Canada: Opposition Window For gTLDs Closing In March, TM Reservation Process Gearing Up

Last Updated: March 5 2013
Article by Reed Taubner

SUMMARY

Two important milestones are on the horizon for the domain name system expansion now underway, with implications for brand owners.

On March 13, the opposition period during which brand owners can object to applications for a new gTLD is closing. (A gTLD is the final element of a web address, such as ".com" or ".org"). Brand owners concerned about potentially conflicting gTLDs should review the list of applications available at http://gtldresult.icann.org/application-result/applicationstatus to assess whether they should commence opposition proceedings.

Regulators are also planning to launch the Trademark Clearinghouse, a central repository designed to help brand owners protect their marks from cyber squatting and other abuses when the new gTLDs come online. Brand owners interested in policing their marks on the new gTLDs should begin preparations for authenticating marks with the Clearinghouse, which is slated to come online on March 26.

OPPOSITION PERIOD (www.domain.gtld)

What is this?

GTLD oppositions are different than other types of domain name disputes businesses have routinely pursued against cyber squatters in recent years. Whereas typical domain disputes involve domain names on the "second level" (i.e., www.domain.com), gTLD oppositions concern the "top level" (i.e., www.domain.gtld).

The organization responsible for administering the domain name system, ICANN, is currently processing 1,916 applications for new gTLDs, which include both brand names such as *.oldnavy, as well as generic terms like *.wedding. The current opposition period offers concerned third parties the opportunity to oppose the delegation of applied-for gTLDs.

The grounds of opposition:

There are several potential grounds of opposition (e.g., generally accepted norms of morality), but most brand owners concerned about an applied-for gTLD will seek relief on the grounds that the applicant's choice of gTLD violates the brand owner's legal rights, such as its trade-mark rights.

The legal rights ground of objection covers both registered and unregistered trade-marks. A gTLD is considered to violate an opponent's trade-mark rights if it:

  • Takes unfair advantage of the distinctive character or reputation of the opponent's mark;
  • Unjustifiably impairs the distinctive character or the reputation of the opponent's mark; or
  • Otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the opponent's mark.

Oppositions will be administered by the World Intellectual Property Organization (WIPO), and decided by an independent panel. In reaching its decision, the panel will take into consideration many of the factors typically seen in trade-mark confusion analyses, including the degree of resemblance between the opponent's mark and the applied-for gTLD, and the extent to which the opponent's mark is known. The panel will also examine the applicant's intentions, including whether the applicant ought to have known of the opponent's mark, and whether the applicant possesses any legal rights to the mark the applicant has applied-for as a gTLD.  

Procedure and cost:

Opponents must file their objections electronically with WIPO by March 13, 2013, after which WIPO envisions the following timeline:

  • Applicants notified of disputes: Mid-April
  • Applicants' responses due: Mid-May (30 days after receiving notice)
  • Panel decisions issue: August

Oppositions will typically involve a single round of written pleadings, with hearings held only in exceptional cases. The cost of commencing an opposition will generally be $10,000 US per application, due on filing. However, the prevailing party will see $8,000 US of this amount refunded.

It should be noted that while oppositions offer a relatively expedient means of dispute resolution, brand owners are not precluded from attempting to seek relief from the courts.  

TRADEMARK CLEARINGHOUSE (www.domain.gtld)

What is this?

The Clearinghouse is a protection mechanism available to brand owners that is entirely separate from opposition proceedings. The Clearinghouse is intended to help address potential conflicts between trade-marks and the second-level domains that will eventually be created on the new gTLDs, once the new gTLDs go live (www.domain.gtld).

In essence, the Clearinghouse will be a trade-mark repository permitting brand owners to authenticate their marks in order to better monitor and police their use as second-level domain names on the new gTLDs. It should be noted, however, that authenticating trade-marks with the Clearinghouse will not create legal rights, or an entitlement to register a given trade-mark as a domain name on a given gTLD; conflicts will still be possible (e.g., two brand owners with legal rights to the same mark in their respective jurisdictions both authenticate their home registrations with the Clearinghouse in order to register the mark as a domain name on the same gTLD). 

What are the benefits of authenticating marks?

Authenticating trade-marks with the Clearinghouse offers brand owners several distinct advantages:

Trade-mark reservation: Each time a new gTLD goes live, its operator will be obliged to conduct a sunrise period of at least 30 days during which brand owners may request registration of their Clearinghouse authenticated trade-marks as domain names (which would remove the mark from the pool of possible domain names on that gTLD). Each new gTLD will conduct its own sunrise period individually: therefore, brand owners planning to register their marks on all new gTLDs face the prospect of participating in a large number of sunrise periods (the total depends on the number of new gTLDs that are ultimately approved). ICANN is currently working on a way of communicating the start dates of the various sunrise periods to brand owners.  

Notice of conflicting domain names: Brand owners with authenticated marks will be entitled to certain notifications of potential conflicts.

  • First, during a given gTLD's sunrise period, the owner of an authenticated mark must be given notice if a third party seeks a sunrise registration for a domain name that is identical to the mark.
  • Following the sunrise reservation period, for at least the first 60 days of open registration on a new gTLD, an applicant requesting registration of a domain name identical to an authenticated mark will receive notice of the potential conflict, requiring the applicant to confirm that their use of the applied-for domain name will not infringe on the brand owner's rights. Once the applicant does so, and the requested domain name is granted, the owner of the authenticated mark will receive notice of the registration.    

Domain name complaints: In addition to the start-up rights protection measures described above (which may eventually expire following the launch of a gTLD), new gTLDs will also be required to implement longer term protection measures, including a rapid suspension procedure for clearly infringing domain name registrations. Authenticating marks (and filing evidence of their use) with the Clearinghouse will provide brand owners a convenient way of establishing their trade-mark rights in order to raise complaints under this procedure.

Procedure and cost:

Brand owners will be able to file various types of trade-marks (with various forms of supporting documentation) with the Clearinghouse, including:

  • Nationally registered word marks —  e.g., brand owner files a Canadian reg. certificate (or relevant registration particulars).
  • Regionally registered word marks  —  e.g., brand owner files a copy of a European Community reg. certificate (or relevant registration particulars).
  • Judicially validated work marks —  e.g., brand owner files documents properly entered by a court evidencing the validation of a common law mark.
  • Word mark recognized by treaty — e.g., an organization responsible for administering a geographic indication files a copy of the treaty provision that extends trade-mark protection to said geographic indication, with evidence of the provision's effective date.

Trade-marks that have merely been applied-for, as well as registrations that have been expunged, are not eligible for inclusion in the Clearinghouse.

It will not be necessary to provide evidence of use to include a trade-mark in the Clearinghouse; however, for brand owners relying on national or regional trade-mark registrations, filing evidence of use will be a pre-requisite for participating in the new gTLDs' sunrise periods, when brand owners will be able to request early registration of their authenticated marks as domain names. (Brand owners relying on national or regional trade-mark registrations without evidence of use will still be entitled to receive notice of potentially conflicting domain name registrations for at least the first 60 days of open registration following the sunrise period, as described above). Filing evidence of use with the Clearinghouse will also be helpful after these start-up protection mechanisms have concluded, as brand owners will be able to use this evidence to ground complaints made under the rapid suspension procedure.

Evidence of use will consist of (1) a signed declaration asserting use; and (2) one specimen showing how the mark is currently used in the marketplace, such as a tag, label, brochure, or advertising specimen.

The basic cost of including a single trade-mark with the Clearinghouse is: $150 US for a one-year registration; $435 US for a three-year registration; and $725 US for a five-year registration. Where brand owners only wish to include a small number of trade-marks in the Clearinghouse (10 marks or fewer), these fees will be payable via credit card. Where brand owners wish to include a greater number of registrations, they will have set up a prepayment account. Significant volume discounts will be available to those requesting the inclusion of large numbers of marks in the Clearinghouse. Therefore, third-party service providers may be able to offer authentication with the Clearinghouse at lower prices than brand owners could themselves obtain. 

MORE INFORMATION

ICANN's plans for deploying the new gTLDs are evolving on an ongoing basis. As such, the information provided above is subject to change. Please contact your Gowlings professional for more information.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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