By Doug Isenberg Trademark owners who believe that a potential new top-level domain would infringe its rights may want to consider filing an "Existing Legal Rights" objection. Here are some frequently asked questions about this process.
What is the definition of an "Existing Legal Rights Objection"?
According to ICANN's gTLD Applicant Guidebook, an Existing Legal Rights Objection is an "objection that 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 Guidebook includes important additional interpretation guidance for panelists deciding these objections, so those who file an Existing Legal Rights Objection should become very familiar with these principles and draft their objections accordingly.
Who can file a Legal Rights Objection?
The Guidebook broadly says: "A rightsholder has standing to file a legal rights objection." Note that all filed objections must include "[a] statement of the objector’s basis for standing; that is, why the objector believes it meets the standing requirements to object."
When can an Existing Legal Rights Objection be filed?
The Guidebook says that "[t]he objection filing period will open after ICANN posts the list of complete applications... and will last for approximately 7 months." ICANN has announced that it intends to post the list of complete applications on June 13, 2012; therefore, the last date for filing objections would be approximately January 13, 2013. Note that there will be "a two-week window of time between the posting of the Initial Evaluation results and the close of the objection filing period."
Where are Legal Rights Objections filed?
Existing Legal Rights Objections will be administered by the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO), which has published a detailed website about the process here: http://www.wipo.int/amc/en/domains/lro/
What rules are applicable to an Existing Legal Rights Objection?
The WIPO Rules for New gTLD Dispute Resolution apply to disputes filed pursuant to an Existing Legal Rights Objection.
What language is used for proceedings under Existing Legal Rights Objections?
All objections must be filed in English.
What are the fees for filing an Existing Legal Rights Objection?
In addition to any legal or other fees that an objecting party may face, WIPO's filing fees for an Existing Legal Rights Objection begin at $10,000 (U.S. dollars). This includes $2,000 for WIPO as the dispute resolution service provider and $8,000 for a single-member panelist appointed to decide the dispute. Additional fees apply for three-member panels; and lower fees apply in the event of multiple objections filed to single applications or multiple objections filed by the same objector to multiple applications.
A gTLD applicant is required to pay the same fees and, as with all gTLD objections, "[u]pon the termination of the proceedings, after the Panel has rendered its Expert Determination, the DRSP [Dispute Resolution Service Provider, that is, WIPO] shall refund to the prevailing party, as determined by the Panel, its advance payment(s) of Costs."
What should an objector include in filing an Existing Legal Rights Objection?
ICANN's gTLD Applicant Guidebook provides very little helpful guidance about what an objector should include in its filing. Specifically, the Guidebook says that objections should include "[a] statement giving the specific ground upon which the objection is being filed" and "[a] detailed explanation of the validity of the objection and why it should be upheld." However, the Guidebook includes important criteria for panelists evaluating Existing Legal Rights Objections; accordingly, objectors should familiarize themselves with these criteria and draft their objections with the criteria in mind. Generally, the criteria include the following:
- 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 (as identified in the treaty establishing the organization), or
- 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
Additional detail -- including factors to be considered by panelists evaluating the above criteria -- is set forth in the Guidebook.
What is the maximum length of an objection filed under an Existing Legal Rights Objection?
As with all objections to new gTLDs, objections based on an Existing Legal Rights Objection is limited to 5,000 words or 20 pages, whichever is less (excluding attachments).
Does a gTLD applicant have to respond to an Existing Legal Rights Objection?
No. An applicant can negotiate a settlement to an objection (resulting in withdrawal of the application or the objection), file a response (see details below) or withdraw (in which case the objector will prevail by default).
If an applicant files a response to an Existing Legal Rights Objection, when must it be filed, what should it include and how long can it be?
A response must be filed within 30 calendar days of WIPO's notice of the objection. According to the Guidebook, the response should include "[a] point-by-point response to the claims made by the objector" and "[a]ny copies of documents that it considers to be a basis for the response." Like objections, responses are limited to 5,000 words or 20 pages, whichever is less (excluding attachments).
How are documents filed, and will in-person hearings be held for Existing Legal Rights Objections?
Documents should be filed electronically, and, as in all objection proceedings, "[d]isputes will usually be resolved without an in-person hearing. The panel may decide to hold such a hearing only in extraordinary circumstances." Note that this language is similar to that set forth in the Rules for the Uniform Domain Name Dispute Resolution Policy (UDRP) (which says there shall be no in-person hearings except "as an exceptional matter" as decided by a panel), and that no in-person hearings have ever been held under the UDRP (which went into effect in 1999).