On October 9, 2007, the Sunrise period for the new .ASIA top-level domain will begin. DotAsia, a not-for-profit organization responsible for operating the .ASIA top-level domain registry (“TLD”), will start the Sunrise period by allowing companies with trademarks registered anywhere in the world to apply for domain names that consist solely of the exact registered marks. However, as noted below, registration in the .ASIA TLD is not on a “first-come, first-served” basis; thus, all applications filed within the relevant Sunrise periods will be given equal consideration for registration.
According to DotAsia, there is a “recognizable latent demand in Asia for a TLD with regional significance and versatility.” The organization believes that the .ASIA domain will allow entities in the region “to establish a representative yet adaptable online identity.” The region is a broad one. The .ASIA TLD incorporates the entire Pan-Asia and Asia-Pacific region — 73 countries — as set out in ICANN’s definition of the “Asia/Australia/Pacific” region. The region includes China, Japan, Macau, Kazakhstan, Tajikistan, Afghanistan, Bhutan, India, Cambodia, Philippines, Korea, Mongolia, Australia and New Zealand.
The Charter Eligibility Requirements
To be eligible to register a domain name in the .ASIA TLD, the applicant must show a nexus to the region (known as the “Charter Eligibility Requirement”). However, only a minimal nexus is necessary. Only one of the domain name contacts, i.e., the registrant, the administrative contact, the billing contact, the tech contact, etc., needs to be a legal entity (or individual) in Asia. This nexus can be satisfied by using a lawyer or registrar in the region to serve as one of the domain name contacts.
The Sunrise Period
To preempt at least some cyberpiracy issues, DotAsia is allowing trademark owners advance registration in the .ASIA TLD pursuant to a three phase Sunrise period. At each stage, an applicant must provide a “Charter Eligibility Declaration” certifying that it meets the minimal Charter Eligibility Requirements noted above. The stages are as follows:
(1) Sunrise 1: Governmental Reserved Names – October 9, 2007
On October, 9, 2007, governments that have already submitted a pre-Sunrise list of domains will be able to activate them. These reserved domains were limited to country names, major province and city names, as well as marks currently in use by the governments themselves.
(2) Sunrise 2: Registered Marks
a. Sunrise 2a: “Early Bird Sunrise” – October 9, 2007, to October 30, 2007
The “Early Bird Sunrise” period is open only to owners of trademark registrations that were: (a) applied for before March 16, 2004; and (b) matured to registration and continue to be valid and in existence as of the date of application for the .ASIA domain name. Additionally, the trademark owner must have made good-faith use of its mark in at least one of the countries in which the mark is registered prior to the domain name application date. Demonstration of use should include samples of advertising or promotion bearing the mark in print, or “public, unmotivated testimonial” that the relevant sector of the public associates the mark with the goods or services offered under the mark. Mark owners may only apply during this period for second-level domains that are identical to their registered mark (i.e., <acme.asia>, but not <acmecomputers.asia> unless ACME COMPUTERS is a registered mark).
b. Sunrise 2b: General Registered Marks – November 13, 2007, to January 15, 2008
D uring this sub-phase, owners of trademark registrations applied for before December 6, 2006, may register their domains. The rules are otherwise the same as in the “Early Bird” period of Sunrise 2a, though demonstrable usage of the mark is not required in this sub-phase. Registration as a part of this sub-phase is thus limited to second-level domains that are identical to registered marks. Domain names that have already had one successfully verified applicant in Sunrise 2a will not be available in Sunrise 2b.
c. Sunrise 2c: Extended Protection – November 13, 2007, to January 15, 2008
During this sub-phase, which runs concurrently with Sunrise 2b, owners of registered marks may apply to register domain names that contain their mark as well as significant words from the class description (under the Nice classification system) for which the mark is registered. For example, an entity that owns the registered mark “ABC” in the class “chemicals” will not only be able to apply for <abc.asia> during Sunrise 2a or 2b (as appropriate), but may also apply for <abcchemicals.asia> in Sunrise 2c. As above, domains that have already been allocated during a higher priority phase will not be available.
(3) Sunrise 3 – Registered Entity Names – November 13, 2007, to January 15, 2008
DotAsia contemplated that within the .ASIA community many businesses, especially small and medium-sized enterprises, do not have registered trademarks for their company names. Sunrise 3 is designed to give companies in Asia reasonable priority to register their corresponding names under the .ASIA domain. Documentary proof (e.g., a certificate of incorporation) is required.
The Auction Period
According to DotAsia, the anticipated interest for Sunrise 2 and Sunrise 3 applications is high. To avoid the chaotic rush commonplace in a “first-come, first-served” process, all applications received during the Sunrise period are deemed to have been received at the same time. Accordingly, applications need only be submitted to one registrar; there is no advantage to having your application “first in line.”
If more than one properly verified application is filed for the same domain name in the same Sunrise period, the applicants will engage in an auction to determine who will receive the domain name. No details yet exist as to the nature of this auction, but DotAsia has indicated that further details will be provided at a later date.
The Landrush Period
After the Sunrise period, the Landrush period will begin. Dates have not yet been set for this period. Applications for domain names filed by the general public will be accepted during this period, provided that eligibility requirements are met (i.e., that one of the contacts is in one of the .ASIA countries). This phase will also feature an auction format afterwards for duplicate domain name applications. The main difference will be that there will be no verification process with regard to ownership of a trademark; any domain name may be applied for in this period by any qualified applicant, regardless of trademark ownership.
The Landrush period is essentially an open registration period, but it offers trademark owners the potential to register a broader group of domain names than they would be able to register if the Sunrise period was followed immediately by general registration. For example, if Acme Corporation does not have a trademark or corporate name registration for ACME WIDGETS, it could not apply to register <acmewidgets.asia> during the Sunrise period. If the Sunrise period was followed immediately by open registration, Acme would have to race to the registry to beat cyberpirates from registering the name. Under the Landrush construct, Acme can file for the domain name in an orderly fashion, and, if a cyberpirate also applies for <acmewidgets.asia>, the cyperpirate will have to engage in an auction against Acme to acquire the name. Because many cyberpirates are looking only for names they can acquire inexpensively, they might not participate in the auction process, or, if they do, they might make only a nominal bid on the name.
The Landrush period also presents a means for the owners of identical marks to have a reasonable opportunity to bid on names they wish to use in connection with their businesses. For example, if ACME is lawfully used by an airline and a faucet manufacturer, and both want the domain name <acmesupport.asia> as a customer support domain name, they will each have a reasonable opportunity to acquire the name through the auction process, as opposed to having to race to the registry on a first-come, first-served basis.
General Registration — “Go Live”
At the conclusion of the auction periods, the .ASIA TLD will open up to first-come, first-served registrations. Details have not been released about when this will occur.
There will be two separate dispute resolution policies that concern .ASIA domain names. The first, the Charter Eligibility Dispute Resolution Policy (“CEDRP”), will be for disputes related to a domain name applicant’s or owner’s Charter Eligibility Declaration. Under the CEDRP, a third-party complainant who believes that the domain name at issue does not meet the Charter Eligibility Requirements (establishing an appropriate nexus to the region) submits a complaint. The World Intellectual Property Organization (“WIPO”), a specialized agency of the United Nations, will serve as the exclusive “Challenge Resolution Provider” for .ASIA CEDRP disputes. The WIPO neutral will make a decision on whether DotAsia’s acceptance of the applicant should stand. Under the CEDRP, the only relief available is cancellation of the domain name registration.
Though final details have not yet been released, more typical disputes over a particular domain name will be governed by a policy identical or closely similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) used for the <.com> TLD. Specifically, anyone wanting to challenge a domain must show that: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the challenger has rights; and (ii) the respondent has no rights or legitimate interests in respect to the domain name; and (iii) the respondent has registered or used the domain name in bad faith. Three dispute resolution providers have been approved: WIPO, the National Arbitration Forum and the Asian Domain Name Dispute Resolution Centre (“ADNDRC”). The ADNDRC has offices in Beijing, Hong Kong and Seoul. Remedies under the UDRP are limited to the cancellation or transfer of the domain name.
DotAsia is exploring the possibility of applying a local dispute resolution policy when both the complainant and the respondent come from the same country. It is unclear at this time who these local dispute resolution providers would be.
Key Differences Between Launch of .ASIA and Launch of .EU
Last year’s launch of .EU, which many saw as chaotic, has been much criticized. Some notable differences between that launch and the .ASIA launch:
- .EU: Applicant itself must have some sort of nexus with the EU
- .ASIA: Applicant must identify an “associated contact” that is a legal entity in Asia
- .EU: Domain names assigned on a “first-come, first-served” basis
- .ASIA: In a tie, an auction is held – even during the Landrush period
- .EU: Documentary evidence mandatory
- .ASIA: Documentary evidence only required if requested by verification agent
If you are conducting business in the countries covered by the .ASIA domain name, or believe you could in the future, we strongly recommend registration of your relevant marks in the .ASIA TLD. Even parties with no business or anticipated business in these regions could benefit from registering their marks in the TLD as a defensive measure to avoid cyberpiracy issues.
We recommend that you identify as soon as possible the domain names you can register during the various Sunrise periods and those names for which registration is necessary or prudent (either to use in your business or to prevent third parties from registering). We then recommend identification of the names you wish to register in the Landrush period so that appropriate applications can be filed once this period opens.