Prior to ICANN’s approval of a New gTLD, third parties may file a formal objection to an application on several grounds, including, for trademark owners and Intergovernmental Organizations (IGOs), on the basis of a “Legal Rights Objection.”
When such an objection is filed, an independent panel (comprised of one or three experts) will determine whether the applicant’s potential use of the applied-for gTLD would be likely to infringe (described below) the objector’s existing trademark, or IGO name or acronym.
According to the ICANN Applicant Guidebook, a panel determination is "considered an expert determination and advice that ICANN will accept within the dispute resolution process." Such determination is independent of any determination under either of the other types of ICANN objection options available.
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. For more detailed information on all ICANN objection options, see Module 3 of the ICANN Applicant Guidebook.
As provided for in section 3.5.2 of the ICANN Applicant Guidebook, the independent panel will determine whether the potential use of the applied-for gTLD by the applicant:
The panel will ordinarily determine the merits of the objection based solely on the parties’ pleadings, and may make reference to a range of non-exclusive consideration factors listed below.
Subsequent to ICANN's closing of its new gTLD application window (which ran from January 12 to May 30, 2012), and announcement/posting of all applications, the objection filing window commenced on June 13, 2012.
The objection filing window was nine months and closed on 13 March 2013 at 23:59:59 UTC.
Concurrent with the objection filing window, ICANN is undertaking so-called Initial Evaluation of applications for compliance with ICANN Applicant Guidebook formalities; ICANN has indicated that they plan to release the first of the Initial Evaluations on March 23, 2013, with further Initial Evaluations released on a rolling basis thereafter based on Prioritization Draw results.
All Legal Rights Objections had to be submitted electronically by email to lro@wipo.int using the WIPO Center’s LRO Model Objection with a copy of the objection to ICANN and the applicant. The objection filing had to be submitted at the time of filing.
An objection must contain at least the following:
Responses must be submitted electronically to the WIPO Center by email to lro@wipo.int using the WIPO Center’s LRO Model Response with a copy to ICANN and the objector. The response filing fee must be submitted at the time of filing of the response.
A response must contain at least the following:
On receipt of an objection or response, the WIPO Center will conduct an administrative compliance review and process the case filing fee. Any administrative deficiencies must be corrected within five (5) days of notification by the Center. Within 30 days of the close of the objection window, ICANN will publish a "Dispute Announcement" listing all administratively compliant objections. The WIPO Center will then notify applicants of any objections; applicants will then have 30 days to file a response. Within 30 days of receiving a response, the WIPO Center will appoint the expert panel. Normally the panel will render its determination within 45 days of appointment.
A graphic overview is provided by the respective "Objection and Dispute Resolution" and "Evaluation Process" flow charts found in the ICANN Applicant Guidebook.
While the panel has discretion to order or admit additional written statements, the ICANN dispute resolution procedure typically contemplates a single round of pleadings.
Only in exceptional cases may a panel hold a hearing (by videoconference if possible).
In the event the parties wish to participate in mediation/settlement negotiations, at any point during the proceedings, they may jointly request a 30-day suspension. The WIPO Center can assist the parties in finding an appropriately qualified mediator to help the parties in seeking to reach a mutually satisfactory settlement of their dispute, under the WIPO Mediation Rules. In such event, the WIPO Center will not charge any additional fee for its mediation case administration services.
For a case involving an objection to one application (i.e., for one gTLD) to be decided by one expert, the fee payable upon filing will be USD 10,000 for each party (this includes a non-refundable USD 2,000 case administration fee), subject to a refund of the expert fee (USD 8,000) to the prevailing party. Different fee arrangements apply to three-member panels and to possible consolidation scenarios; full details are provided in the WIPO Schedule of Fees for New gTLD Dispute Resolution.
For all objections and responses filed with WIPO, the initial fee to be paid at the time of filing of the objection or response is 10,000 (which covers the WIPO DRSP fee and Panel fee). Any applicable reduced Panel fees specified below (i.e. where a consolidation scenario is applied by WIPO in accordance with the WIPO Rules for New gTLD Dispute Resolution), would be refunded to the appropriate party from the initial filing fee, after the close of proceedings.
Payments may be made by any of the following means: bank transfer, credit card, WIPO Account. Please see the Schedule of Fees and Costs: New gTLD Pre-Delegation Legal Rights Objection Procedure for more details.
Non-payment of fees by an objector will result in rejection of the objection, without panel appointment. Non payment of response fees by an applicant will result in the objection being deemed successful.
In all cases, the language of proceedings is English. According to the ICANN Applicant Guidebook, "Parties may submit supporting evidence in its original language, provided and subject to the authority of the Panel to determine otherwise, that such evidence is accompanied by a certified or otherwise official English translation of all relevant text."
The substantive portion of an objection or response is limited to 5,000 words or 20 pages, whichever is less, excluding attachments. The objector or applicant must also list, describe and provide copies of any attached supporting evidence.
The WIPO Center has posted a list of experts available for appointment prior to the start of the objection filing period. This list takes into account requirements of professional expertise and may be subject to additional development by the WIPO Center in light of case needs. As part of the process of appointment to an actual case, experts are required to affirm their neutrality by signing the WIPO Center’s LRO Statement of Acceptance and Declaration of Impartiality and Independence.
Unless the parties agree on a three-member expert panel, for a single-member expert panel the WIPO Center will appoint the expert in its sole discretion. Where the parties agree on a three member expert panel, each party may submit a list of three candidates from the WIPO Center’s list of experts, one of whom would be appointed as the respective party-elected expert co-panelist; the WIPO Center will then provide the parties with a list of five candidates from the WIPO Center’s list of experts for the parties’ respective ranking, with a view to the WIPO Center’s appointment of the third (presiding) expert panelist.
The remedies are limited to the success or dismissal of the objection. There are no monetary damages, but the prevailing party is entitled to a partial refund of the panel fee (as described above). According to the ICANN Applicant Guidebook, a panel determination is “considered an expert determination and advice that ICANN will accept within the dispute resolution process." Such determination is independent of any determination under either of the other types of ICANN objection options available.
In certain scenarios, such as where multiple objections are filed against the same application, to streamline costs and for procedural efficiency, the WIPO Center will endeavor where appropriate to consolidate such objections for determination by a single panel; in such consolidated cases, a separate determination would be rendered for each objection. Within seven days of the WIPO Center’s notification of the commencement of the response filing period to the applicant, the parties themselves may also propose, for the WIPO Center’s determination, in its discretion, that objections be consolidated. The WIPO Center may take into account factors such as whether the same or similar application is at issue; any request/opposition of the parties; the trademarks/evidence relied-upon; or expert availability.
Upon registering an objection for processing, the WIPO Center will post on its website the following information about the objection: the proposed string to which the objection is directed; the names of the objector and applicant; the grounds for objection (i.e., "Legal Rights Objection"); and the date of the WIPO Center’s receipt of the objection.
On conclusion of a case the WIPO Center will post the determination in full on its website, unless in exceptional circumstances the panel has deemed it appropriate to redact portions of its determination.
The availability of the Legal Rights Objection as an administrative dispute resolution option does not preclude court options which either party may have to submit the dispute to court.
The WIPO Center’s role is limited to case administration, including verifying that the objection and response satisfy the relevant filing requirements, issuing case related notifications, appointment of the panel of experts, coordinating communications between the parties and panel, and otherwise facilitating efficient case resolution. The WIPO Center is independent and impartial in this case administration role; the merits of an objection are determined by the appointed expert.
In December 2007, ICANN sought "Expressions of Interest from Potential Dispute Resolution Service Providers for [its] New gTLD Program." In January 2008, the WIPO Center signaled its readiness to assist ICANN in devising and applying appropriate trademark-based dispute resolution procedures for New gTLDs. From that time, using the WIPO "Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet" as a foundation, the WIPO Center has collaborated with ICANN on the development of substantive criteria and procedural rules for pre-(TLD) delegation dispute resolution for trademark-based Legal Rights Objections as set out in module 3.5.2 of the ICANN Applicant Guidebook. The WIPO Center subsequently accepted to administer disputes under the ICANN Legal Rights Objection Procedure; the ICANN Applicant Guidebook includes the resulting WIPO Rules for New gTLD Dispute Resolution including a Schedule of Fees and Costs.
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.
WIPO has been engaging with Alternative Dispute Resolution (ADR) for the Domain Name System (DNS) since it conducted the First WIPO Internet Domain Name Process in 1998 and 1999, which provided the blueprint for ICANN’s adoption of the UDRP. With a globally unique range of jurisprudential resources, the WIPO Arbitration and Mediation Center is the leading provider of UDRP case administration services; through 2011, it has processed over 22,000 such cases. The Center furthermore has engaged in a range of further activities such as Sunrises, ccTLD policy advice and case administration, and policy input for New gTLDs.
For more information about the Legal Rights Objection procedure, please direct any inquiries by email to lro@wipo.int, or by telephone to +41 22 338 8247 or (toll free) 0800 888 549. More detailed information can be found in the ICANN Applicant Guidebook.
| Arbitration and Mediation Center Geneva |
Arbitration and Mediation Center Singapore |
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