TO:
All IP Protector Clients
CLIENT
ALERT! - The IP Claim for the .BIZ tld, A False Sense
of Security.
Based
upon our research, we believe that filing an IP Claim for
.BIZ domain names is essentially meaningless. We have outlined
some of the reasons in the following Client Alert.
1.
The IP Claim process does not give the claimant any priority
over the ultimate registration nor does it prevent, in any
way, the potential registrant from registering the domain
name. The only thing it causes is an email notification
to be sent to the potential registrant who tries to register
an exact representation of your trademark stating that the
registrant potentially could be infringing your intellectual
property rights.
This
supposedly gives the potential registrant the opportunity
to back out of registering the domain name. While this may
sound appealing, the behavior does not fit the characteristics
of cyber-squatters. We have found that persons who attempt
to register exact representations of company names and trademarks
know that they are doing something improper, whether or
not they know the technical name is "infringement." An email
notification that the registration "may" be infringing someone
else's rights would do very little, if anything, to alleviate
the problem of cyber-squatting.
2.
The IP Claim only applies to exact representations of your
trademarks in domain names. An IP Claim String is automatically
created based on the trademark you provide. The IP Claim
String is the trademark plus the extension .biz. For example,
if you claimed intellectual property rights to YOURTRADEMARK,
the IP Claim string would be YOURTRADEMARK.BIZ. Thus, domain
names like YOURTRADEMARKPARTS.BIZ would not be covered by
the IP Claim for "YOURTRADEMARK."
3.
Neulevel, the company in charge of the .BIZ tld, claims
that by filing an IP Claim you have access to the Start-up
Trademark Opposition Policy ("STOP") which has a lower burden
of proof than the traditional Uniform Dispute Resolution
Policy (UDRP). Pursuant to the STOP, the three elements
you must prove are: (1) the domain name is identical to
a trademark or service mark in which the Claimant has rights;
(2) the domain name is identical to a trademark or service
mark in which the Claimant has rights; and (3) the domain
name has been registered or is being used in bad faith.
The first two elements are identical to the UDRP. Neulevel
claims that the use of "or" in the third element rather
than "and" as it is stated in the UDRP is critical.
This
is not the case because under the UDRP, you can prove "bad
faith registration and use" by demonstrating that the registrant
"registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark
in a corresponding domain name." Moreover, numerous UDRP
Decisions, including those IP Protector has won, state that
bad faith use covers mere registration of a domain name
(passive use). Furthermore, once a registrant has registered
the infringing domain, you still have to go through the
process of filing a complaint, including paying all the
fees, with an ICANN-approved arbitrator to recover it should
that be necessary.
Summary
We do
not believe that the new tlds will come close to the popularity
of the original three tlds, .COM, .NET and .ORG. If you
are intent on filing IP Claims for the .BIZ domains, we
will do this for you. However, you must recognize that it
gives you false sense of protection. The focus should be
on ensuring the registration of the domains in the new tlds.
To do this, you must pre-register the domain names you wish
to register in as many pre-registration services as possible.
Neulevel has stated that it will randomly register domains
from these queues to ensure fairness. Therefore, the more
you pre-register, the better your chances of ultimately
registering the domain names. Moreover, rather than getting
caught up in registering many different domain names, you
should only register those domain names readily associated
with your company. This would include the main trademarks,
such as your company name, along with the slogans, and product
names. You should also consider registering domain names
incorporating combinations of these marks, in addition to
these marks followed by the term "parts."
Please
do not hesitate to contact IP Protector if you have any
questions or comments regarding this Client Alert. This
Client Alert is provided solely for IP Protector Clients
and may not be reproduced or disseminated without the express
permission of IP Protector.
