Between June 2012 and March 2013, trademark holders could file objections to new generic top-level domains applications before the World Intellectual Property Organization (WIPO). Overall, 69 objections have been filed, among which only six were not achieved.
The rulings were made by 49 experts, well-known for their consistency and expertise, and decisions were taken by panels of one or three experts. They based their ruling on the gTLDs Applicant’s Guidebook available here. For an objection to be upheld, it had to prove that the applied-for gTLD:
- Took unfair advantage of the distinctive character or the reputation of the sign, or
- Unjustifiably impaired the distinctive character or the reputation of the sign, or
- Otherwise created an impermissible likelihood of confusion with the sign.
According to Erik Wilbers, director of WIPO Arbitration and Mediation Center, “this test reflects the particular dynamics of the use of trademarks on the internet”.
The signs used as a basis for the objection could either be a trademark or a name or acronym of an Intergovernmental Organization (IGO). However, objections were won only where there was proof of substantial use of the early sign. As a result, experts rejected objections based on trademarks, registered only as a means of blocking an application. The objector’s good faith was therefore a determining criterion for experts.
Half the cases were filed by complainants in the United States, and two thirds were filed by another applicant to the same string. The report further states that most of the objections were related to common words registered as trademarks, such as <.home> or <.music>. According to the report, the <.direct> gTLD was applied-for with the sole purpose of infringing the rights of “The DirecTV Group”. Hence, the experts upheld the objection.
Overall, only four objections have led to the revocation of applications for new gTLDs.
Although mediation procedures and hearings were provided for by the Applicant’s Guidebook, they have not been used during the objection procedures.
The existence of the pre-delegation Legal Rights Objections mechanism, including published decision criteria and consideration factors, has prevented a number of potentially improper gTLD applications from being made.
The WIPO report is available here.