The way brands and trademarks are protected and
enforced has been changed drastically forever. With the introduction
of new generic top level domain names (GTLDs) by ICANN, the chances
of violation
of brands and trademarks by GTLDs has increased
significantly.
Even ICANN has anticipated this situation and it has
put in place a system and procedure that takes care of these
circumstances. According to ICANN, the objection
period for new GTLDs begins when the applied-for domain
names, or strings, are posted and is intended to remain open for
approximately seven months.
Once the stipulated objection filing period expires,
all objections received will move through the dispute resolution
process, estimated to take approximately five months, in the absence
of extraordinary circumstances.
An objection-filing period was built into the new
GTLD Program as a way for persons to protect certain rights and
interests. For example, if someone has applied for your brand or
trademark, or perhaps you oppose a GTLD that targets a community in
which you are involved, you can formally object to that application.
Filing an objection gives you the opportunity to have your objection
considered before a panel of qualified experts in the relevant
subject area.
Anyone with standing may submit a formal objection
on any one of four objection grounds. All objections must be filed
directly with the selected Dispute Resolution Service Provider
(DRSP), not with ICANN.
The first objection can be raised on the ground of
“String Confusion”. For instance, if the applied for GTLD string
is confusingly similar to an existing TLD or to another applied-for
GTLD string, it can be objected to. If two confusingly similar TLDs
are delegated this could cause user confusion. Such objections can be
filed before the International Centre for Dispute Resolution as per
the prescribed procedure.
The second type of objection is known as “Legal
rights Objection”. This category of disputes involves
cases where the applied-for GTLD string violates the legal rights of
the objector. Legal rights objections can be filed with World
Intellectual Property Organization (WIPO) as per the prescribed
procedure.
The third category of objection pertains to “Limited
Public Interest”. This category can be invoked when the applied-for
GTLD string goes against generally accepted legal norms of morality
and public order that are recognised under principles of
international law. Anyone can file an objection; however the
objection is subject to a "quick look" review designed to
filter out frivolous and/or abusive objections. Such objections can
be filed with the International Center of Expertise of the
International Chamber of Commerce by following the prescribed
procedure.
The fourth category of objections recognises the
“Community Rights”. As per this category, objections can be
raised if there is substantial opposition to the GTLD application
from a significant portion of the community that the GTLD string is
targeting. An established institution associated with a clearly
defined community can file its objections with the International
Center of Expertise of the International Chamber of Commerce in this
regard.
ICANN has also proposed to appoint “independent
objectors” who would scrutinise the applied GTLDs for
possible violations of IPRs and other rights. An independent objector
would be responsible for determining if a new GTLD being applied for
is in the best interest of the Internet community. If he/she/it
reaches a negative conclusion, he/she/it will file formal objections
against a new GTLD application.
If you want to file a formal objection to a new gTLD application you will need to:
(a) Contact the appropriate dispute resolution
service provider and file your objection electronically with them.
(b) File your objection in English.
(c) File each objection separately. If you wish to
object to several applications, you must file a separate objection
and pay the accompanying filing fees for each one.
For each objection filed, be sure to include:
(a) Your name and contact information as the objector.
(b) A statement of why you believe you meet the standing requirements.
(c) A description of the basis for the objection, including:
(i) a statement giving the grounds you are objecting on and
(ii) a detailed explanation of the validity of your objection and why it should be upheld.
(d) Copies of any documents that support your objection.
Objections are limited to 5000 words or 20 pages, which ever is less.
You must pay a filing fee in the amount set and
published by the relevant dispute resolution service provider at the
time you file your objection. You should refer to the appropriate
provider for exact amounts. If the filing fee is not paid, the
objection proceeding will be dismissed.
Within thirty days of the closing of the objections
filing window, ICANN will post a Dispute Announcement and notify the
DRSP to begin the objection proceedings. If you are an applicant and
have received notice from a service provider that you have had an
objection filed against your application, you will have 30 calendar
days to file your response. If you do not respond within 30 days, you
will be in default and the objector will prevail.
If your application has been objected to, you have the following options:
(a) You can work to reach a settlement with the
objector. This would result in either a withdrawal of the objection
or a withdrawal of your new gTLD application;
(b) You can file a response to the objection and enter the dispute resolution process; or
(c) You can withdraw your new gTLD application, in which case the objector will prevail by default and your application will not proceed.
If you fail to file a response to an objection, the objector will prevail by default.
To file a response to an objection you will need to:
(a) Contact the appropriate dispute resolution
service provider and file your response(s) electronically.
(b) File your response(s) in English.
(c) File your responses separately. If you are
responding to several objections you must file a separate response
for each and pay the accompanying filing fee for each.
For each response filed be sure to include:
(a) Your name and contact information as the applicant.
(b) A point-by-point response to the claims made by the objector.
(c) Copies of any documents that support your response.
Responses are limited to 5000 words or 20 pages,
whichever is less, excluding attachments.
You must pay a filing fee in the amount set and
published by the relevant dispute resolution service provider at the
time you file your response. If the filing fee is not paid, the
response will be disregarded, which will result in the objector
prevailing.
Perry4Law and PTLB believe that this guide would prove useful to all stakeholders.
