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Archived updates for Friday, September 02, 2005

A Checklist for .EU Domain Name Registration

by Richard Schreier at Pool.com

In the coming months, the European Registry for Internet Domains ("EURid") will be making the .eu internet Top Level Domain (TLD) available for registration to all entities or persons meeting the .eu’s European presence requirements.

Registration of .eu domain names will occur in two steps: (1) a phased four-month "sunrise period" (beginning in the fourth quarter of 2005) open only to certain prior rights holders (of particular interest to readers of these updates) and (2) the landrush period, in which anyone meeting the .eu presence requirements may apply to register a .eu domain. Although applicants could wait until the landrush period to register a .eu domain, it is possible that the domains they want will not be available. How then should a trademark professional proceed to successfully acquire domains on behalf of their clients with prior rights during the sunrise period? Consider the following checklist.

1. Ensure a prior right may be proven.

Article 10 of Commission Regulation (EC) No. 874/2004 (April 28, 2004) (the "Regulation") defines "prior rights" as
"inter alia, registered national and community trademarks, geographical
indications or designations of origin, and, in so far as they are protected
under national law in the Member-State, where they are held: unregistered marks,
trade names, business identifiers, company names, family names, and distinctive
titles or protected literary and artistic works."
You need to ensure that the prior right for your domain request can meet the burden of proof required by the legislation. It is not sufficient, for example, that your organization owns the equivalent ".com" domain. You will also need to submit documentation meeting EURid’s requirements. If you fail to do so, you will lose your opportunity to register the name, leaving the person next in line with the chance to prove their position when yours is rejected.

2. Decide in which Sunrise period you should participate.

During the first phase of the sunrise period, only domain names that correspond with public bodies or to a registered national or Community Trade-mark (CTM) may be registered. Phase two will apply to all other prior rights. It is still unclear what evidentiary material will be needed to justify a prior right but these will be published prior to the launch of the sunrise period.

3. Choose a domain acquisition partner, carefully!

Accredited registrars are the only organizations who can submit domain requests on behalf of customers to EURid. However, they are obligated to submit domain names on a first come, first served basis. Therefore, your request's position in the their queue could have a significant impact on your ability to successfully acquire your domain.

EURid also allows accredited registrars to collaborate with intermediaries or agents who do not fall under the same restrictions as registrars. A variety of service providers around the world, such as Pool.com Inc. (http://www.pool.com/), leverage their network of accredited .eu registrars to provide trademark holders with the best chance of acquiring the .eu domain that reflects their prior rights. Their advanced algorithms maximize the possibility that a trade-mark holder’s domain application will be the first in the race to secure the domain.

4. Be prepared to prove your claim.

If your request is processed by EURid first (yes, in addition to being at the top of the registrar’s list you need to ensure your application is also the first one received by EURid) then you will need to prepare the "acceptable proof" that supports your claim to a prior right within 40 days of your request being considered. PriceWaterhouseCoopers has been selected by EURid to evaluate the claims to prior rights. Once they approve your application, the domain name will be registered to you the applicant, but will only become usable after a forty day appeal period.

5. Consider collaborating with a "sunrise" professional.

There are a number of individuals in the marketplace who routinely assist organizations with securing domain names during a sunrise period. They offer consulting-for-a-fee services that leverage their experience and knowledge gained from previous sunrise applications. And, in particular, they are well versed in the nitty-gritty details that could result in an application being rejected. For example, an application may be rejected simply because the documents are stapled together (PWC suggests the time required to "unstaple" documents that need to be rerouted to multiple professionals for review is significant when considering the volume of applications that will need to be reviewed).

6. A few other considerations.

First, the unique first come first served rule combined with the obligation for registrars to submit requests in the order in which they are received, makes it particularly challenging to secure the domains you want. It will be difficult to identify registrars who do not already have an inventory of domain requests which would prevent your request from being given top priority.

Second, with 25 countries in the EU, most of which have independent trade-mark registration databases, the likelihood that more than one organization will seek to register a specific domain name is very high. Competition WILL be fierce so organizations need to be well armed if they want to be successful.

The following link -- http://www.eurid.eu/en/euDomainNames/sunrisePeriod.html -- will direct you to the EURid website section that specifically deals with the sunrise period. Most of the popular questions are listed and answered there but ultimately, securing the domain name of choice in the .eu TLD will be a challenge for most organizations. The process itself is relatively simple but the first-come-first-served rules combined with fierce competition will make successful domain name acquisition elusive. Organizations would be well served to have a well defined plan of alternatives that optimize the probability to acquiring the domains they deserve.
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