ICANN has designated the World Intellectual Property Organization (WIPO) as the exclusive provider of arbitration services to resolve disputes when a Legal Rights Objection (LRO) is lodged against a proposed new gTLD. An LRO can be lodged by a trademark owner or intergovernmental organization when an applied-for gTLD would be likely to infringe the objector’s existing trademark, or IGO name or acronym.
As noted in WIPO’s explanation of its LRO arbitration role (available at http://www.wipo.int/amc/en/domains/lro/), this is but one of several new objections that can be raised by various parties against a proposed new gTLD:
To address potential disputes over new gTLD applications, ICANN offers three other types of pre-delegation objection-based dispute resolution procedures which are not administered by WIPO, namely, “String Confusion Objection,” “Limited Public Interest Objection,” and “Community Objection.” For the latter two types of objections, ICANN is also making available an “Independent Objector” by way of public service. ICANN has furthermore established a process for the ICANN Governmental Advisory Committee (GAC) to provide “GAC Advice on New gTLDs” concerning applications identified by governments as problematic.
LRO disputes will generally be decided by a single expert, unless the parties to the dispute agree on a 3-member panel. In either case, the panel will determine whether 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 trademark or service mark (“mark”) or IGO name or acronym,
· unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or
· otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym.
In a single expert proceeding, each party will pay a $10,000 fee. Of that fee, $2,000 from each party will go to WIPO to cover administrative costs; the prevailing party will receive an $8,000 refund, with that amount being charged to the losing party for the expert’s fee. ICANN is obliged to accept WIPO’s LRO determinations.
We believe it is reasonable for ICANN to select a single provider of LRO dispute resolution services as the likely number of cases should be limited. Notwithstanding the pre-launch concerns voiced by some trademark interests, it’s likely that the multiple types of objections that can be raised against new gTLDs, as well as the prospect of losing an $185,000 application fee and other considerable preparatory costs, will likely keep such disputes to a minimum.
As noted, the LRO and other objection processes are pre-delegation remedies, and once a new gTLD actually launches it is subject to additional rights protection mechanisms. They are described by WIPO as follows:
Beyond the above-described pre-delegation objection procedures (available prior to any new gTLD being approved and becoming operational), ICANN has established a range of “Rights Protection Mechanisms” (RPMs). These include a Trademark Clearinghouse (for use in connection with Sunrise periods and Trademark Claims services), a Uniform Rapid Suspension system (URS), and a Post-Delegation Dispute Resolution Procedure (PDDRP). In addition, the existing Uniform Domain Name Dispute Resolution Policy (UDRP) will be applicable to all new gTLDs. More information on these RPMs can be found in the WIPO Center’s overview of Trademark Rights Protection Mechanisms for New gTLDs.
ICA has been participating in and monitoring the work of the Implementation Advisory Group (IAG) for the Trademark Clearinghouse (TMC), which has been dealing with technical and process issues arising from the creation of a large global database of protected marks.
However, ICANN is woefully behind on developing the implementation details for Uniform Rapid Suspension (URS), the expedited supplement to the UDRP that is of most relevance and concern to domain registrants and portfolio owners. ICANN staff had indicated at the Dakar meeting that a URS IAG would be launched within a month after that October 2011 gathering, but more than a quarter year later we have yet to see any progress on this front.
That unexplained delay may well be due to ICANN’s implausible promise to trademark owners that the URS would carry a fee of only $300 for objections to one or more domains held by the same registrant. ICA consistently questioned whether any credible due process could be provided at such a bargain basement price. Both WIPO and the National Arbitration Forum NAF have publicly stated that, with IP attorney arbitrator fees averaging $650 per hour, there is no way they can procure the services of credible experts at that price, much less cover their own administrative costs. In this regard we note that that Rapid Evaluation Service (RES), now available for suspension of infringing .xxx domains exclusively through NAF, carries the same price tag as a UDRP - $1200.
If an implementation process for URS has not been announced by the time of the ICANN meeting in San Jose, Costa Rica next month, ICA will be asking ICANN’s Board and staff to explain the delay, and ask when steps will be taken to assure that the URS is a credible process affording adequate due process to domain registrants. We will also continue to insist that any URS provider be placed under a standard binding contract that sets forth the extent of its powers and provides ICANN with flexible and escalating enforcement tools, and that protections are included to prevent forum shopping if more than one URS provider is designated.
And, needless to say, ICA will participate in the URS IAG once it is initiated to assure that this new process is fair to registrants and is truly a limited supplement to, and not a broad substitute for, the UDRP.