Senniger, Powers, Leavitt & Roedel One Metropolitan Square 16th Floor St. Louis, Missouri 63102 314-231-5400
Dear Mr. Touton: Our firm represents Economic Solutions, Inc. (ESI) in intellectual property matters. It has come to our client's attention that ICANN has begun accepting applications for new Internet top-level domains (TLDs) and that an application may be submitted proposing ".biz" or ".bus" as a new TLD. A ".biz" or ".bus" TLD, if granted, would substantially damage the rights of ESI. ESI owns exclusive rights to market the ".bz" country code TLD identifier which it contractually obtained from the government of Belize.1 ESI has subsequently expended considerable money and effort in its preparations and marketing of the ".bz" TLD as a domain name. In furtherance of its efforts to market the ".bz" TLD to businesses, ESI has filed numerous trademark applications2 through its affiliate, E?Commerce Marketing and Media, Inc., playing off the phonetic pronunciation of "bz" as "BIZ" and the use of ".bz" in connection with conducting business over the Internet. ICANN's consideration and approval of an application for a ".biz" or ".bus" TLD would create confusion among Internet users, interfere with the rights of the country of Belize and ESI, and would cause substantial damage to our client's rights and good will. Furthermore, approval of a ".biz" or ".bus" TLD would be contrary to ICANN's Criteria for Assessing TLD Proposals, dated 15 August 2000, in light of the existing ".bz" TLD and ESI's plan to target and license domain names under the ".bz" registry to businesses. The introduction of a ".biz" or ".bus" TLD would create substantial confusion among Internet users attempting to access domain names registered with either the ".biz," ".bus," or ".bz" registries. It is anticipated that an applicant for a ".biz" or ".bus" TLD would attempt to target and license domain names to businesses as "BIZ" is the phonetic truncation of the word "business" while ".bus" is its literal truncation. As has been seen with verbal references to domain names using ".com," ".org," and ".gov" TLDs, the TLD portions of Internet addresses are pronounced as the first syllable of "commercial," "organization," and "government" respectively, rather than stating each letter separately. It is therefore expected that verbal references to ".bz," ".biz" or ".bus" domain names would pronounce the TLD portion as "BIZ." Due to the identical pronunciations and business connotations, Internet users hearing of a business website would be confused as to which TLD must be used to locate a business related resource. Thus, an Internet user would have to first determine whether to use a ".bz," ".biz," or ".bus" TLD whenever a domain name with a "BIZ" TLD is orally communicated. If each registry contains domain names that are also registered in the other registries, an Internet user may be further confused by inadvertently going to an active website in the wrong registry. The existence of a ".biz" or ".bus" TLD would also substantially interfere with the value of the ".bz" TLD and the existing rights of the country of Belize and ESI in their utilization of the ".bz" TLD as businesses would be hesitant to license a domain name from a registrar that is likely to confuse Internet users. In addition, it is anticipated that ESI's trademark rights would also be substantially damaged by the marketing of a ".biz" or ".bus" registrar due to the similarity of services and the identical spelling of ".biz" and ESI's marks or identical pronunciation of ".bz," ".biz," and ".bus." Thus, approval of a ".biz" or ".bus" TLD would cause substantial damage to ESI's contractual rights, good will, and trademark rights due to the likelihood of confusion that would be created. Aside from the direct damage to Belize and ESI, a ".biz" or ".bus" TLD would not benefit the stability of the Internet as advocated in ICANN's Criteria for Assessing TLD Proposals. As ".bz" is the existing TLD owned by Belize, the introduction of a ".biz" or ".bus" TLD would threaten the existence of Belize's globally unique public name space by creating confusion among Internet users. Since a ".biz" or ".bus" registrar would market domain names to the same customers, its co-existence with the ".bz" registrar would also diminish the value of domain names registered with either the ".bz," ".biz" or ".bus" registrars. This diminished value would make it difficult for either ".bz," ".biz," or ".bus" registrars to successfully compete against other TLD registrars, thereby frustrating ICANN's overall objective for expanding the list of generic TLDs in a manner which preserves the stability of the Internet. A ".biz" or ".bus" TLD also would not benefit the Internet community or sensibly enhance the domain name system (DNA) as identified in the Criteria for Assessing TLD Proposals. Since a ".biz" or ".bus" registrar would likely target the same businesses and provide similar services as ESI, it would only duplicate what is already available under the ".bz" registrar rather than create distinctive services for the diversity of needs of Internet users and enhance the DNS. Thus, a ".biz" or ".bus" TLD would not meet any needs which are not already met by the existing ".bz" registry. On behalf of ESI, we insist that any application submitted which proposes ".biz" or ".bus" as a new TLD be rejected for the aforementioned reasons. Please let us have your written assurances by October 7, 2000 that a ".biz" or ".bus" TLD will not be approved as a new generic TLD. We look forward to hearing from you. If you have any questions, please call. We appreciate your assistance in resolving this matter. Sincerely,
Anthony R. Kinney ARK/leb
Footnotes: 1. A contract between the Government of Belize and ESI was executed on July 13, 1999 granting ESI exclusive and plenary power to market Belize's country code TLD, ".bz." The government of Belize granted ESI the right to exercise as fully and completely, as Belize itself, all powers necessary or proper, express or implied, to perform all functions with respect to the marketing of the ".bz" TLD. At that time, the University College of Belize, a Belize governmental entity under its Education Ministry, was designated as the Administrative Contact. The University College of Belize was dissolved by the Belize Government on August 1, 2000. 2. U.S application Serial No. 75/833,539 for "DOT BZ," Serial No. 75/822,065 for "DOT BIZ," Serial No. 75/833,540 for "DOT BZ and design," Serial No. 75/835,821 for "BZ and design," Serial No. 75/822,063 for "DOT BIZ, THAT'S .BZ ON THE NET," Serial No. 75/821,451 for "BIZ GUYS," Serial No. 75/835,822 for "BIZ GUYS and design," Serial No. 75/835,820 for "THE ONE ADDRESS FOR BUSINESS ON THE NET," Serial No. 75/844,883 for "BIZ MINUTE," and numerous other applications for trademarks and service marks associated with the goods and services offered to clients registering and licensing the use of domain names under the ".bz" registry. Comments concerning the layout, construction and functionality of this site should be sent to webmaster@icann.org. (c) 2000 The Internet Corporation for Assigned Names and Numbers. All rights reserved. |
