Protecting Your “.trademark”: ICANN Clarifies Procedure for Objecting to New gTLDs

It has been almost two years since the Internet Corporation for Assigned Names and Numbers (ICANN) announced that it would accept applications for the registration of new generic top level domain names (gTLDs), increasing the number of domain name endings beyond .com, .net, and .gov. ICANN currently is conducting its initial evaluation of the approximately 1,917 applications it received and is expected to release the results at the end of March. In the meantime, ICANN has published the applied-for gTLDs here.

Parties may object to any of the applied-for gTLDs on four bases: string confusion, legal rights, community, and limited public interest. Three different dispute resolution services—ICDR, WIPO, and the ICC—have been appointed to accept and adjudicate the objections. A very broad overview of the objections can be found here and ICANN’s Applicant Guidebook, which includes a section on objections can be found here.

In late January, ICANN hosted its first session outlining some of the more important aspects of filing an objection. This post gives a brief summary of those guidelines, and includes several links where more detailed information can be found. The first set of bullet points discusses the process in general and parameters that apply to all objections. The remaining sets of bullet points discuss the objection grounds themselves, as well as procedural aspects particular to the specific dispute resolution service handling each objection.

General Information

• The current deadline for filing objections is March 13, 2013. (ICANN has already extended this deadline once.)
• Objectors are required to complete an objection form provided by the dispute resolution services.
• Within approximately ten days after ICANN releases the results of its initial evaluation of the applications, applicants that have had an objection filed against their application will be notified. Applicants will then have thirty days to file a response to the objection and must use the form provided by the dispute resolution service. 
• In addition to the requisite form, objectors and applicants may also file arguments of up to 20 pages or 5,000 words (whichever is less).
• Before the objections are substantively reviewed, objectors and applicants will have a chance to correct any administrative deficiencies in their filings.
• After applicants file their responses, the various dispute resolution services will appoint experts to adjudicate the objections.
• Except in very rare instances, objections will be decided on the papers only, without a hearing. Generally speaking, a final decision on the objection will be issued approximately 45 days after an expert panel has been appointed.
• Each dispute resolution service requires both parties to pay the full fee and all of the expert expenses up front. Although both parties have to pay the full expenses up front, at the end of the process the prevailing party will be refunded the expert expenses, but not the administrative fee.

 With this overview in mind, below is an outline of each objection ground, the dispute resolution service responsible for adjudicating each type of objection, and some of the more important details unique to each objection ground.

String Confusion Objections: International Centre for Dispute Resolution

• Parties who have an existing domain name and believe that there is a likelihood of confusion between their existing domain name and an applied-for gTLD may file an objection to the applied-for gTLD based on string confusion grounds.  Similarly, a party may file a string confusion objection if that party applied for its own gTLD and believes that there is a likelihood of confusion between their applied-for gTLD and another applied-for gTLD.
• String confusion objections will be adjudicated by the International Centre for Dispute Resolution, a division of the American Arbitration Association.
• Objections are filed through the ICDR’s webfile system. Objectors must complete an online form and file a $2,750 filing fee. Applicants will also have to complete an online form and submit the $2,750 filing fee.
• Objectors and applicants will be required to pay expert fees set by the ICDR.

 Legal Rights Objection: World Intellectual Property Organization

• Objectors who own a registered or unregistered trade or service mark and believe that there is a likelihood of confusion between the mark and the applied-for gTLD may file a legal rights objection. Similarly, international governmental organizations (“IGO”) with a name or acronym that may be confused with an applied-for gTLD may file a legal rights objection.
• Legal rights objections are adjudicated by the World Intellectual Property Organization (“WIPO”).
• WIPO will generally appoint a panel consisting of one expert, although the parties may agree to work together to appoint three member panels.
• Assuming the parties elect to use a one member panel, each party must pay $10,000, which consists of a $2,000 non-refundable case administration fee and a $8,000 expert fee. Parties electing to proceed before a larger panel will be required to pay an additional fee.
• Generally speaking, the panel will review whether, with respect to the objector’s trademark or IGO name or acronym, the applied for gTLD:
  • Takes advantage of the distinctive character or reputation, or
  • Unjustifiably impairs the distinctive character or reputation, or
  • Otherwise creates an impermissible likelihood of confusion.
  • When conducting this review, the panel will look to the:
    • Identity or similarity of the mark/gTLD;
    • Objector’s bona fide acquisition/use of the mark ;
    • Relevant recognition by the public;
    • Knowledge of the objector’s mark, and any pattern of infringement;
    • Applicant’s use (including preparations) of the mark in connection with a bona fide offering;
    • Applicant’s rights in the mark, including whether such acquisition/use has been bona fide, and whether the intended gTLD use is consistent therewith;
    • Whether applicant is commonly known by the mark; and
    • Whether applicant’s intended use would create a likelihood of confusion.

 Community Objection and Limited Public Interest Objection: International Centre for Expertise

• The International Centre for Expertise, a division of the International Centre for Alternative Dispute Resolution, will adjudicate both community objections.
• An established institution associated with a clearly delineated community that believes that there is a strong association between the community and the applied-for gTLD may file a community objection to the gTLD. To prevail, the objector must show:
  • The community involved by the objector is a clearly delineated community;
  • Community opposition to the application is substantial;
  • There is a strong association between the community invoked and the applied-for gTLD string; and
  • The application creates a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community to which the string may be explicitly or implicitly targeted.
  • Panels deciding community objections will consist of one expert.
  • Each party must pay a €5,000 filing fee. The expert fee is due shortly after the Applicant files a response and will vary from objection to objection, but likely will be approximately €12,000 for one member panels.

 Limited Public Interest Objection: International Centre for Expertise

• The International Centre for Expertise also will adjudicate limited public interest objections.
• Any internet user who believes that an applied-for gTLD breaches the general principles of international law may file a limited public interest objection.
• Panels deciding limited public interest objections will consist of three experts.
• Each party must pay a €5,000 filing fee. The expert fee is due shortly after the Applicant files a response and will vary from objection to objection, but likely will be approximately €17,000 for three member panels.

In addition to the objections filed by applicants and other entities, ICANN has appointed an Independent Objector who will file objections solely in the interest of global internet users. The Independent Objector will file an objection to a specific string, but only if no other objections to that string have been filed.

 The Independent Objector’s deadline also is March 13, 2013. If he files an objection to a particular string and then, later, someone else objects to that same string, then the Independent Objector has the option of withdrawing his objection. There also is a slight possibility that the objections would be consolidated. More information about the Independent Objector can be found here.

 In sum, there are a lot of details and a lot of rules for each type of objection. The process for application and registration of new gTLDs is still nascent and ICANN already has experienced several hiccups. Probably the most important piece of advice anyone can offer is to check the ICANN website regularly for updates and information.