[bc-gnso] ICANN Names WIPO as Exclusive Arbitrator of Legal Rights Objections to New gTLDs – But When Will ICANN Begin Work on Implementation Details of the URS?

[Phil Corwin <psc@xxxxxxxxxxx>]

FYI -- http://internetcommerce.org/WIPO_LRO

ICANN Names WIPO as Exclusive Arbitrator of Legal Rights Objections to New 
gTLDs – But When Will ICANN Begin Work on Implementation Details of the URS?
Submitted by Philip Corwin on Fri, 02/17/2012 - 20:15
ICANN has designated the World Intellectual Property Organization (WIPO) as the 
exclusive provider of arbitration services to resolve disputes when a Legal 
Rights Objection (LRO) is lodged against a proposed new gTLD. An LRO can be 
lodged by a trademark owner or intergovernmental organization when an 
applied-for gTLD would be likely to infringe the objector’s existing trademark, 
or IGO name or acronym.
As noted in WIPO’s explanation of its LRO arbitration role (available at 
http://www.wipo.int/amc/en/domains/lro/), this is but one of several new 
objections that can be raised by various parties against a proposed new gTLD:
To address potential disputes over new gTLD applications, ICANN offers three 
other types of pre-delegation objection-based dispute resolution procedures 
which are not administered by WIPO, namely, “String Confusion Objection,” 
“Limited Public Interest Objection,” and “Community Objection.” For the latter 
two types of objections, ICANN is also making available an “Independent 
Objector” by way of public service. ICANN has furthermore established a process 
for the ICANN Governmental Advisory Committee (GAC) to provide “GAC Advice on 
New gTLDs” concerning applications identified by governments as problematic.
LRO disputes will generally be decided by a single expert, unless the parties 
to the dispute agree on a 3-member panel. In either case, the panel will 
determine whether the potential use of the applied-for gTLD by the applicant:
• takes unfair advantage of the distinctive character or the reputation of the 
objector’s registered or unregistered trademark or service mark (“mark”) or IGO 
name or acronym,
• unjustifiably impairs the distinctive character or the reputation of the 
objector’s mark or IGO name or acronym, or
• otherwise creates an impermissible likelihood of confusion between the 
applied-for gTLD and the objector’s mark or IGO name or acronym.
In a single expert proceeding, each party will pay a $10,000 fee. Of that fee, 
$2,000 from each party will go to WIPO to cover administrative costs; the 
prevailing party will receive an $8,000 refund, with that amount being charged 
to the losing party for the expert’s fee. ICANN is obliged to accept WIPO’s LRO 
determinations.
We believe it is reasonable for ICANN to select a single provider of LRO 
dispute resolution services as the likely number of cases should be limited. 
Notwithstanding the pre-launch concerns voiced by some trademark interests, 
it’s likely that the multiple types of objections that can be raised against 
new gTLDs, as well as the prospect of losing an $185,000 application fee and 
other considerable preparatory costs, will likely keep such disputes to a 
minimum.
As noted, the LRO and other objection processes are pre-delegation remedies, 
and once a new gTLD actually launches it is subject to additional rights 
protection mechanisms. They are described by WIPO as follows:
Beyond the above-described pre-delegation objection procedures (available prior 
to any new gTLD being approved and becoming operational), ICANN has established 
a range of “Rights Protection Mechanisms” (RPMs). These include a Trademark 
Clearinghouse (for use in connection with Sunrise periods and Trademark Claims 
services), a Uniform Rapid Suspension system (URS), and a Post-Delegation 
Dispute Resolution Procedure (PDDRP). In addition, the existing Uniform Domain 
Name Dispute Resolution Policy (UDRP<http://www.icann.org/en/udrp/udrp.htm>) 
will be applicable to all new gTLDs. More information on these RPMs can be 
found in the WIPO Center’s overview of Trademark Rights Protection Mechanisms 
for New gTLDs<http://www.wipo.int/amc/en/domains/lro/>.
ICA has been participating in and monitoring the work of the Implementation 
Advisory Group (IAG) for the Trademark Clearinghouse (TMC), which has been 
dealing with technical and process issues arising from the creation of a large 
global database of protected marks.
However, ICANN is woefully behind on developing the implementation details for 
Uniform Rapid Suspension (URS), the expedited supplement to the UDRP that is of 
most relevance and concern to domain registrants and portfolio owners. ICANN 
staff had indicated at the Dakar meeting that a URS IAG would be launched 
within a month after that October 2011 gathering, but more than a quarter year 
later we have yet to see any progress on this front.
That unexplained delay may well be due to ICANN’s implausible promise to 
trademark owners that the URS would carry a fee of only $300 for objections to 
one or more domains held by the same registrant. ICA consistently questioned 
whether any credible due process could be provided at such a bargain basement 
price. Both WIPO and the National Arbitration Forum NAF have publicly stated 
that, with IP attorney arbitrator fees averaging $650 per hour, there is no way 
they can procure the services of credible experts at that price, much less 
cover their own administrative costs. In this regard we note that that Rapid 
Evaluation Service (RES), now available for suspension of infringing .xxx 
domains exclusively through NAF, carries the same price tag as a UDRP - $1200.
If an implementation process for URS has not been announced by the time of the 
ICANN meeting in San Jose, Costa Rica next month, ICA will be asking ICANN’s 
Board and staff to explain the delay, and ask when steps will be taken to 
assure that the URS is a credible process affording adequate due process to 
domain registrants. We will also continue to insist that any URS provider be 
placed under a standard binding contract that sets forth the extent of its 
powers and provides ICANN with flexible and escalating enforcement tools, and 
that protections are included to prevent forum shopping if more than one URS 
provider is designated.
And, needless to say, ICA will participate in the URS IAG once it is initiated 
to assure that this new process is fair to registrants and is truly a limited 
supplement to, and not a broad substitute for, the UDRP.


Philip S. Corwin, Founding Principal
Virtualaw LLC
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Suite 1050
Washington, DC 20004
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Twitter: @VlawDC

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