Object much?

Nathalie Dreyfus of Dreyfus & Associates provides an update on objections to new gTLDs

Initiated in 2008 by the Internet Corporation for Assigned Names and Numbers (ICANN), the liberalisation of name ownership is still underway. By 2012, ICANN received 1930 candidatures with half being trademarks and the other half generic terms.

In October 2013, the results of ICANN’s initial evaluations were published. Among all current applications:
1772 passed the initial evaluation phase and will progress to the next stage of the programme.
35 applications are currently under detailed examination.
Two applications were not approved following negative comments from the Government Advisory Committee (GAC) or because the application filed did not meet the minimum criteria.
121 dossiers were withdrawn by the applicants themselves.

In terms of safeguard mechanisms, ICANN published the list known as the “confusion group” comprising 230 combinations (in total 754 candidatures) involving identical TLDs and only two similar ones: .unicom/.unicorn and .hotels/.hoteis.

Further to this, ICANN’s independent objector raised 24 public objections based on potential detriment either to a community or to the public interest across TLDs as broad as .patagonia and .medical.

The GAC has also made formal recommendations concerning problematic gTLDs, especially in the domains of public health, consumer protection and fair competition.

The Trademark Clearinghouse (TMCH), a centralised database for registered marks, was established to allow trademark holders to uphold their rights. Subscription to the TMCH enables the owners of registered trademarks to benefit from the trademark claims service, as well as the priority sunrise period. As a result, owners of registered marks can enjoy priority registration for domain names that limits the risk of cybersquatting.

Furthermore, two mechanisms for dispute resolution are available to rights holders. There is the new Uniform Rapid Suspension (URS) procedure, which is specifically dedicated to new gTLDs, and the Uniform Domain-Name Dispute-Resolution Policy (UDRP) procedure. The URS was conceived as a dispute resolution procedure that would be faster and less onerous for the most obvious cases of infringement.

Prior to the delegation of new gTLDs, ammunition was also provided for holders of previous rights. In terms of protection mechanisms for holders of previous rights, there were four objections procedures that had to be initiated before 13 March of this year:

The Legal Rights Objection: this objection for the violation of another’s rights could be initiated either by a rights holder—whether this trademark had been registered or acquired by use—or by an international intergovernmental organisation (OIG) whose name or acronym had been copied. The World Intellectual Property Organization’s Arbitration and Mediation Centre in Geneva handles these objections.

In this context, 69 objections were filed against 37 gTLDs. Sixty-three decisions were rendered with only four being upheld and one without appeal. By this means, certain decisions were given in favor of the objector, which was the case, for example, for the gTLD .direct. The claimant was Dish DBS and the objector was The DirecTV group Inc. The experts ruled that the claimant’s argument was artificial because it could prove no trademark rights for the term ‘Direct’ and was not known under this name, unlike the objector. The claimant had acted in bad faith and the risk of confusion for internet-users was likely if the claimant had been authorised to keep and use the gTLD .direct.

Certain decisions were rendered in favour of the claimant because the trademark reproduced in the gTLD had a generic meaning, which was the case, for example, with the gTLD .express. The claimant was the Donuts and the objector was the Express Company. According to the expert, although the objector certainly holds the rights to the trademark, there are too many common usages of the term ‘Express’ to be able to limit it only for the objector’s use. This gTLD would lead to confusion among internet users concerning the use of the term.

Certain decisions were also rendered in favour of the claimant because the application involved a gTLD reproducing a trademark with an additional term. Accordingly, there was not a total reproduction of the trademark in the TLD, but possibly a simple imitation.

This was the case, for example, with the gTLD .limited. The claimant was a subsidiary of Donuts. and the objector was Big Fest LLC. The expert ruled that the absence of the article ‘the’ in the gTLD considerably reduced the risk of confusion with the objector’s trademark, ‘The Limited’. The expert concluded that the claimant’s intention was legitimate and in good faith, and that it intended to launch an ambitious commercial project on the internet thanks to the gTLD.

Some decisions took into account territorial limitations previously established by the parties concerned. This was the case, for example, with the gTLD .delmonte.

The .delmonte decision had an unusual background because the candidate requesting the .delmonte TLD was one of the objector’s many licensed operators. The experts ruled that, from the consumer’s viewpoint and despite the coexistence of products from both parties in certain territories or their similarity, the mark had always maintained its function as an indication of the country of origin of the objector’s products, whether they were directly distributed or via licensed operators.

For the dissident expert, on the other hand, the claimant had acted in good faith, even if, in its opinion, the objector could also have been seen to be acting in good faith if it had been the claimant in this litigation. Having lost due to the objection raised by the Del Monte Corporation, the claimant took judicial action against the objector in a Californian district court for infringement of its trademarks.

The String Confusion Objection: this is for an objection that is based on close similarity of gTLDs likely to create confusion and was heard at the International Centre For Dispute Resolution (ICDR). It was introduced for cases where a new gTLD was likely to lead to a risk of confusion, either with a current or previous TLD.

Sixty-seven objections followed this procedure and a decision was rendered in the majority of cases. Certain decisions were highly criticised because for the same TLD or type of TLD, the experts issued conflicting decisions. This was the case, for example, with the gTLDs .cam and .com.

VeriSign filed objections against three candidates for the gTLD .cam. The experts rejected the objections against them, but then upheld one. These conflicting decisions are astonishing in the sense that they were made solely by taking into account the visual similarities between the gTLDs in question. This problem could have been avoided if the objections had been consolidated and entrusted to the same expert.

The Community Objection: this is an objection for infringement of a community’s rights in cases where a new gTLD is likely to have a detrimental effect on a well-established community. Cases were brought before the International Chamber of Commerce (ICC) in Paris. The objector had to prove an ongoing relationship with the community in question.

The objector also had to prove the existence of a well-established community taking into account non-limiting factors. It also had to prove that it had an ongoing relationship with a clearly defined community. It total, 104 objections were filed.

Concerning the objection filed against an application for the gTLD .architect, the objector was the International Union of Architects (IUA) and the claimant was Donuts.

The expert decided that even if the IUA represented a sub-group of the community of architects, this group was substantial in the sense that it was representative of a whole community. The IUA had therefore taken appropriate action.

This decision is in direct reference to the Beijing GAC recommendations, which had asked ICANN to be vigilant concerning new gTLDs relating to regulated professions.

Limited Public Interest: This objection was available to any entity able to prove infringement of public order, morality or principles of international law. Cases were heard before the ICC in Paris. Twenty-three objections were filed, including 10 brought by the independent objector.

The next stages will enable candidates to move towards the delegation of the eagerly awaited new gTLDs and to begin marketing them.

The first stage of applications will shortly come to a close, but there are still some hurdles to overcome in order for applications to move forward. Applicants concerned by certain GAC recommendations will have to put additional safeguards in place to obtain the gTLD for which they have applied. This is the case, for example, with .med, .bank and .doctor.

Finally, a major obstacle remains, which is that of a ‘collision’ with existing technical terms (known as ‘name collision’). It concerns terms already being used on IT networks, which would be in conflict with the new gTLDs. ICANN has therefore decided to indefinitely postpone applications for the gTLDs .corp and .home, terms already used in several network protocols. Their use could seriously endanger the stability of internet networks.

The liberalisation of new gTLDs is drawing near. The future will reveal whether the safeguards put in place by ICANN have been enough to avoid the conflicts and the difficulties linked to the effective use of the new internet with its range of gTLDs. In any case, these objection mechanisms have not had any impact on cybersquatting, which mathematically is bound to increase considering the number of new gTLDs that are going to be opened. It is in the interests of trademark holders to take this opportunity to use the services of the TMCH without delay, in order to protect their principal trademarks and establish appropriate monitoring of their marks among the domain names.
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