WIPO and the New gTLDs : Determinations in 69 Cases Reviewed and Summarised

 Sally Cooper has been busy over her Christmas holidays

Whenever I’m reading anything to do with (ownership of) Domain Names, it’s not long before I’m reminded 

Communication before new gtld

of the military man who interrupted his talk on the role of combat aircraft with a rueful grin and “I’m afraid the RAF is an ARE – Acronym Rich Environment“. This happened again whilst I was reading (scrolling through) the Report of the WIPO Arbitration and Mediation Centre : End Report on Legal Rights Objections Procedure 2013.

Why was I doing this ? After all, my practice is still concerned with small businesses which (likely as not) will say

“I’ve got the Domain Name – why should I pay to register a trade mark ?"

What interest might I have in a Report that reviews the (success or otherwise) of formal objections to applications for New gTLDs ? I think the answer lies in the Introduction : this was not only a Report providing a historical and statistical overview, but also a Report

“to help inform future domain name dispute resolution practices and determinations“ (emphasis supplied). 

In a nutshell, I was curious. The Report itself comprises 14 pages : there are then 9 Annexes covering 127 pages (and much can be gained from reading only Annexe 9 which puts forward and answers 24 Frequently Asked Questions).

What did I learn ? For me, a Trade Mark Attorney, the “pages to keep” are :

• - FAQ 3 which puts forward the question “What criteria will [a WIPO panel] use to determine the outcome of a Legal Rights Objection ?“ then (i) a subdivision “For an objection based on trademark rights, the panel will consider the following non exclusive consideration factors“ and (ii) a list of 8 factors (with “bona fide” being appearing 5 times in the text of these 8 factors, and “registered trade mark” appearing not at all)
• - Annexe 1 which lists the 69 gTLDs applied for / identifies the 59 cases in which Objections filed by third parties were rejected (and also lists (i) the six Applications for .axis .gcc .goo .mail and .zone terminated prior to determinations of WIPO panels, and (ii) the four Applications for .delmonte .direct .weibo and .[Chinese characters] upheld in determinations of WIPO panels)
• - Paragraph 6.3 on Page 12 of the Report (titled “Evaluation“) which provides a summary of findings.

In paragraph 6.3 are findings (here taken out of order) that :

• - “Although this remains a matter for speculation, it appears reasonable to presume that the existence itself of the pre-delegation Legal Rights Objection mechanism …… may have prevented a number of potentially improper gTLD applications from being made”
•  - “A minority of applicants in Legal Rights Objection proceedings asserted and evidenced registered rights in support of their application and response” 
• - “An overwhelming majority of legal rights objections were filed against applications for gTLD strings with descriptive or dictionary meaning” 
• - “Especially in connection with dictionary terms, [WIPO panels] considered potential for infringement as such to be an insufficient basis to halt the application”
•  - “In a number of cases, [WIPO panels] recorded their presumption that the objector would monitor activity within a new gTLD with a view to possible further action” 

At the end of the day, whilst there’s plenty for the Trade Mark Attorney to ponder in these findings, there are two further extracts that are more likely to justify the “pages to keep” remaining on my desk : these are (also paragraph 6.3):

(1) “where a trademark owner has adopted a common dictionary term as a trademark, a gTLD application intended to take advantage of such common meaning would not as such violate the dispute resolution standards for Legal Rights Objections”, and
 (2) [WIPO panels] in a number of their determinations noted “that asserted trademark registrations were primarily obtained for the purpose of supporting an application for a new gTLD application and / or legal rights objection, with little or no demonstrable prior use”.

Reminders, surely, for all Trade Mark Attorneys that the best investment when it comes to registering a trade mark is in (1) an invented word (i.e. not descriptive or with dictionary meaning) which (2) the Applicant is using or has a bona fide intention to use.

Overall, the conclusion I’ve come to is that WIPO might aspire “to help inform future domain name dispute resolution practices and determinations” but, in all probability, these practices and determinations will be those only of the New gTLDs. More background from WIPO here

Curiosity is now satisfied. If you disagree – there’s always the “Comment” box !