in the same way as NeuLevel –
whether or not a trade mark owner has paid the $90 fee for the IP
Claim Service.
Applications for .biz names were due to open on 25th June.
However, this date is not given on the NeuLevel.com web site – it
only appears on some of those sites authorised by NeuLevel to sell
the domain names when the registry opens officially. Other sites
suggest a date in July. And with the deadline for the IP Claim
Service being pushed back, it seems more likely that the opening of
the application process will also be delayed.
Where there are several claims for the same .biz name, in the
absence of dispute resolution procedures, a winner is chosen at
random. Accordingly, some businesses are planning to file multiple
claims for the same domain name using as many different applicant
names as possible. Some are already said to be filing multiple
applications in the IP Claim Service – though this does not
necessarily increase their chances of winning the desired domain
name.
Adding to the confusion, many registrars are taking
pre-registrations of .biz names. The most popular, according to
VeriSign, are show.biz, internet.biz and sex.biz. Taking a
pre-registration is no guarantee of success. When all the
pre-registrations are submitted by the registrar en masse, which
will happen when the application process begins, there will be one
winner for each domain. Submitting multiple applications for the
same domain would again seem to increase the chances of
success.
