How to dispute a new gTLD application

Posted On July 18, 2012
In Domain Names, Trade Marks in Cyberspace / Reply

ICANN announced on 13 June 2012 that it had received 1930 applications in the first round of the new gTLD program. The program includes mechanisms for disputing the grant of a gTLD.

As Mintz Levin neatly summarized, there are four bases for submitting a formal objection:

String Confusion Objection:  The applied-for gTLD string is confusingly similar to an existing TLD or to another applied for gTLD string in the same round of applications.  Disputes involving string contention objections will be administered by the International Centre for Dispute Resolution (ICDR).  Who has standing to raise a string confusion objection?  Only an existing operator of a top level domain or another gTLD applicant in the same application round.

Legal Rights Objection:  The applied-for gTLD string infringes the existing legal rights of the objector.  Disputes involving legal rights objections will be administered by the World Intellectual Property Organization (WIPO).  The only parties with standing to raise a legal rights objection are “rightholders” (i.e., trademark owners) and this category is generally considered to be the vehicle by which a party can address trademark infringement claims arising from a new gTLD application.

Limited Public Interest Objection:  The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.  Disputes involving limited public interest objections will be administered by the International Center for Expertise of the International Chamber of Commerce (ICC Center). Anyone can file an objection.  ICANN has stated, however, that limited public interest objections (unlike string contention or legal rights objections) are subject to a “quick look” review “designed to filter out frivolous and/or abusive objections.

Community Objection:  There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted.  Disputes involving community objections will be administered by the ICC Centre subject to the same fees set forth above.  Only an “established institution associated with a clearly defined community” has standing to file a community objection.


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