Author: Breon Gravatt

The Internet Corporation for Assigned names and Numbers ("ICANN") recently announced that certain new generic Top Level Domain names ("gTLDs") would become available. These will co-exist with the existing gTLDs, such as .com, .net and .org. This is the first time further gTLDs have been made available since the mid 1980's.

This is a major and important development in the area of e-commerce, and the history of the .com domains demonstrates the importance of securing top level domain names.

The first new gTLD to become available is .biz, which will be restricted to commercial or business purposes only. It is anticipated that the .biz domain name may in time overtake .com as the primary identifier of businesses.

Therefore, we strongly recommend that you act quickly to try to secure your principal names.

It is expected that there will be an enormous rush to register .biz domain names and that some .biz domain names will be targeted by cybersquatters. There are also likely to be conflicting legitimate claims, since the process will involve applications from all around the world.

In an attempt to implement an orderly introduction of .biz domain names, a 3-step system has been put in place so that businesses with established trade mark rights can take precautions to protect their names.

The 3-step process is as follows:

1. Filing of an intellectual property claim;
2. Filing of a preliminary domain name application;
3. Public availability of .biz domain names.

FILING AN INTELLECTUAL PROPERTY CLAIM(21 May 2001 - 9 July 2001)

This allows your company to file a claim specifying your trade mark rights in respect of a name which you wish to register as a .biz domain name before the application process commences. The list of trade mark rights compiled will be checked against subsequent applications filed during the preliminary application period. A trade mark registration is not required - a trade mark application or common law rights will suffice. The significant benefits of having your IP claim on record are:


1. An applicant who files during the preliminary period for the same name will be notified of your IP claim and will need to confirm their intention to proceed. They will be required to acknowledge your IP claim.


2. If multiple applications are made for a single .biz domain name it will be allocated through a random selection process. However, if you have filed an IP claim for the .biz domain name (and you are not the selected applicant) you will be notified of the selected applicant and sent their details.

3. If you have filed an IP claim to a .biz domain name and are not the successful applicant, the domain name will be automatically placed on hold for 30 days instead of being registered.

4. This 30 day period will allow you time to negotiate with the selected applicant or to seek to resolve the dispute by a negotiated settlement using STOP, a customised dispute resolution process for the resolution of .biz domain name conflicts. STOP is only available if you have lodged an IP claim.

Please note the filing of an IP claim is not an application for registration of a .biz domain name. A separate application needs to be filed during the preliminary domain name application period.

FILING A PRELIMINARY DOMAIN NAME APPLICATION(25 June 2001 - 25 September 2001)

Businesses will be able to submit preliminary applications for .biz domain names during this time prior to the actual launch of .biz.

At the end of this period .biz domain names will be allocated. If there are multiple claims, a random selection will be made to allocate the domain name.

PUBLIC AVAILABILITY OF .BIZ DOMAIN NAMES(1 October 2001)

If someone tries to register the name for which you have filed an IP claim during step 1, you will be notified of this application and the application will be suspended until 30 days after .biz domain names become available.

All applications received after 1 October 2001 will be dealt with on a first come first served basis.

General
Please note that there is only a small window of opportunity to apply for your .biz domain names and all IP claims must be lodged before 9 July 2001. We can assist with all stages of this process.

If we can be of any assistance in filing an IP claim on your behalf or advising you further, please do not hesitate to contact Breon Gravatt, one of the New Zealand Baldwin Shelston Waters domain name specialists, or your usual Baldwin Shelston Waters trade mark specialist.


Web site: Baldwin Shelston Waters
Email: email@bsw.com
May 2001