September 1, 2015
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Article Summary: The ICANN Legal Rights Objection: Statistics and Takeaways
|Members of INTA’s Internet Committee have written an article detailing some of the key statistics and takeaways from the first 69 Legal Rights Objection proceedings to take place in the first round of the new gTLD program. The full article is available at www.inta.org/Advocacy/Pages/Internet.aspx.
The Internet Corporation for Assigned Names and Numbers (ICANN), as part of its new generic top-level domain (gTLD) program, incorporated several dispute resolution procedures intended to afford businesses, individuals, governmental entities and communities the opportunity to challenge the introduction of certain new gTLD strings into the domain name system. One such mechanism was the Legal Rights Objection (LRO), under which parties could object to a new gTLD string on the basis that it would violate the trademark rights of the objector.
ICANN selected the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center to administer all LRO disputes. WIPO panelists were charged with considering whether potential use of an applied-for gTLD string (i) takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark; (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.
Against this backdrop of ICANN procedures and WIPO rulings, the article organizes the results and analyzes the key takeaways that emerged from the 69 LRO proceedings in the first round of the new gTLD program. First, as demonstrated by the fact that the applicant prevailed over the complainant in 59 of the 69 cases, proving bad faith by an applicant before its registry launches is extremely difficult. This is because the only evidence of the applicant’s intent prior to any website content going live is often the language of the application itself. In addition, LRO panels clearly committed to enforcing a higher evidentiary standard than the Uniforn Domain-Name Dispute-Resolution Policy (UDRP), such that even when complainants had achieved success in disputes involving analogous second-level domains in the past, this did not necessarily result in similar success in the gTLD context.
Accordingly, the scenario that played out time and time again in LRO proceedings was one in which a brand owner with an arbitrary trademark, e.g., COACH, EXPRESS, LIMITED, could not prevent the delegation of a top-level domain comprised of the mark. LRO panels consistently provided the rationale that such new gTLD strings had a common dictionary meaning beyond the scope of any trademark rights in such terms for particular contexts, and to preemptively terminate the application prior to any commercial use would severely undermine the right of free expression. Thus, it has become readily apparent that for the next round of gTLDs, brand owners with valuable but non-fanciful marks should consider applying for their own top-level domains rather than relying on the LRO process to prevent use of the marks by third-party gTLD applicants.
For more details, statistics and lessons learned from the LRO proceedings, read the full article here.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association