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Client Alert - Domain Name Developments -- .ASIA, .MOBI and .EU Updates

06.25.2007

Introduction

The Internet has become a vital marketing tool for companies across the world and, as a result, the practice of registering trademarks as domain names has become an increasingly common practice.     

In this regard, we have summarized below some of the latest developments relating to the .ASIA, .MOBI and .EU domain names. 

.ASIA: New Opportunity and Risk

With almost 400 million Internet users in the Asian region, the new .ASIA top-level domain (TLD) may present a tremendous opportunity for companies wishing to promote their presence within Asia. 

The .ASIA Community consists of 73 countries in the Asia / Australia / Pacific region, including China, Japan, Hong Kong, Taiwan, India and Israel.  The trademark owner does not have to be located in the .ASIA Community. 

To be eligible for .ASIA domain name registration, just one of the applicant’s domain name contacts (registrant, administrative, technical or billing) must be a legal entity within the .ASIA Community.   

The launch of the new extension will be divided into the following phases: Sunrise 1 (reserved for government bodies and associated organizations); Sunrise 2 (reserved for applicants with a prior right based on registered trademarks); Sunrise 3 (reserved for applicants with a prior right based on a company or organization name); and Landrush (open to all applicants fulfilling the local presence requirement). 

Sunrise 2 is scheduled to launch on October 9, 2007.  It will be divided into three sub-phases as follows: 

Sunrise 2a:  Early Bird Sunrise

This first sub-period is open to trademark owners with registered trademarks that were applied for on or before March 16, 2004.  Applicants must be able to provide documentation of ownership, and the date of first use of the registered mark, and they must be able to demonstrate use of the mark in the registered class.  

Sunrise 2b:  General Registered Marks

Trademark owners who applied for their trademark on or before December 6, 2006 may apply for a .ASIA domain name during this sub-period.  Documentation of ownership is not required, but it may be requested by the registry.  There is no requirement of demonstrable use of the mark. 

Sunrise 2c: Extended Protection for Registered Marks

If a trademark owner successfully registers a .ASIA domain name during Sunrise 2a or 2b, it may then also apply for extended protection by registering a domain name that consists of the trademark and words or phrases that appear in the description of the class(es) for which the mark is registered.  For example, it the trademark XYZ is registered in International Class 25 (“clothing, footwear, headgear”), the trademark owner may apply to register the domain name XYZclothing.asia during Sunrise 2c. 

The trademark jurisdictions that will be accepted to establish prior rights will not be limited to the 73 .ASIA Community countries.  For example, USPTO, CTM, Madrid Protocol and Benelux trademarks will all be acceptable. 

During Sunrise 2, the domain name applied for must exactly match the registered trademark, and the domain name owner must match the trademark registrant, although the domain name owner need not be the contact located in the .ASIA Community.  The very few limited exceptions to the requirement that the trademark match the domain name involve the use of spaces, accented characters, type identifiers and the word “Asia” -- as well as the use of limited additional words permitted under Sunrise 2c’s extended protection provisions as discussed above.  

Unlike previous domain name launches, the .ASIA launch is not a first come, first serve launch.  If a domain name has more than one successful application during the launch period, an auction will be held between the successful applicants.  

Following the launch period, registration will “go live” and first-come, first-serve registrations will commence and will be open to anyone with the required local presence. 

The Sunrise periods are designed to allow trademark owners to protect their rights in a cost-effective manner through priority registration.  After the Sunrise periods, as a result of the minimal local presence requirement, trademarks may be vulnerable to registration by unauthorized .ASIA registrants. Accordingly, where applicable, companies are urged to register their valuable trademarks as .ASIA domain names during the Sunrise periods.

.MOBI: Targeting Consumers on the Move 

.MOBI is a TLD dedicated to delivering tailored Internet content to mobile devices.  .MOBI sites meet technical requirements that assure users that website content, such as sports scores and weather updates, will work on their mobile devices.  Because .MOBI websites are optimized for easy viewing on smaller screens, consumers may be more willing to access a company’s .MOBI site while they are on the move.

The .MOBI extension was introduced in 2005 and made available for public registration in September 2006.  Consumer demand for information on mobile devices is steadily on the rise and companies who missed the .MOBI launch period may now be considering registering their trademarks as .MOBI domain names.  

Because the Sunrise and Landrush registration periods have expired, any individual or organization may purchase a .MOBI domain name from an accredited registrar, subject to the applicant’s agreement to the registrar’s general terms and conditions.

If a company decides to publish content to its .MOBI website, there are 3 requirements: 1) the website must be encoded in XHTML; 2) the website must implement a page at the second level domain; and 3) the website must not contain any frames.  If a company does not want to have a live .MOBI site, it does not have to adhere to these rules.  

Because the initial registration periods have passed, you may discover that a third party has already registered your valuable trademark as a .MOBI domain name.  If that is the case, you may want to consider discussing your options with informed counsel.  It is sometimes possible to convince third party registrants to transfer the domain name to the trademark owner without formal proceedings. 

However, if a third party has registered a .MOBI domain name embodying your trademark, or a domain name that is confusingly similar to your trademark, in bad faith, it may become necessary to initiate a Uniform Domain Name Dispute Resolution Policy (UDRP) challenge.  Such disputes, generally, are resolved in an expedited fashion in a matter of weeks.    

In some cases, such as where a trademark owner has been damaged by a third party’s registration and use of an infringing .MOBI domain name, a trademark owner may want to file a civil action in federal court under the Federal Anticybersquatting Act.

.EU:  Failure to Use Your Domain Name May Leave it Vulnerable to Attack 

When the .EU TLD was launched in December 2005, many companies took advantage of the opportunity to register their trademarks as .EU domain names.  However, some companies may not realize that their domain names are vulnerable to attack if they are not linked to a website within two years of the date of their registration.   

Pursuant to an EC Regulation, a .EU domain name can be subject to revocation if it is registered or is being used in bad faith.  And, according to the regulation, failure to use the domain name in a relevant way for at least two years from the date of registration, among other things, may demonstrate bad faith.  Consequently, if a third party is interested in obtaining your .EU domain name after your second year of registration and you have not yet linked that domain name to a website, the third party can challenge your registration in an arbitration proceeding and assert that your failure to link the domain name to a website is evidence of bad faith registration.  

In order to protect their domain names and their trademarks, .EU domain name holders are encouraged to link their domain names to an active website within the first two years of registration.

Domain names are often used to redirect users to other existing websites.  Because the regulations do not require the creation of a new website for each domain name, we believe that using your domain name to redirect users to an existing active website would be sufficient to satisfy this use requirement.  However, if the linked website is merely a “parked website” containing “pay-per-click” links, it is likely that this will not be considered sufficient use and may even demonstrate bad faith registration. 

CONCLUSION

The protection, enforcement and effective management of intellectual property rights on the Internet can be important to the success of a trademark owner’s business.  Our attorneys have considerable experience in assisting companies throughout the world with their online intellectual property needs and we are available to provide you with counsel to help you achieve your objectives. 

For more information, contact William M. Borchard, Jeffrey H. Epstein, Joel Karni Schmidt, Meichelle R. MacGregor or Maryann Licciardi.

Attorneys

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