[AfrICANN-discuss] FW: Intellectual Property Advisory: WIPO Releases Updated Information on New gTLD Legal Rights Objections

[Anne-Rachel Inne]

[http://www.steptoe.com/assets/images/3342.jpeg]


After much anticipation and preparation, the application period for the new generic top-level domain (gTLD) program opened on January 12, 2012 and will accept new entries until March 29, 2012 and remain open until April 12, 2012.  This program, to be administered by the Internet Corporation for Assigned Names and Numbers (ICANN), will allow organizations to apply to secure and operate their own customized top-level domain extensions (i.e., .steptoe or .law).  Regardless of whether or not their organizations will be applying for their own new gTLDs, trademark owners are advised to familiarize themselves with ICANN’s Legal Rights Objection for new gTLD applications, and to begin coordinating with their outside counsel to prepare their strategy for addressing new gTLD applications of concern.

The Legal Rights Objection is one of four types of formal objections, described in Module 3.2. of ICANN’s New gTLD Applicant Guidebook, through which third parties may file objections against individual new gTLD applications during an approximately seven-month objection window following the public reveal of all new gTLD applications on May 1, 2012.  Specifically, the Legal Rights Objection allows trademark owners or Intergovernmental Organizations (“IGOs”) to oppose any new gTLD application on the basis that delegation and use of the applied-for string would be likely to infringe the existing trademark rights of the trademark owners or the name or acronym of the objecting IGO.

Practical Information Published by WIPO

Although ICANN’s New gTLD Dispute Resolution Procedure<http://newgtlds.icann.org/en/applicants/agb/dispute-resolution-procedure-11jan12-en.pdf> has been available in the AGB for some time and ICANN provided its own Objection and Dispute Resolution Fact Sheet<http://www.icann.org/en/topics/new-gtlds/objection-dispute-resolution-fact-sheet-14dec11-en.pdf> toward the end of last year, the World Intellectual Property Organization (“WIPO”), the organization selected by ICANN to administer the Legal Rights Objection process, recently published a frequently asked questions and answers document, which adds additional nuances and important practical information to these resources, including:

A.      The Criteria Applicable to IGOs

An IGO is generally defined as a public or governmental organization created by a treaty or agreement between nations.  Well-known IGOs include the International Monetary Fund (“IMF”) and the World Trade Organization (“WTO”).

The Legal Rights Objection also allows IGOs to oppose any new gTLD application on the basis that the applied-for string would be likely to infringe their name or acronym.  When considering an IGO’s Legal Rights Objection, WIPO dispute resolution panelists will evaluate a number of criteria, which largely track criteria applicable for trademark-based Legal Rights Objections.  Ultimately, it is important that potential applicants remain cognizant of existing rights of IGOs in a wide array of names and common acronyms.

B.      Steps to a Legal Rights Objection

Once a Legal Rights Objection has been received by WIPO, it will conduct an administrative review for compliance with relevant procedural rules and then process the $10,000 USD case filing fee.

Within thirty (30) days after the close of the objection window on December 1, 2012, ICANN will publish a “Dispute Announcement” listing all administratively compliant objections.  If the objection fails the WIPO administrative compliance review, then the complaint will be dismissed.  In response to Steptoe’s recent inquiry regarding an objector’s opportunity to cure administrative deficiencies, WIPO has clarified that “[a]ny administrative deficiencies must be corrected within five (5) days of notification by the center.”

An expert panel will be appointed within thirty (30) days after WIPO receives a response, and the panel will normally render its determination—typically based on a single round of pleadings—within forty-five (45) days thereafter.

C.      Multiple Objections to a Single gTLD

If multiple objections are filed against the same gTLD application, then WIPO may choose to consolidate them so that they are decided during a single panel proceeding, rather than proceeding with separate objection proceedings for each filing.  According to the above-cited WIPO Dispute Resolution Procedure Rules, “In the event of consolidation, the Panel shall render individual Expert Determinations for each Objection.”

D.      Publication of Objections and Panel Determinations

WIPO will post a full copy of each Legal Rights Objection determination on its website—unless, in exceptional circumstances, the panel deems it appropriate to redact portions of its determination.

In addition, upon receipt of a Legal Rights Objection, WIPO will post the date WIPO received the objection, the names of the objector and the applicant, the grounds for the objection, and the applied-for string that is the subject of the objection.

Recommended Next Steps in Preparing an Enforcement Strategy

With all new gTLD applications due to be published on May 1, 2012, organizations are advised to begin preparing their enforcement strategies for assessing and taking potential action regarding third-party applications.  As one element of this strategy, a thorough familiarity with the ICANN Legal Rights Objection process will behoove all trademark owners, whether applying for an Internet presence in the new gTLD space or only seeking to continue to protect their brands in this evolving landscape.  Accordingly, WIPO’s recently published FAQ is another useful reference resource, providing insight regarding how the Legal Rights Objection process will function.

Due to the large number of applications ICANN anticipates receiving (likely 500 to 1000 or more), having a strategy in place to review the applications and address applications of concern is critical. Steptoe is able to assist brand owners with managing their enforcement approach, including assessing priorities for brand protection at the top level, identifying key applications of concern, and determining and managing the actions to be taken on each application, including filing of Legal Rights Objections were appropriate.

For More Information:

For additional information regarding how to plan for the upcoming launch of the new gTLD program, including information regarding preparing an enforcement strategy or filing Legal Rights Objections, please contact Brian Winterfeldt<http://www.steptoe.com/professionals-754.html> (202.429.6260 or bwinterfeldt at steptoe.com<mailto:bwinterfeldt at steptoe.com>).

Intellectual Property Advisory prepared by Brian Winterfeldt<http://www.steptoe.com/professionals-754.html>, Phillip Marano, Scott Harlan<http://www.steptoe.com/professionals-883.html> and Emily Murray.

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© Copyright 2012 Steptoe & Johnson LLP. All Rights Reserved. No distribution or reproduction of this publication, or any portion thereof, is allowed without written permission of Steptoe & Johnson LLP except by recipient for internal use only within recipient's own organization.

This communication is provided by Steptoe & Johnson LLP for educational and informational purposes only and does not constitute the rendering of legal counseling or other professional services. No attorney−client relationship is created, nor is there any offer to provide legal services by the distribution of this publication.  If you have any questions about the content of this publication, please contact your Steptoe attorney or any of the contacts listed above.

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