Prepare Now for “.biz” Cybersquatters

If you haven’t begun to protect your business name and trademarks against other people eyeing “.biz” domains, you’d better start.

After years of speculation, it looks like “.biz” will be joining “.com,” “.net,” and “.org” as an Internet extension or generic Top Level Domain (TLD). The old race was to get a prized “dot-com.” Now, the next prize may be a catchy “dotbiz” like “business.biz” or “YourCompanyName.biz.” You must prepare now to protect your business name and trademarks in this new environment.

While dotbiz 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.” “.pro” will be for accountants, lawyers and physicians. “.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?

“.aero” will be for the air-transport industry. I didn’t realize that their lobby was as good as the ones for the accountants, lawyers, and physicians. “.coop” will be for co-ops, of course, and then we’ll have “.biz” to round out the seven.
Protecting your trademark

Especially with dotbiz, but to some extent with the others, the trick is going to be protecting your trademarks. You will want “YourTrademark.biz.” Trust me on that.

If you would like a dotbiz TLD, you should immediately go to NeuLevel or other registrars 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.

The period to register with the IP Claim Service is slated to end on 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 trademark, you’ll provide basic information such as the name and contact information of the person to receive legal correspondence regarding claims.

Most importantly, 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 on 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, isn’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.

IP Claim Service benefits

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.

The other party will then have to tell the registrar that he or she wants to proceed with an attempt to get the TLD in dispute. At least the person won’t be able to say, “Gee, I didn’t know about your claim.” Bear in mind that the cybersquatter 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 the cybersquatter continues with the process and wins the lottery, you’ll be notified of his or her contact information. You’ll then be able to start a dispute resolution process based on the “Start-up Trademark Opposition Policy (STOP).” 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 dotbiz domain name was announced, you haven’t hurt yourself yet. Just use this column as the starting point in your education and get moving now to protect your rights.

Posted by on June 4, 2001