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ICANN has recently appointed the World Intellectual Property Organization (WIPO)
to be the exclusive provider of dispute resolution services when a
third party files a formal "Legal Rights Objection" or
"LRO" to a pending application under the new gTLD
program.
In assessing the validity of an LRO, the WIPO panel will decide
whether the applied-for gTLD (i) takes unfair advantage of the
unique character or the reputation of the objector's registered
or unregistered trademark, intergovernmental organization (IGO)
name or acronym, or (ii) without justification, the gTLD
impairs the distinctive character or the reputation of the
objector's mark, IGO name or acronym, or (iii) creates
an impermissible likelihood of confusion between the applied-for
gTLD and the objector's mark, IGO name or acronym.
For objections based on registered or unregistered trademark
rights, WIPO has indicated that the following factors will be
considered by the appointed panel:
Whether the applied-for gTLD is identical or similar, including
in appearance, phonetic sound, or meaning, to the objector's
existing mark;
Whether the objector's acquisition and use of rights in the
mark has been bona fide;
Whether and to what extent there is recognition in the relevant
sector of the public of the sign corresponding to the gTLD, as the
mark of the objector, of the applicant or of a third party;
Applicant's intent in applying for the gTLD, including
whether the applicant, at the time of application for the gTLD, had
knowledge of the objector's mark, or could not have reasonably
been unaware of that mark, and including whether the applicant has
engaged in a pattern of conduct whereby it applied for or operates
TLDs or registrations in TLDs which are identical or confusingly
similar to the marks of others;
Whether and to what extent the applicant has used, or has made
demonstrable preparations to use, the sign corresponding to the
gTLD in connection with a bona fide offering of goods or services
or a bona fide provision of information in a way that does not
interfere with the legitimate exercise by the objector of its mark
rights;
Whether the applicant has marks or other intellectual property
rights in the sign corresponding to the gTLD, and, if so, whether
any acquisition of such a right in the sign, and use of the sign,
has been bonafide, and whether the purported or
likely use of the gTLD by the applicant is consistent with such
acquisition or use;
Whether and to what extent the applicant has been commonly
known by the sign corresponding to the gTLD, and if so, whether any
purported or likely use of the gTLD by the applicant is consistent
therewith and bona fide; and
Whether the applicant's intended use of the gTLD would
create a likelihood of confusion with the objector's mark as to
the source, sponsorship, affiliation, or endorsement of the
gTLD.
The fees associated with the LRO process are far higher than
those associated with a standard complaint pursuant to the Uniform
Domain Name Resolution Policy (UDRP). In an LRO proceeding, each
party must pay a $10,000 fee for arbitration by a
single-member panel. If the applicant fails to pay the $10,000 fee
required to respond to the LRO complaint, the objection will be
deemed successful. Similar to the UDRP process, monetary damages
are not available in an LRO proceeding. The sole remedies are the
success or dismissal of the objection.
Currently, the LRO objection filing period is anticipated to be
seven months, from May 1 to December 1, 2012.
In addition to the LRO process, three other types of
objection-based dispute resolution procedures exist which will not
be administered by WIPO, namely, "String Confusion
Objection," "Limited Public Interest Objection," and
"Community Objection." A detailed look at these three
additional dispute resolution procedures is available here.
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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