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02.19.2013 | IP Alert: You Must Start Your Campaign to Complain About a Generic Top Level Domain by March 13
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YOU MUST START YOUR CAMPAIGN TO COMPLAIN ABOUT A GENERIC TOP LEVEL DOMAIN BY MARCH 13



The window for objecting to the approximately 1,900 new Generic Top Level Domain (gTLD) applications that are being considered for introduction to the Internet domain name system closes on March 13, 2013. The objection mechanism is an inter partes process adjudicated by dispute resolution service providers. Filing an objection will trigger the formal dispute resolution process between the gTLD applicant and the objector and, if sustained, will prevent the applied-for gTLD from being introduced.  

Brand owners should review the list of applied-for gTLDs (found on ICANN’s website here) and consider objecting before the March 13 deadline. To file an objection, a party must have standing based on one of the following four grounds:
 
  • Legal Rights Objection: The holder of a trademark or other legal right has standing to file a legal rights objection when the applied-for gTLD string violates or infringes the legal rights of the objector. Parties filing a legal rights objection will file the objection with the World Intellectual Property Organization (WIPO). Additional information can be found here on WIPO’s website.
  • String Confusion Objection: Existing TLD operators or gTLD applicants from the current round of applications may lodge a string confusion objection when the applied-for gTLD string is confusingly similar to the objector’s existing TLD or applied-for gTLD string. Parties filing string confusion objections will file with the International Centre for Dispute Resolution (ICDR). Additional information can be found here at the ICDR website.
  • Limited Public Interest Objection: A party may file a limited public interest objection if the party believes the applied-for gTLD string is contrary to generally accepted legal norms of morality and public order. Parties should file limited public interest objections with the International Center of Expertise of the International Chamber of Commerce (ICC). Additional information can be found here on the ICC website.
  • Community Objection: Established institutions associated with clearly defined communities can file a community objection if there is substantial opposition to the gTLD application from a significant portion of the community targeted by the gTLD string. Like limited public interest objections, a party filing a community objection will file the objection with the ICC. Additional information can be found here on ICC’s website.

Objections should be filed electronically through the respective dispute resolution service provider. The objection must be in English and must be the lesser of 5,000 words or 20 pages. Additionally, the objection should include the following information:
 
  • The objector’s name and contact information;
  • A statement of why the objector meets the standing requirements;
  • A description of the basis of the objection, including a statement giving the grounds on which the objector is objecting and a detailed explanation of the validity of the objection;
  • Copies of any supporting documents; and
  • Initial filing and administrative fees.

When considering whether to file an objection, parties should take into account the economics of the objection process. The objector must pay initial filing and administrative fees with the objection, ranging from approximately $3000 to $7000 depending on the type of objection and the dispute resolution service provider. The gTLD applicant must also pay filing and administrative fees when responding to the objection. Once the objection proceeds to the dispute resolution panel, the panel will estimate its fees for proceeding to resolution. Both parties – the objector and the responding gTLD applicant – must pay the full cost upfront, with the successful party receiving a refund upon resolution. Depending on the type of objection and the particular dispute resolution panel, these fees may range from approximately $8000 to $23,000.  Given the “loser pays all” format of the objection process, potential objectors should carefully consider factors such as budget, strength of the objection and strategy before filing an objection.
 
Additional objection requirements and specific fee schedules are outlined at each dispute resolution provider’s website, and the full objection filing procedure is outlined in sections 3.2 and 3.3 of the Applicant Guidebook, found here.
 
Please feel free to direct questions to Richard Stockton (rstockton@bannerwitcoff.com), Victoria Webb (vwebb@bannerwitcoff.com), or other Banner & Witcoff attorneys. 
 
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