Monthly Archives: March 2012

Legal Rights Objection Assistance For New GTLDs By Perry4Law

In this article we are discussing the legal rights objection assistance for the new GTLDs applicants. The possibility of legal rights objections stage has been envisaged even by Internet Corporation for Assigned Names and Numbers that has already made arrangements in this regard.

However, this does not mean that the GTLDs applicants, brand owners, trademark owners, domain name holders, etc cannot seek alternative techno legal assistance for others. For instance, independent objections and legal rights objections can be filed by the GTLDs applicants with the assistance of others.

Internet Corporation for Assigned Names and Numbers (ICANN) has started accepting application for the registration of new generic top level domain names (GTLDs). ICANN’s new GTLDs registration is in progress and once the deadline is over, ICANN would analyse the suitability of these applications.

The applicants must make risks and benefits analysis of ICANN’s new GTLDs registrations before making an application. Further, the applicants must also undertake proper and techno legal due diligence regarding new GTLDs applications. Once that is done to the best of an applicant’s knowledge, the ball would be in ICANN’s court.

ICANN would allow filing of legal objections against applications filed for granting of new GTLDs. The legal rights objections under ICANN’s new GTLDs domain registration program could open floodgate for objections against granting of new GTLD to a particular applicant or class of applicants. Brand names, trademarks, intellectual property rights (IPRs), etc are some of the reasons that may be cited by the objector for the refusal to grant of applied GTLD.

A well prepared applicant has greater chances that his/her/its application may be granted. Similarly, a vigilant and genuine objector must make it sure that his objections succeed and the offending GTLD is not allotted to the applicant.

If you wish to analyse your case for your personal reasons or for agitating before any court, tribunal or international organisation providing arbitration or online dispute resolution (ODR) service, you may contact us to get a preliminary analysis of the same.

If you wish to get any dispute or difference resolved through our neutral(s) you may also contact us in this regard. At Perry4Law and Perry4Law Techno Legal Base (PTLB) we provide the exclusive techno legal ADR and ODR services in India and abroad. We would analyse your case from both technological and legal perspectives.

If you think that someone is trying to misappropriate your goodwill, trade name, trademark, brand name, etc, we may assist you in enforcing your rights and intellectual property rights (IPRs), either before or after the GTLDs registration time specified by ICANN expires. We would use Uniform Domain Name Dispute Resolution Policy of ICANN or such other procedure as has been “mutually agreed” between us for analysing, opinion giving and dispute resolution.

We can also help you in determining beforehand 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
(ii) Unjustifiably impairs the distinctive character or the reputation of the objector’s mark or (iii) Otherwise creates an impermissible likelihood of confusion between the applied-for GTLD and the objector’s mark.

Perry4Law or its panelists 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, we would 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.

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.

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.

Non-payment of fees by an objector during legal rights objections will result in rejection of the objection, without panel appointment. Non payment of response fees by an applicant during legal rights objections will result in the objection being deemed successful. Obviously, applicants have to defend the legal rights objections as they cannot afford to loose the applied GTLD. Perry4Law and its neutral can assist both objectors and applicants in this regard.

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.

Trademark And Brand Protection Under New GTLDs Registration By ICANN

Of late trademark, goodwill and brand protection has become an essential part of corporate strategy. Individuals and organisations are exploring both legal and non legal methods to protect their trademarks, brands and goodwill. Further, information and communication technology (ICT) has raised novel online brand and reputation protection challenges across the globe, including India.

A good and effective brand enforcement policy is needed in India to safeguards the trademarks, brands and goodwill of Indian individuals and companies. This policy must adopt sound and legally sustainable methods alone to protect brands of their owners. For instance, online brand and reputation protection has got nasty in the recent times. Brand owners are using methods that are not legal and for protecting their brands they themselves are violating the laws of various jurisdictions.

A very significant event has recently taken place that may affect the brands of many stakeholders. ICANN’s new generic top level domain names (new GTLDs) registration has begun and is in full progress. It may violate the brands, trademarks, tradenames, etc of many owners in India, both intentionally and unintentionally.

However, we have no dedicated domain name protection law in India. Domain name protection in India is still provided under the trademark law of India. This is not an appropriate situation as a dedicated domain name protection law In India needed. This has become more important as the registration of new GTLDs would create more legal problems in future.

For instance, independent objector and legal rights objections for ICANN’s new GTLDs would be there. This has been done to resolve ownership disputes that may arise during the granting of new GTLDs. Although legal rights objection assistance for new GTLDs by Perry4Law would be provided yet we believe a full fledged and separate legislation for domain name and brand protection in India is urgently required.

The domain names, new GTLDs, ICANN and disputes resolutions require a focused approach on the part of Indian stakeholders in general and Indian government in particular. The sooner we understand this reality the better we would be equipped to safeguard our digital assets.

Domain Name Protection Law In India Needed

Domain names have assumed great significance these days. This is also the reason why many individuals and organisations have shown great interest in the new generic top level domains launched by Internet Corporation for Assigned Names and Numbers (ICANN). However, a domain name, new GTLDs and dispute resolution is not an easy task to manage.

In India we have another problem to address. We have no dedicated domain name protection law in India. Domain name protection in India is still provided under the trademark law of India. This is a serious flaw as domain names are essential part of commercial activities, e-governance and e-commerce infrastructure and we have no law that addresses violations committed against domain names.

If we continue to redress domain name violations under the existing trademark law, it may be counter productive in the long run. Of course, we use alternative dispute resolution (ADR) mechanism like arbitration to resolve domain name disputes out of the court. Surprisingly, online dispute resolution (ODR) in India has still not been considered to resolve domain name disputes on large scale in India.

The importance of domain names and corresponding stake there under have further increased due to the recent announcement of ICANN to register new generic top level domains (GTLDs). In fact, ICANN’s new generic top level domain names (new GTLDs) registration has begun and is in progress.

Perry4Law and Perry4Law Techno Legal Base (PTLB) recommend that the new GTLD applicants must undertake due diligence before applying for the same. A risks and benefit analysis of ICANN’s new GTLDs registrations must be made by individuals and companies alike.

In particular, 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.

Even after the application period for new GTLDs would be over, there is no guarantee that legal and other objections would not be raised. It is recommended by Perry4Law and PTLB to formulate a good techno legal strategy by the new GTLDs applicants for successful registration of new GTLDs in their names.

Further, we also recommend that Indian government must start the legislative process of enacting a dedicated domain name protection law for India. The sooner it is done the better it would be for the larger interest of all stakeholders.

Domain Names, New GTLDs, ICANN And Disputes Resolutions

Domain name protection in India is still provided under the trademark law of India. Domain names are essential part of commercial activities and we need a separate domain name protection law in India.

The importance of domain names has further increased due to the recent announcement of ICANN to register new generic top level domains (GTLDs). In fact, ICANN’s new generic top level domain names (new GTLDs) registration has begun and is in progress.

Perry4Law and Perry4Law Techno Legal Base (PTLB) recommend that the new GTLD applicants must undertake due diligence before applying for the same. A risks and benefit analysis of ICANN’s new GTLDs registrations must be made by individuals and companies alike.

In particular, 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.

Even after the application period for new GTLDs would be over, there is no guarantee that legal and other objections would not be raised. It is recommended by Perry4Law and PTLB to formulate a good techno legal strategy by the new GTLDs applicants for successful registration of new GTLDs in their names.

Kintiskton, MarkMonitor, Google, Online Brand Protection And IP Violations

Almost all small websites and small companies prefer to use limited computational powers, software, hardware, bandwidth consumption, etc. Within these limited resources these small companies and websites have to provide the best results.

However, the entire planning and financial equilibrium of these companies and websites is jeopardised the moment some individual, company or robot crawlers mess up with such website. There are some very aggressive crawler bots that consume the bandwidth meant for entire month in few days.

These crawler bots do not respect the restrictions placed by the robot txt files and even if you block their internet protocol (IP) range, they resurface again with newer IP blocks. In almost all cases this behaviour is attributable to a company or organisation that is helping in investigation, preventing, fighting and remedying intellectual property rights (IPRs) violations.

It may be an IPRs law firm or a company like MarkMonitor that helps in online brand protection and online trademark protection. Such IPRs law firm or company like MarkMonitor are well within their rights to analyse and report online contents for IPRs violations. However, they must do so in a manner that is not only legal but also reasonable and not causing any loss, financial or otherwise, to third parties.

Bombarding websites and blogs having limited capabilities and computational resources with mammoth requests that also bypassing the restrictions placed by website owner is strictly not legal. It involves issues like privacy violations, trespass, unauthorised access, possible denial of service attack and distributed denial of service attack, etc.

For instance, the Kintiskton crawling bot is behaving in the abovementioned manner. Some have claimed that the Kintiskton bot is operating on the part of IPRs law enforcement firms and companies like MarkMonitor.

This also reminds us about our recent series of complaints with Google, MarkMonitor, etc. During the period we pursued our trademark and copyright violation complaints with Google, MarkMonitor was the registrant for the domains blogspot and blogger. The legal notice sent to MarkMonitor to bring to Google’s knowledge the offending act and omissions was replied to after much time with a standard reply that is far from satisfactory.

It is also obvious that MarkMonitor is managing the brand and IPRs related issues of Google. The Kintiskton crawling bot seems to be acting on behalf of MarkMonitor and wherever applicable on behalf of Google as well. However, this could have serious legal consequences as this exercise of Kintiskton crawling bot may not be legally sustainable under the Information Technology Act, 2000 (IT Act 2000) that is the cyber law of India.

Now this fact has also been made public so whoever managing the Kintiskton crawling bot must be aware that this exercise may not be entirely legal and acceptable to users and website owners whose websites are vandalised by the bot. Time has come to change the crawling policy of Kintiskton crawling bot.