David Beckham has apparently registered more than 100 domain names in his name. Wayne Rooney has also begun to capitalise on his recent international success at Euro 2004, registering his name in at least 10 different domains. However, there is one more very important domain, on which these and other celebrities and brand owners should be keeping a close eye – the new .eu domain name.
Following the recent publication of the Public Policy Rules relating to the .eu top-level domain, the European Registry of Internet Domain Names (EURid) can now progress to the next stage of implementation, which is to sign agreements with the European Commission and the Internet Corporation for Assigned Names and Numbers (Icann). It is hoped that by March/April 2005, phased registration of .eu will begin (the so-called ‘Sunrise Period’). This will last four months and will give trademark holders preferential treatment. During Phase 1 (lasting two months), registered Community or national trademarks, full names or acronyms of public bodies or the name of the territory which is governed by a public body may be applied for as .eu. During Phase 2 (the following two months), owners of company names, business identifiers, unregistered trademarks and trade names, family names and any other such similar ‘prior right’ may additionally apply under .eu.
At the end of the Sunrise Period, the .eu name will go live and open registration will begin, which will be done on a first come, first served basis. Only undertakings, organisations and individuals established or resident in the EU may apply. Certain names, including geographical names, will not be registrable and domain names held to be defamatory will be blocked by EURid.
A registered domain name will be revoked when it is identical or too similar to a name where a right is recognised by national and/or Community law, including unregistered rights, where the name has been registered without rights or legitimate interest in the name or has been registered or is being used in bad faith.
One striking difference between the above policy and the Uniform Domain Name Dispute Resolution Policy (UDRP) (for .com, .org and .net names) is the lack of a requirement on the part of the complainant to show that it has a trademark identical or too similar to the domain name. This has proven to be a difficult hurdle in many UDRP disputes, particularly where the complainant has been a government or a local authority seeking to obtain the transfer from a third party of a domain name based on the country’s or the city’s name, eg newzealand.com, madrid.com etc.
Applications for .eu during the Sunrise Period must be an exact match for the prior right claimed and documentary evidence must be supplied within 14 days. In relation to Phase 1 applicants, such documentation might include, for example, a trademark certificate or information published in an official journal.
With respect to Phase 2, registration information at Companies House will be relevant where one is relying on a company name. However, where an applicant is basing their prior right on an unregistered right, eg an unregistered trademark, the burden on them to produce documentary evidence proving that right will be much higher than where the prior right is a registered right. Such evidence will include the type of documentation one might submit when opposing a trademark application on the basis of an earlier right in relation to the mark, eg packaging, labels, price lists, catalogues, invoices, photographs, advertisements, sales figures, advertising spend figures, surveys etc.
Brand owners, celebrities, public bodies and other organisations would be well advised to review their trademark portfolios now and decide which, if any, they wish to register in the .eu domain. Once these decisions have been taken, preparatory work should be commenced, including collation of the documentary evidence listed above. Those wishing to register a .eu domain name who do not have any prior rights to the name in question should continue to monitor the provisional timetable, which is continually being updated by EURid to ensure that they are ready and awake when the Sunrise Period ends.