An explanation of new top level domain objections.
Yesterday I wrote about a number of objections filed against new top level domain applications. I also explained the four types of objections.
So just how do these objections work?
In a lot of ways they are modeled after UDRP, except the fees are higher and there’s more flexibility. There’s also no precedent to go on, either, which is no small matter.
Similar to UDRP, ICANN has set its own rules for Dispute Resolution Service Providers (DRSP) and then each DRSP provides supplemental rules and its own pricing.
Here’s an overview of how it works.
ICANN’s guidelines set out overall timelines.
The deadline to file any type of objection was March 13. Within 30 days of the deadline for filing objections, ICANN will publish a document identifying all of the admissible objections.
Once ICANN publishes this document, each DRSP must send a notice to each applicant that has been objected to as well as the objector. This starts the clock ticking for the applicant, which has 30 days from when it receives this notice to file its response.
The responses must be filed in a model form provided by each of the three DRSPs. Both complaints and responses are limited to 5,000 words or 20 pages.
For a new TLD applicant, if they don’t file a response within 30 days or pay within 10 days of filing the response then the objector automatically wins.
A panel will appointed within 30 days of receiving the response. The goal is to resolve these disputes within 45 days of panel formation, but there are a lot of things that can slow that down.
For example, panels can ask for further evidence and give the parties up to 30 days to respond. Both parties can ask for an extension (generally 30 days) if they are mediating (see Mediation).
At least in the case of World Intellectual Property Organization, if one of the parties files a lawsuit the panel can decide to suspend or terminate the proceeding.
The overarching rules also allow some level of consolidation of cases. ICANN gives the example of when more than one objector has filed an objection to the same TLD.
The DRSPs have given themselves some wiggle room for how they determine consolidation. I haven’t found any exclusions that would forbid a DRSP from consolidating cases filed by one objector against multiple applicants. For example, on an existing rights objection (e.g. trademark), in the case where an objector files an identical claim based on a certain trademark against multiple applicants, it would make sense for some sort of consolidation to occur.
Even absent official consolidation, I suspect some applicants will team up in their responses. Consider the case of the .now objection filed by Starbucks (HK) Limited (not related to the coffee company) against five applicants. Should they each hire their own lawyer and file different responses? It would probably make sense to coordinate at some level, even though they’re all competitors.
Number of Panelists
UDRPs have one or three panelists. The number of panelists in a new TLD objection depends on the type of objection:
1 for String Confusion
1-3 for Existing Legal Rights (1 by default, 3 if parties agree)
3 for Limited Public Interest
1 for Community Objection
With a UDRP the fees are fixed. With new TLD objections the DRSP can offer a more open ended fee structure based on how much effort it takes to make its determination.
It’s also a loser pays model for the DRSP’s fees. The prevailing party gets its fee money back (although it likely paid a lawyer, too).
The fees aren’t inconsequential, either.
WIPO – Legal Rights Objections
The WIPO administrative fee is $2,000 for a one person panel and $3,000 for a three person panel.
The panel fee is $8,000 for a single expert and $20,000 for three. There are discounts of 20%-40% for filing multiple objections.
The fees can go up from there in extenuating circumstances.
International Centre for Dispute Resolution – String Similarity Objections
The ICDR charges Administrative fees of $4,000 per applicant.
The panel fees are $6,000 per party and an additional $3,000 per party if any type of hearing is conducted.
International Chamber of Commerce – Limited Public Interest Objections and Community Objections
ICC charges upfront registration fees of EUR 5,000 per party.
It charges additional administrative fees that it expects should be no more than EUR 12,000 for one expert and EUR 17,000 for three expert panel proceedings. Of course, it can be higher in complex or long cases.
On top of that you have to pay expert fees of EUR 450 per hour.
It seems that Limited Public Interest and Community objections will end up costing the most.
The parties in an objection can decide to enter mediation to resolve their dispute. In this case, the panel can give them leave of generally up to 30 days to settle the dispute.
Some objectors — likely those that aren’t filing against competing applications — could work out deals with applicants where they add restrictions to the domains. I could foresee a company that files an existing legal rights objection work out a deal where the registry will carve out certain domains for it.
While modeled off of UDRP, new TLD objections are much more expensive and complex. Additionally, with no precedent, it will be difficult for the parties to know how they will turn out.
I predict the objection process will result in the first set of lawsuits involving applicants.