Last month Class 46 posted a guest piece by Jean-François Vanden Eynde (eBrand Services, Luxembourg) on the Public Comment phase of ICANN's new regime for generic top-level domains (gTLDs). In this piece, Jean-François takes readers through the provisions made for Legal Rights Objections. He writes:

Legal Rights Objection (LRO) is one of the four objections defined in the applicant guidebook. ICANN and WIPO have laid down the procedures for this. The aim of this blogpost is to focus on the determinations and factors which the panelist will have to analyze. Even if grounds are well known, LRO cases will probably not be as straightforward as they might seem.

First let’s explain the background. The Arbitration and Mediation Center of the World Intellectual Property Organization has agreed to administer disputes brought pursuant to legal rights objections. The existing legal rights objection must be understood as the objection in which the string comprising the potential new gTLD infringes the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.

The applicant guidebook distinguishes two type of objectors, namely the right holders owning either registered or unregistered trademarks as well as intergovernmental organization (IGO) as defined in the guidebook. The latter aims at covering organization which are closely linked to the United Nations, but let’s focus on the right holders’ actions

ICANN states that a DRSP panel of experts presiding over a legal rights objection will determine whether:

(1)      the potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trade mark or service mark (“mark”) or IGO name or acronym (as identified in the treaty establishing the organization); or

(2)      unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or

(3)      in case of an otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym.

Moreover, in the case where the objection is based on trademark rights, the panel will consider the following non-exclusive factors:

(1)      Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or meaning, to the objector’s existing mark.

(2)      Whether the objector’s acquisition and use of rights in the mark has been bona fide.

(3)      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.

(4)      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.

(5)      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.

(6)      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.

(7)      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.

(8)      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.

At first glance, the principles are clear as the determination is already well known by brand owners and IP lawyers (unfair advantages and competition as well as likelihood of confusion).

However, it is important to remind here that Top Level Domains do not know the principles of territoriality and specificity as trade marks do. Moreover, with an entering ticket of 185 000 USD, most companies that have applied for an extension surely have strong arguments to justify their rights and their bona fide intention to apply for a specific strings.

Now some wordings will certainly lead to some passionate debate, as:

-          In factor 3: “in the relevant sector of the public of the sign”

-          In factor 4: “has engaged in a pattern of conduct”

-          In factor 5: “in a way that does not interfere with the legitimate exercise”; and

-          In factor 8: “create a likelihood of confusion […] as to the source, sponsorship, affiliation, or endorsement of the gTLD”

If you want to take a nice example, you can use the following classic example

-          Lotus, the car maker and applying for a .lotus

-          Lotus, the tissue manufacturer

-          Lotus, the biscuit baker

All three coexist peacefully and are well known, but what if one of them would have applied for a .lotus and the other would have objected based on legal rights. Would you like to answer all 3 determinations and analyze the 8 non-exclusive factors?

I am sure that this will trigger some very passionate discussions. In any case, panelist will certainly have a hard time on these cases as most of them will need to be carefully balanced.