As of July 25th, WIPO has rejected all of the first 14 Legal Rights Objections (LRO) filed in response to applications for the registration of new generic Top Level Domains (gTLDs). While there are still over 50 Objections yet to be decided, the rejection of all the objections so far have some commentators beginning to question the effectiveness of the process.
Background
The World Intellectual Property Organization (WIPO) is a specialized UN agency focused on intellectual property. It operates an alternative dispute resolution (ADR) process for a variety of intellectual property disputes that may arise internationally, including disputes related to patents, copyrights, and trade-marks. WIPO also handles disputes related to the registration of domain names for the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is an American non-profit that manages IP addressing and domain name registration for the internet, essentially organizing every device and website that can be connected to over the internet. In 2011, ICANN decided to open up registration of new gTLDs. (More coverage by the IPilogue on this topic can be found here, here, here, and here.)
The Decisions So Far
For a successful LRO, the objector must prove on a balance of probabilities that the applied-for gTLD infringes an established legal right. (See the gTLD Applicant Guidebook, Module 3.5.2.) In doing so, there are two steps that need to be completed - first the objector must establish a legal right, and second the objector must demonstrate the proposed gTLD will infringe that right. Given the nature of domain names, trade-marks have been the only established rights currently used to challenge a proposed gTLD. The objections so far have been rejected for either failing to establish an existing right, or failing to demonstrate infringement of an established right.
Failing to Establish a Legal Right
These decisions involve a number of firms that seem to have applied for trade-mark registration for the purpose of objecting to gTLD applications, as in the case of Defender Security Company - an entity that objected to an application by a wholly-owned subsidiary of Google to register ".home". The panel ruled,
“The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced.”
The US Postal Service (USPS) had a similar issue when objecting to Amazon's registration of .mail, as the USPS owns a trade-mark for "U.S. Mail", but not the word "mail". Some commended these early decisions ruling there was no established right as bringing clarity and predictability to the process, while strongly rejecting any perceived abuses of the objection system.
Failing to Establish Infringement
The more controversial rejected objections have been those where the objector had a clearly established trade-mark, but failed to show the proposed gTLD would infringe their right. A legal analyst at Bloomberg cites Right at Home v. Johnson Shareholdings Inc. and Express LLC v. Sea Sunset LLC as setting two precedents that will make it difficult to launch a successful trade-mark based LRO. Critics argue the panelist in Right at Home sets an exceedingly high burden for demonstrating infringement that would justify an objection. It is also argued that Express LLC reinforces that the registration of a mark for a common English word is insufficient to block a proposed gTLD. It is possible that these decisions and their subsequent endorsement make it almost impossible for an objector with a valid established right to successfully challenge a proposed gTLD.
Going Forward
If these legal commentators are correct, it will be all but impossible for mark holders to successfully challenge gTLD registrations. As a result, any further objections will have to be filed through the pre-existing Uniform Domain Name Dispute Resolution Policy on a domain-by-domain basis, where panelists will decide if a specific URL infringes a trade-mark. Given the good track record of success by many rights holders using this process, the same commentators believe this will be the true mechanism for objectors to protect their intellectual property. Even with the complete shut-out of objectors, it is still too early to completely dismiss a successful LRO, and perhaps one of the outstanding 50 will set a precedent for what a successful LRO looks like.
Alex Buonassisi is an IPilogue Editor and a JD Candidate at Thompson Rivers University.