8 Mar 2012

Legal Rights Objection Assistance For New GTLDs By Perry4Law

Internet Corporation for Assigned Names and Numbers (ICANN) has started accepting application for the registration of new generic top level domain names (GTLDs). ICANN’s new GTLDs registration is in progress and once the deadline is over, ICANN would analyse the suitability of these applications.

The applicants must make risks and benefits analysis of ICANN’s new GTLDs registrations before making an application. Further, the applicants must also undertake proper and techno legal due diligence regarding new GTLDs applications. Once that is done to the best of an applicant’s knowledge, the ball would be in ICANN’s court.

ICANN would allow filing of legal objections against applications filed for granting of new GTLDs. The legal rights objections under ICANN’s new GTLDs domain registration program could open floodgate for objections against granting of new GTLD to a particular applicant or class of applicants. Brand names, trademarks, intellectual property rights (IPRs), etc are some of the reasons that may be cited by the objector for the refusal to grant of applied GTLD.

A well prepared applicant has greater chances that his/her/its application may be granted. Similarly, a vigilant and genuine objector must make it sure that his objections succeed and the offending GTLD is not allotted to the applicant.

If you wish to analyse your case for your personal reasons or for agitating before any court, tribunal or international organisation providing arbitration or online dispute resolution (ODR) service, you may contact us to get a preliminary analysis of the same.

If you wish to get any dispute or difference resolved through our neutral(s) you may also contact us in this regard. At Perry4Law and Perry4Law Techno Legal Base (PTLB) we provide the exclusive techno legal ADR and ODR services in India and abroad. We would analyse your case from both technological and legal perspectives.

If you think that someone is trying to misappropriate your goodwill, trade name, trademark, brand name, etc, we may assist you in enforcing your rights and intellectual property rights (IPRs), either before or after the GTLDs registration time specified by ICANN expires. We would use Uniform Domain Name Dispute Resolution Policy of ICANN or such other procedure as has been “mutually agreed” between us for analysing, opinion giving and dispute resolution.

We can also help you in determining beforehand 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

(ii) Unjustifiably impairs the distinctive character or the reputation of the objector’s mark or

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

Perry4Law or its panelists 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, we would 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.

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.

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.

Non-payment of fees by an objector during legal rights objections will result in rejection of the objection, without panel appointment. Non payment of response fees by an applicant during legal rights objections will result in the objection being deemed successful. Obviously, applicants have to defend the legal rights objections as they cannot afford to loose the applied GTLD. Perry4Law and its neutral can assist both objectors and applicants in this regard.

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.