Legal Rights Objections Under ICANN’s New GTLD Domain Registration Program

Internet Corporation for Assigned Names and Numbers (ICANN) has proposed registration of new generic top level domain names (new GTLDs) in the past. In order to comply with that proposal, ICANN’s new generic top level domain names (new GTLDs) registration has begun.

There is a time limit within which the applicants must apply for a new GTLD. The new GTLDs application process has already been initiated from 12 January 2012 and it would conclude on 29th March 2012. As on 12-02-2012, the applicants have 46 more days to apply for new GTLDs.

However, in the zest of applying to new GTLDs, the applicants must not forget to do their home works properly. Perry4Law and Perry4Law Techno Legal Base (PTLB) recommend a prior and thorough risks and benefits analysis of applying to new GTLDs registration to ICANN. This should include techno legal analysis, new GTLDs due diligence, possible Legal Rights Objections under ICANN’s New GTLD scheme, etc.

In this work we are analysing the Legal Rights Objections part of the new GTLDs registration procedure of ICANN. Prior to ICANN’s approval of a new GTLD, third parties may file a formal objection to an application on several grounds, including, for trademark owners and Intergovernmental Organisations (IGOs), on the basis of a “Legal Rights Objection.”

When such an objection is filed, an independent panel (comprised of one or three external, neutral experts) will determine whether the applicant’s potential use of the applied-for GTLD would be likely to infringe the objector’s existing trademark, or IGO name or acronym.

To address potential disputes over new GTLD applications, ICANN offers three other types of pre-delegation objection-based dispute resolution procedures. These are “String Confusion Objection,” “Limited Public Interest Objection,” and “Community Objection.” For the latter two types of objections, ICANN is also making available an “Independent Objector” by way of public service. ICANN has furthermore established a process for the ICANN Governmental Advisory Committee (GAC) to provide “GAC Advice on New GTLDs” concerning applications identified by governments as problematic.

The independent panel constituted for resolution of Legal Rights Objection will determine whether the potential use of the applied-for GTLD by the applicant:

(i) Takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”) or IGO name or acronym, or

(ii) Unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or

(iii) Otherwise creates an impermissible likelihood of confusion between the applied-for GTLD and the objector’s mark or IGO name or acronym.

The panel will ordinarily determine the merits of the objection based solely on the parties’ pleadings, and may make reference to a range of non-exclusive consideration factors.

For an objection based on trademark rights, the panel will consider the following non exclusive consideration factors:

(i) Whether the applied-for GTLD is identical or similar, including in appearance, phonetic sound, or meaning, to the objector’s existing mark.

(ii) Whether the objector’s acquisition and use of rights in the mark has been bona fide.

(iii) Whether and to what extent there is recognition in the relevant sector of the public of the sign corresponding to the GTLD, as the mark of the objector, of the applicant or of a third party.

(iv) Applicant’s intent in applying for the GTLD, including whether the applicant, at the time of application for the GTLD, had knowledge of the objector’s mark, or could not have reasonably been unaware of that mark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.

(v) Whether and to what extent the applicant has used, or has made demonstrable preparations to use, the sign corresponding to the GTLD in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise by the objector of its mark rights.

(vi) Whether the applicant has marks or other intellectual property rights in the sign corresponding to the GTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, has been bona fide, and whether the purported or likely use of the GTLD by the applicant is consistent with such acquisition or use.

(vii) Whether and to what extent the applicant has been commonly known by the sign corresponding to the GTLD, and if so, whether any purported or likely use of the GTLD by the applicant is consistent therewith and bona fide.

(viii) Whether the applicant’s intended use of the GTLD would create a likelihood of confusion with the objector’s mark as to the source, sponsorship, affiliation, or endorsement of the GTLD.

For an objection based on rights in the name or acronym of an IGO, the panel will consider the following non-exclusive consideration factors:

(i) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound or meaning, to the name or acronym of the objecting IGO.

(ii) Historical coexistence of the IGO and the applicant’s use of a similar name or acronym. Factors considered may include: a. Level of global recognition of both entities;

(iii) Length of time the entities have been in existence; c. Public historical evidence of their existence, which may include whether the objecting IGO has communicated its name or abbreviation under Article 6ter of the Paris Convention for the Protection of Industrial Property.

(iv) Whether and to what extent the applicant has used, or has made demonstrable preparations to use, the sign corresponding to the TLD in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise of the objecting IGO’s name or acronym.

(v) Whether and to what extent the applicant has been commonly known by the sign corresponding to the applied-for GTLD, and if so, whether any purported or likely use of the GTLD by the applicant is consistent therewith and bona fide.

(vi) Whether the applicant’s intended use of the applied-for GTLD would create a likelihood of confusion with the objecting IGO’s name or acronym as to the source, sponsorship, affiliation, or endorsement of the TLD.

After closing the application window (from January 12 to March 29, 2012) and posting all applications, ICANN will announce the opening of the objection filing window. Currently, the objection filing window is anticipated to be seven months, from approximately May 1 to December 1, 2012. (More or less in parallel with the latter filing window, ICANN will be undertaking a so-called Initial Evaluation of applications for compliance with ICANN Applicant Guidebook formalities.)

All Legal Rights Objections must be submitted electronically with a copy of the objection to ICANN and the applicant. The objection filing fee must be submitted at the time of filing. An objection must contain at least the following: (i) the names and full contact information of the objector; (ii) a statement of the objector’s basis for standing under the procedure; and (iii) a confirmation of the basis for the objection (i.e., “Legal Rights Objection”) including “an explanation of the validity of the objection and why the objection should be upheld.” Responses must also be submitted electronically with a copy to ICANN and the objector. The response filing fee must be submitted at the time of filing of the response.

A response must contain at least the following: (i) the names and full contact information of the applicant; and (ii) a “point-by-point response to the statements made in the objection.” An applicant’s failure to reply to an objection would be considered a “default” and would result in the objection being deemed successful.

On receipt of an objection or response, an administrative compliance review would be conducted and case filing fee would be processed. Any administrative deficiencies must be corrected within five (5) days of notification. Within 30 days of the close of the objection window, ICANN will publish a “Dispute Announcement” listing all administratively compliant objections. The applicants would be notified of any objections and the applicants will then have 30 days to file a response. Within 30 days of receiving a response, an expert panel would be appointed. Normally the panel will render its determination within 45 days of appointment.

For a case involving an objection to one application (i.e., for one GTLD) to be decided by one expert, the fee will be USD 10,000 for each party (this includes a non-refundable USD 2,000 case administration fee), subject to a refund of the expert fee (USD 8,000) to the prevailing party. Different fee arrangements apply to three-member panels and to possible consolidation scenarios.

Non-payment of fees by an objector will result in rejection of the objection, without panel appointment. Non payment of response fees by an applicant will result in the objection being deemed successful.

The substantive portion of an objection or response is limited to 5,000 words or 20 pages, whichever is less, excluding attachments. The objector or applicant must also list, describe and provide copies of any attached supporting evidence.

The remedies are limited to the success or dismissal of the objection. There are no monetary damages, but the prevailing party is entitled to a partial refund of the panel fee (as described above).

A panel determination is “considered an expert determination and advice that ICANN will accept within the dispute resolution process.” Such determination is independent of any determination under either of the other types of ICANN objection options available.

The availability of the Legal Rights Objection as an administrative dispute resolution option does not preclude court options which either party may have to submit the dispute to court.

Perry4Law and PTLB believe that applying for and getting new GTLDs requires well planned techno legal strategy. A company or individual desiring to apply for the same need to analyse all the possible strengths and weaknesses of his application well in advance. While the strengths must be further improved special work need to be done upon the weakness of such future application. Perry4Law and PTLB wish all the best to future GTLDs applicants.

Source: IPR Services In India.