Trevor Little

While the overriding concern in the trademark industry is infringement at the second level of new gTLDs, ICANN’s recent opening of a consultation on defensive registrations suggests that worries about top level cybersquatting persist. To address this, WIPO has released more details of the legal rights objection process.

The organisation has been appointed by ICANN as the exclusive provider of dispute resolution services for trademark-based ‘pre-delegation’ legal rights objections for the new gTLDs regime, which essentially allows organisations to oppose any new gTLD on the basis that delegation and use of the applied-for string would be likely to infringe their rights.

While the costs are not insignificant, they potentially offer a more cost-effective option than defensive registrations or later litigation. For a case involving an objection to one application/gTLD, to be decided by one expert, the fee is $10,000 for each party. This includes a non-refundable $2,000 administration fee, which is subject to a refund of the expert fee ($8,000) to the prevailing party. Different fee arrangements apply to three-member panels (full details are accessible here).

When quizzed by WTR about how these fees levels were calculated, Brian Beckham, of the organisation’s legal development section, explained: “We have sought to keep the costs for rights holders as low as responsibly possible on a cost-recovery basis, reflecting an assessment of extensive WIPO experience in administration of UDRP, mediation, and arbitration cases (which WIPO administers on a not-for-profit basis). The WIPO administration part of the fee is modest given the nature of the mechanism. The overwhelming majority of the fee goes to the panel of experts for their substantive evaluation. Overall, then, this is a system that is priced to deliver real cost advantages and efficiency gains for all stakeholders over litigating these types of disputes through the courts.”

Beckham stresses that WIPO is well positioned to take on the role of administering the legal rights objection process, given its experience in offering dispute resolution services: “The cornerstone example of this expertise is the WIPO-recommended Uniform Domain Name Dispute Resolution Policy (UDRP), under which the WIPO Center has processed some 23,000 cases to date, for parties around the world.”

For users, he argues that WIPO’s appointment as exclusive administrator should mean that “concerns about forum shopping and certain less desirable provider practices will not be an issue (as is sometimes suggested with respect to the UDRP)”.

Of course, there will also be benefit to WIPO. While operating the scheme on a cost recovery basis, he notes: “From the WIPO Center’s perspective, the provision of such case administration services helps to inform our policy positions, and vice versa.  As with the UDRP, the WIPO Center is in this for the system, to provide cost-effective, workable alternatives to court options.”  

While brand owners wait for May’s announcement of the gTLD applications made in the first round, WIPO is similarly in the dark about the current level of interest, and how this might impact the level of legal rights objections. Beckham admits: “It is difficult to estimate the potential volume of disputes at this point. This may depend on factors such as the number and types of applications, and ICANN has not provided any specific indication as to either of these factors. Additionally, ICANN is still to clarify certain aspects of its application processing. For example, they appear to be considering a methodology for batching applications, which may have implications for legal rights objections case administration, including any consolidation scenarios. In any event, while we hope rights owners will not need to resort to this procedure, the WIPO Center stands ready to administer whatever volume of cases may be filed.”

Additional information on the legal rights objection process is available via the WIPO site here.

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