Monthly Archives: February 2012

Risks And Benefits Analysis Of ICANN’s New GTLDs Registrations

The Internet Corporation for Assigned Names and Numbers (ICANN) is presently handling a very crucial development in the field of domain registrations. Till now various stakeholders are well aware that ICANN’s new generic top level domain names (new GTLDs) registration has begun. In fact, as per media reports, more than 100 applicants have already applied for new GTLDs to ICANN.

There would be many more applicants that would apply to ICANN in this regard. However, before applying the applicants must undertake a risks and benefits analysis of ICANN’s new GTLDs registrations. This is more so for small companies and organisations that may find it troublesome if the US $ 1, 85,000 application money is lost due to defective, premature or haste filing of an application.

Thus, not only a risk and benefit analysis is required but the new GTLD applicants must undertake due diligence before applying as well. The applicants must analyse the benefits of investing huge amount in getting a GTLD and how far they can commercialise it. A cost benefit analysis must be preformed beforehand that may justify the capital investment in new GTLDs.

However, of all the homework, the most important one is to make a proper application as an improper application may result in its rejection and wasting of large amount of money. Further, improper application, without background research and due diligence, can also result in subsequent filing of legal objections by other individuals and organisations claiming violation of various rights and intellectual property rights (IPRs), including trademark infringements.

The applicants must make a techno legal analysis, new GTLDs due diligence, anticipate possible legal rights objections under ICANN’s new GTLD program, etc. The legal issues of new GTLDs application, their registration and subsequent litigations would surface and a sound strategy in this regard can help in minimising the legal risks associated with the same.

Legal Rights Objections Under ICANN’s New GTLD Domain Registration Program

Internet Corporation for Assigned Names and Numbers (ICANN) has proposed registration of new generic top level domain names (new GTLDs) in the past. In order to comply with that proposal, ICANN’s new generic top level domain names (new GTLDs) registration has begun.

There is a time limit within which the applicants must apply for a new GTLD. The new GTLDs application process has already been initiated from 12 January 2012 and it would conclude on 29th March 2012. As on 12-02-2012, the applicants have 46 more days to apply for new GTLDs.

However, in the zest of applying to new GTLDs, the applicants must not forget to do their home works properly. Perry4Law and Perry4Law Techno Legal Base (PTLB) recommend a prior and thorough risks and benefits analysis of applying to new GTLDs registration to ICANN. This should include techno legal analysis, new GTLDs due diligence, possible Legal Rights Objections under ICANN’s New GTLD scheme, etc.

In this work we are analysing the Legal Rights Objections part of the new GTLDs registration procedure of ICANN. Prior to ICANN’s approval of a new GTLD, third parties may file a formal objection to an application on several grounds, including, for trademark owners and Intergovernmental Organisations (IGOs), on the basis of a “Legal Rights Objection.”

When such an objection is filed, an independent panel (comprised of one or three external, neutral experts) will determine whether the applicant’s potential use of the applied-for GTLD would be likely to infringe the objector’s existing trademark, or IGO name or acronym.

To address potential disputes over new GTLD applications, ICANN offers three other types of pre-delegation objection-based dispute resolution procedures. These are “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.

The independent panel constituted for resolution of Legal Rights Objection will determine whether the potential use of the applied-for GTLD by the applicant:

(i) 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, or

(ii) Unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or

(iii) Otherwise creates an impermissible likelihood of confusion between the applied-for GTLD and the objector’s mark or IGO name or acronym.

The panel will ordinarily determine the merits of the objection based solely on the parties’ pleadings, and may make reference to a range of non-exclusive consideration factors.

For an objection based on trademark rights, the panel will consider the following non exclusive consideration factors:

(i) Whether the applied-for GTLD is identical or similar, including in appearance, phonetic sound, or meaning, to the objector’s existing mark.

(ii) Whether the objector’s acquisition and use of rights in the mark has been bona fide.

(iii) Whether and to what extent there is recognition in the relevant sector of the public of the sign corresponding to the GTLD, as the mark of the objector, of the applicant or of a third party.

(iv) Applicant’s intent in applying for the GTLD, including whether the applicant, at the time of application for the GTLD, had knowledge of the objector’s mark, or could not have reasonably been unaware of that mark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.

(v) Whether and to what extent the applicant has used, or has made demonstrable preparations to use, the sign corresponding to the GTLD in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise by the objector of its mark rights.

(vi) Whether the applicant has marks or other intellectual property rights in the sign corresponding to the GTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, has been bona fide, and whether the purported or likely use of the GTLD by the applicant is consistent with such acquisition or use.

(vii) Whether and to what extent the applicant has been commonly known by the sign corresponding to the GTLD, and if so, whether any purported or likely use of the GTLD by the applicant is consistent therewith and bona fide.

(viii) Whether the applicant’s intended use of the GTLD would create a likelihood of confusion with the objector’s mark as to the source, sponsorship, affiliation, or endorsement of the GTLD.

For an objection based on rights in the name or acronym of an IGO, the panel will consider the following non-exclusive consideration factors:

(i) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound or meaning, to the name or acronym of the objecting IGO.

(ii) Historical coexistence of the IGO and the applicant’s use of a similar name or acronym. Factors considered may include: a. Level of global recognition of both entities;

(iii) Length of time the entities have been in existence; c. Public historical evidence of their existence, which may include whether the objecting IGO has communicated its name or abbreviation under Article 6ter of the Paris Convention for the Protection of Industrial Property.

(iv) Whether and to what extent the applicant has used, or has made demonstrable preparations to use, the sign corresponding to the TLD in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise of the objecting IGO’s name or acronym.

(v) Whether and to what extent the applicant has been commonly known by the sign corresponding to the applied-for GTLD, and if so, whether any purported or likely use of the GTLD by the applicant is consistent therewith and bona fide.

(vi) Whether the applicant’s intended use of the applied-for GTLD would create a likelihood of confusion with the objecting IGO’s name or acronym as to the source, sponsorship, affiliation, or endorsement of the TLD.

After closing the application window (from January 12 to March 29, 2012) and posting all applications, ICANN will announce the opening of the objection filing window. Currently, the objection filing window is anticipated to be seven months, from approximately May 1 to December 1, 2012. (More or less in parallel with the latter filing window, ICANN will be undertaking a so-called Initial Evaluation of applications for compliance with ICANN Applicant Guidebook formalities.)

All Legal Rights Objections must be submitted electronically with a copy of the objection to ICANN and the applicant. The objection filing fee must be submitted at the time of filing. An objection must contain at least the following: (i) the names and full contact information of the objector; (ii) a statement of the objector’s basis for standing under the procedure; and (iii) a confirmation of the basis for the objection (i.e., “Legal Rights Objection”) including “an explanation of the validity of the objection and why the objection should be upheld.” Responses must also be submitted electronically with a copy to ICANN and the objector. The response filing fee must be submitted at the time of filing of the response.

A response must contain at least the following: (i) the names and full contact information of the applicant; and (ii) a “point-by-point response to the statements made in the objection.” An applicant’s failure to reply to an objection would be considered a “default” and would result in the objection being deemed successful.

On receipt of an objection or response, an administrative compliance review would be conducted and case filing fee would be processed. Any administrative deficiencies must be corrected within five (5) days of notification. Within 30 days of the close of the objection window, ICANN will publish a “Dispute Announcement” listing all administratively compliant objections. The applicants would be notified of any objections and the applicants will then have 30 days to file a response. Within 30 days of receiving a response, an expert panel would be appointed. Normally the panel will render its determination within 45 days of appointment.

For a case involving an objection to one application (i.e., for one GTLD) to be decided by one expert, the fee will be USD 10,000 for each party (this includes a non-refundable USD 2,000 case administration fee), subject to a refund of the expert fee (USD 8,000) to the prevailing party. Different fee arrangements apply to three-member panels and to possible consolidation scenarios.

Non-payment of fees by an objector will result in rejection of the objection, without panel appointment. Non payment of response fees by an applicant will result in the objection being deemed successful.

The substantive portion of an objection or response is limited to 5,000 words or 20 pages, whichever is less, excluding attachments. The objector or applicant must also list, describe and provide copies of any attached supporting evidence.

The remedies are limited to the success or dismissal of the objection. There are no monetary damages, but the prevailing party is entitled to a partial refund of the panel fee (as described above).

A panel determination is “considered an expert determination and advice that ICANN will accept within the dispute resolution process.” Such determination is independent of any determination under either of the other types of ICANN objection options available.

The availability of the Legal Rights Objection as an administrative dispute resolution option does not preclude court options which either party may have to submit the dispute to court.

Perry4Law and PTLB believe that applying for and getting new GTLDs requires well planned techno legal strategy. A company or individual desiring to apply for the same need to analyse all the possible strengths and weaknesses of his application well in advance. While the strengths must be further improved special work need to be done upon the weakness of such future application. Perry4Law and PTLB wish all the best to future GTLDs applicants.

ICANN’s New Generic Top-Level Domains (GTLDs) Registration In Progress

Internet Corporation for Assigned Names and Numbers (ICANN) has recently streamlined the domain name registration procedure for generic top level domain names (new GTLDs). After much discussion, ICANN approved allotment of new GTLDs. Now brand and trademark owners can register their brands and trademarks as the GTLDs.

Of course, this entire process is not a smooth one but would face many techno legal hurdles and challenges. For instance, issues like cyber squatting and domain names violations, brands violations, trademark violations, ensuring security of new GTLDs, etc would arise. Further, many unforeseen challenges that cannot be anticipated and warned against may also arise during new GTLDs registrations.

In fact, filing of a GTLD application would not be an easy task and it requires thorough planning and management. ICANN is in no mood of allowing “casual filing” and only the applicants “proving bonfide claims” would be granted the new GTLDs.

Further, subsequent to new GTLDs registrations, issues like domain names protection, brands protection, trademarks protection, cybersquatting disputes resolution, cyber law compliances, cyber security requirements, cyber due diligence, etc would also arise. Brand owners and trademark owners must prepare their “strategy” in this regard well in advance.

The process of registration of new GTLDs is in full swing. The new GTLDs application process has started from 12 January 2012 and would end on 29th March 2012. As on 12-02-2012, the applicants have 46 more days to apply for new GTLDs.

Perry4Law and Perry4Law Techno Legal Base (PTLB) recommend a prior and thorough risks and benefits analysis of applying to new GTLDs registration to ICANN. This should include techno legal analysis, new GTLDs due diligence, possible Legal Rights Objections under ICANN’s New GTLD scheme, etc.

Is Google Ignoring Trademark Violations Claims And Passing Off Remedies?

Google is increasingly facing litigations and legal notices for removal of objectionable contents like copyrighted contents, improperly used trademarks and trade names, religion and cultural sensitive materials, etc. While Google has a well placed and well responsive system that allows users/owners to report offensive contents yet when it comes to trademark protection, Google’s system seems to be flawed.

Google’s Adwords and Adsense trademark policy addresses certain online advertisement related trademark issues. However, it fails to address all forms of trademark violations issues. Especially, it fails to cater the requirements of Uniform Domain-Name Dispute-Resolution Policy (UDRP) of Internet Corporation for Assigned Names and Numbers (ICANN) and cyber squatting issues.

ICANN has a crucial role to play in this regard. Accredited registrars with ICANN like MarkMonitor incorporation are not responding to valid legal notices for copyright and trademark violations by domains registered by them that they are duty bound to respond. This is violation of terms of service (TOS) of ICANN and ICANN must take serious note of the same.

Trademark, goodwill and reputation are built after making substantial amount of labour, cost and efforts. Once a domain name/sub domain acquired a distinctiveness and brand, it becomes entitled to trademark protection. Even without statutory registration, such tradename, domain/sub domain, etc are entitled to the passing off protection. However, it seems Google is paying more stress upon registered trademarks and trade names and lesser upon passing off remedies.

If you reallocate your blog address to a new one for better contents managements, the previous address becomes available to public at large. Spammers/cyber squatters are taking advantage of this weakness of Google’s Blogspot platform. The moment a well known blog address becomes available, spammers register the same with mala fide intentions for the sole purpose of cyber squatting. They do not post any contents and keep the sub domain locked for years and Google does not take any action against such cyber squatters.

These spammers/cyber squatters also do not provide any contact details and the only way to get their contact details from Google is to file a court case. Further, if a cyber squatter or spammer uses a well known trademark or tradename, Google’s mechanism is also not effective.

Perry4Law and Perry4Law Techno Legal Base (PTLB) suggest that Google must address trademarks violations in India and abroad more seriously. The present system of Google to redress trademark violations is litigation oriented. It encourages unnecessary litigations even when there is a clear case of copyright or trademark violation. In the Indian context, domain name protection is presently enforced under the trademark law of India.

Google Incorporation’s Indian strategy to counter legal disputes in India should be formulated that must cover various legal issues. Intellectual property rights (IPRs) violation issues as well as cyber law compliances must be essential part of such strategy. Internet intermediary liability and Indian safe harbour provisions must also be part of the same.

Perry4Law and PTLB have suggested that companies like Google and Facebook must appoint nodal officers in India to comply with Indian laws. Facebook seems to agree with this suggestion and it has set up a new grievance redressal mechanism to comply with Indian laws. Perry4Law and PTLB welcome this move of Facebook and hope that Google would also do the same.

Meanwhile, we have filed a DMCA complaint for trademark violation and cyber squatting with Google and we hope Google would do the needful in this regard. We also believe that it is high time that Google must take cyber squatting and spamming more seriously.

Google’s AdWords And AdSense Trademark Policy And Trademark Violations

A dominant portion of Google Incorporation’s revenue is generated through online advertisements. However, online advertisement is a complicated process that requires sound dealing of both technical and legal issues.

For instance, online advertisements frequently appear on blogs and websites that steal contents of others. At times these advertisements also appear upon spam blogs and content farming blogs who openly violate copyright of others.

Of course, Internet intermediaries like Google cannot be expected to pre screen such contents or keep a close watch upon such contents. However, Internet intermediaries’ liability in India, like other places, requires companies like Google to take down offending contents once Google is sufficiently notified in this regard.

For instance, if Google fails to comply with legally sustainable Indian demands, it would amount to non exercise of cyber law due diligence in India. This would result in the denial of “safe harbour” provisions to Google. Cyber due diligence for Indian companies is now well established and companies, both foreign and Indian, must comply with the same. In this light we have to analyse the trademark violation cases arising in India.

Perry4Law and Perry4Law Techno Legal Base (PTLB) believe that Google must address trademarks violations in India more seriously. Similarly, online advertisements of Google placed on copyright violating contents further raises additions legal obligations upon Google.

Google Incorporation’s Indian strategy to counter legal disputes in India should be formulated that must cover various legal issues. Intellectual property rights (IPRs) violation issues as well as cyber law compliances must be essential part of such strategy. Internet intermediary liability and Indian safe harbour provisions must also be part of the same.

Recently a case has been filed to the competition commission of India against Google citing discriminatory trade practices related to its AdWords program. It has been alleged by the complainant that Google has abused its dominance by engaging in discriminatory and retaliatory practices relating to AdWords.

It is important to analyse Google’s AdWords and AdSense trademark policy in this regard. Google claims to understand the importance of and respect the trademarks of others. Google’s AdWords Terms and Conditions prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements.

Google claims that it takes allegations of trademark infringement very seriously and, as a courtesy, it investigates matters raised by trademark owners. Trademarks are territorial and apply only to certain goods or services. Therefore, different parties can own the same mark in different countries or different industries. Of course, exceptions to this rule are also there and a single person or company may have a trademark in multiple jurisdictions. If you are filing a trademark violation complaint with Google, kindly provide adequate information as to where the mark is valid and for what goods or services it has been registered.

This would help Google in processing complaint in a more effective manner. If you are providing information in a proper manner, chances are great that your trademark violation complaint would be entertained by Google.

Before making a complaint to Google, kindly keep the following in mind:

(1) The trademark owner doesn’t need to be a Google AdWords advertiser in order to send a complaint.

(2) Any such investigation will only affect ads served on or by Google.

(3) Google’s trademark policy does not apply to search results. Google’s investigations only apply to sponsored links. For trademark concerns about websites that appear in Google search results, the trademark owner should contact the site owner directly.

(4) In the case of an AdSense for Domains trademark complaint, an investigation will affect only the participation of the domain name in question in Google’s AdSense for Domains program.

(5) Because Google is not a third-party arbiter, it encourages trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running via other advertising programs.

If you wish to file a trademark violation complaint with Google, you can file the same here. Kindly avoid sending direct mail to Google staff as you would be redirected to the form segment in such cases. It would only cost you time, money and efforts and duplication of labour. We hope stakeholders would find this work useful.