Special Issues Concerning CommunityBased gTLD Applications

Don C. Moody, J.D., M.S. New gTLD Disputes

New gTLD Disputes 2012

Ground Rules
Shortened timeframe:
~20 mins + ~5 mins Q&A and limited to just communitydispute/objection subtopic (not grading criteria for community apps!!)

Disclaimer:
Examples that concern actual applied-for strings are purely for information purposes. No attempt to single out or debate the merits of any particular application. Not appropriate forum.

Relevance Why Focus on Community Applications?

Under-The Radar Topic:
Most discussion so far on brand protection and application logistics.

Separate Rights-Protection Avenue:

Community objection can be filed against both communitybased and standard applications. Similar to but different than trademark protection approaches (broader due to encompassing descriptive/generic, yet narrower due to restrictions). Consider a community objection as a supplement to LRO (TM) based objection or as an alternative for strings with generic or merely descriptive terms).

gTLD Applicants: Good lens through which to view things from both sides of the New gTLD perspective (e.g. some TM owners and potential objectors are also gTLD applicants).

So What Is A Community (for New gTLD Purposes)?

From Application Processing Perspective: Just an applicant who self-designated as community-based to get additional priority. [A] qualified community application eliminates all directly contending standard applications, regardless of how well qualified the latter may be. See Applicant Guidebook at 4.2.3. (Currently ~70 self-designated community applications pending) From Objection/Dispute Perspective: Any string (whether designated as community or not) that falls within designated criteria. A viable community is not necessarily the only community!!

Examples Where Both Community and Standard Applications Are Pending Simultaneously

.ART .BANK .CORP .CPA .ECO .GAY .GMBH

.INSURANCE .KIDS .MED .MUSIC .RADIO .SWISS .SPA

Mechanisms for Challenging CommunityBased Applications (pre and post-delegation)

Community Objection: (applies pre-delegation) Provider: ICC Centre for Expertise (also doing Limited Public Interest Objections) Costs: (not incl. VAT)

Filing Fee: 5000.00 (non-refundable) Expert Fee: 450.00 per hour, per panelist (unlike WIPO flat-fee) Experts Expenses: TBD ICC Admin Expenses: estimated range of 12,000.00 to 15,000.00 Fees for Attorney Time: Vary

http://www.iccwbo.org

Length: 5000 words or 20 pages whichever is less (e-Filing like UDRP) Model Complaint/Response: Copies at desk Timeframe for filing: January 2013!!!!!!! (extension?)

Mechanisms for Challenging CommunityBased Applications (pre and post-delegation)

Registry Restriction Dispute Resolution Procedure (RRDDP) Applies post-delegation
Purpose: To balance application priority with duty toward community represented. (Spider Mans Uncle Ben: With great power comes great responsibility.) Due to bump in priority, community-based TLD owner must adhere to community principles.

Standing: Established institution in ongoing relationship with community and must have filed complaint with Registry Restriction Problem Report System (RRPRS)

Hypothetical String: .YORK

Applicant: Yorkshire Terriers Owners Association (also hypothetical) Based In: U.S.A. Formed: 1950

Application Type: Community-based

Hypothetical String: .YORK

Potential (Legal Rights) Objectors: York University, Toronto, Canada Hershey, Inc. (York Peppermint Patties)

Potential (Community) Objectors: York Univ. Staff/Students/Alumni

Residents of the City of York, England (Note: Applicants for geographic names must obtain signoff from all relevant governments or public authorities for their application. See Applicant Guidebook at2.3.1.) Hershey? (York candy resellers? York Peppermint Patty fans?)

Elements of a Community Objection

For an objection to be successful, the objector must prove that: The community invoked by the objector is a clearly delineated community; Community opposition to the application is substantial; There is a strong association between the community invoked and the appliedfor gTLD string; and The application creates a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community to which the string may be explicitly or implicitly targeted. See: Applicant Guidebook at 3.5.4 Focus is on relationship between community and applied-for string.

Elements of a Community Objection Standing Requirements

Standing: (Focuses on relationship between the community and the objector.) To object on behalf of a community, the Objector must be an [e]stablished institution associated with a clearly delineated community. See Applicant Guidebook at 3.2.2.

Established institution: Level of global recognition of the institution; Length of time the institution has been in existence; Public historical evidence of the existence, such as the presence of a formal charter or national or international registration or validation by a government, inter-governmental organization, or treaty. Note: The institution must not have been established solely in conjunction with the gTLD application process. See Applicant Guidebook
at3.2.2.4.

Ongoing Relationship: The presence of mechanisms for participation in activities, membership, and leadership; Institutional purpose related to the benefit of the associated community. Performance of regular activities that benefit the associated community; and

The level of formal boundaries around the community. See Applicant Guidebook at3.2.2.4.

Elements of Community Objection Clearly Delineated Community

Community Must be Clearly Delineated: The community invoked by the objector is a clearly delineated community.
See Applicant Guidebook at 3.5.4

Guidance from ICANN on Clearly Delineated: The level of public recognition of the group as a community at a local and/or global level; The level of formal boundaries around the community [similar to standing requirements] and what persons or entities are considered to form the community; The length of time the community has been in existence; The global distribution of the community (this may not apply if the community is territorial); and The number of people or entities that make up the community.
See Applicant Guidebook at 3.5.4

Elements of Community Objection Clearly Delineated Community

Illustrations: Public recognition as community: City of York and York Univ. both local and global recognition? Formal Boundaries: City limits of York? Campus of York U.?, York fans? Persons: Current/former York city residents/York U. students? fans?; York Peppermint Patty

Duration of existence: 2000+ years (York City), 70+ years (York Peppermint Patty Fans), 50+ years (York U.); Global distribution: York U. offers worldwide online virtual campus: http://futurestudents.yorku.ca/continuing/distanceeducation Number of people/entities: 137,000+ (York city residents), 54,000+ (York U. students, not counting alumni)

Elements of a Community Objection Substantial Opposition

Substantial Opposition: Massive civil unrest or just an expression of some general trepidation?

Elements of a Community Objection Substantial Opposition

Guidance from ICANN:
Number of expressions of opposition relative to the composition of the community; (e.g. 50 out of 100 vs. 50 out of 1,000,000) The representative nature of entities expressing opposition and the level of recognized stature or weight among sources of opposition (e.g. Stephen Hawking oppose/support the Applicant for .PHYSICS?) Distribution or diversity among sources of expressions of opposition, including: regional subsectors of community, leadership of community [and] membership of community; e.g. (if large number of chef organizations worldwide, would objection by Belgian Chefs Association alone be sufficient?) Historical defense of the community in other contexts [UDRP? Lawsuits to protect TM rights?]; Costs incurred by objector in expressing opposition, including other channels the objector may have used to convey opposition.

Elements of a Community Objection Substantial Opposition

Illustrations: Relative number of oppositions: 62% of current/former residents (York City) or students (York U.) sign petition to disapprove (as opposed to solo actor or small group) Representative nature/stature/weight: If solo actor or small group objecting includes Mayor of York/Dean of York U. Distribution/diversity among sources: York U. students and Board of Regents collaborate on joint objection Past defense of community: UDRP? Lawsuits to protect TM rights? Costs incurred: spending more $$ = more legitimacy?
See Applicant Guidebook at 3.5.4.

Elements of a Community Objection Strong Association

Community must be strongly associated with applied-for string: The objector must prove a strong association between the applied-for gTLD string and the community represented by the objector. See Applicant Guidebook at 3.5.4.

Guidance from ICANN: (under targeting) section Applicants Statements in Application; Applicants statements in other contexts; Strong association in publics mind?

Elements of a Community Objection Explicit or Implicit Targeting

Illustrations: (for context) Explicit targeting of community by string: City of York York Univ. York P-Patty Fans (if deemed to be a community)

Implicit targeting of community by string: Yorkshire Terriers Owners Assoc. (if hypo reversed and they were an objector not an applicant)

Elements of a Community Objection Likelihood of Material Detriment

Material Detriment Elements:
Detriment to rights or legitimate interests (similar verbiage to UDRP Para. 4); Detriment must be material (no bootstrapping mere fact that the string will be allocated to applicant is not material detriment); Right/interests must belong to a significant portion of community;

Community must be explicitly or implicitly targeted by string (see above slides)

See Applicant Guidebook at 3.5.4.

Note: Guidance from ICANN mostly on detriment sub-factor.

Elements of a Community Objection Likelihood of Material Detriment

Detriment: Nature and extent of damage to the reputation of the community represented by the objector that would result from the applicants operation of the applied-for gTLD string; Evidence that the applicant is not acting or does not intend to act in accordance with the interests of the community or of users more widely, including evidence that the applicant has not proposed or does not intend to institute effective security Protection for user interests; Interference with the core activities of the community that would result from the applicants operation of the applied-for gTLD string; Dependence of the community represented by the objector on the DNS for its core activities; Nature and extent of concrete or economic damage to the community represented by the objector that would result from the applicants operation of the applied-for gTLD string; and Level of certainty that alleged detrimental outcomes would occur.
See Applicant Guidebook at 3.5.4.

Public Comments on Community Objections

Comments:
~400+ listed under community grounds. Comments are not objections (They can be previews of potential arguments however). Not all comments are critical. Summary of majority of comments (whether community or other grounds) = No porn! Comments can be valuable source of information for objections/disputes, and will be reviewed by evaluators. Saudi Govt Communications and Information Technology Commission (CITC): Commented on ~150+ domains (e.g. religion .CATHOLIC, .ISLAM, .AFRICAMAGIC) and other vice type issues (e.g. .POKER,.VOKDA, and .SEX) using community and variety of other grounds

Takeaways
Community is high risk/high reward to applicants who self-designate Community concepts both similar and dissimilar to trademark/brand protection approaches Community Objections can be filed against any application regardless of whether community-designated and provides an additional avenue for rights holders Objections filed with ICC Centre for Expertise (must be filed by January!!) Cost structure more fluid at ICC (hourly-based expert fees) than WIPO or ICDR Know the interplay of community elements RRDRP can also be used post-delegation Public comments can be good source of arguments for objections/disputes and/or indicators of who might be objecting/disputing

Further Information:

URL: http://www.newgtlddisputes.com eMail: info@newgtlddisputes.com Tel: 1(888) 402-7706; 1(818) 724-4577 eFax: (818) 474-7070 Twitter: @newgtlddisputes Skype: donmoody, johngenga