Background

This LRO by the Objector was one of 14 objections that have so far been decided by , all of which have been rejected. For further coverage of these 14 decisions, and the framework that WIPO and the��Internet Corporation for Assigned Names and Numbers () works within, see past IPilogue coverage .

The Parties

Afilias Limited (the��) is a domain holding and development��organization based in Ireland that owns and manages many other domains, including .info, .mobi and .org. The Panel decision shows that��their intent in applying for the .mls domain is to develop it into a worldwide domain for the listing of real estate properties.

The Canadian Real Estate Association of Ottawa (the��) is a Canadian not-for-profit trade organization��involved��in the management of real estate professionals in Canada. The Objector also possesses a certification mark for MLS, which its members use to brand real estate advertisements.

The Meaning of MLS

The letters "MLS" are����as an��abbreviation��for Multiple Listing Service; services used for displaying residential and commercial real estate properties for sale or lease. The Panel discussed the nature of the term, and its usage across English and non-English speaking countries both as a generic term for a collection of real estate listings, but also its other meanings.

The Decision

�ճ������included two findings: first, a determination of whether the Objector has a legal right adequate for an LRO; and second, whether that legal right was��sufficient��to block the registration of .mls by the Applicant.

The adequacy of the Objector's legal right was brought up by the Applicant, who challenged the Objector's certification mark in "MLS" as insufficient for an LRO under the . The Panel found that under interpretation of the Guide Book, a��certification��mark is a sufficient right with which to challenge a gTLD registration. The Panel relied upon the fact that such marks, in addition to unregistered��trade-marks��are all sufficient for domain name��objections��under the��. The Panel also found there is nothing indicating the intention of ICANN to exclude these types of rights as insufficient for providing standing to launch an LRO.

Once the Panel established the Objector had��standing��to challenge the application, they considered the Objection. There were three key findings that caused the Panel to reject the LRO.

The Panel first discussed what level of infringement is��required��for a��successful��objection. Here they adopted the approach used in��, in which the Panel interpreted the Guide Book as��requiring��a high level of infringement to the point of "untoward impairment" of the Objector's rights, or something "intolerable" in allowing the gTLD registration. Many have seen this as an exceeding high level of��infringement, making it very difficult to raise a successful Objection.

Once this objectionable level of��infringement��was defined, the Panel considered if the infringement by the Applicant would rise to this level. Of key finding here was that the term "MLS" is widely considered a generic term, which would not qualify for trade-mark registration in many jurisdictions. Even in Canada, the Objector does not hold a trade-mark for the term, but a certification mark. The Panel also��found��that the Objector holds those rights only in Canada, and nowhere internationally where the term is used as a general term and not a trade-mark. While finding this, the Panel did acknowledge that the Objector does hold title to "MLS" in Canada, and that��impairment��of that mark��would��result from issuing the .mls domain to the Applicant. The Panel rejected, however, the objection as the��potential��infringement��failed to rise to the level adopted from��Right at Home.��

Commentary

Taken in context with the other 14 rejected LROs, this decision further bolsters future gTLD applicants in two ways. It first endorses the high bar for permissible infringement set out by��Right at Home, and second it��highlights��the difficulties any objector will have establishing an objection to the registration of a generic term when they possess a legal right in only limited jurisdictions. ��There is some good news for future Objectors��however, as the decision acknowledges both Certification Marks and Unregistered Marks as valid bases to propose an LROs. Given the exceedingly high allowance of ��permissible infringement, however,�� it is difficult to see what will be required for a successful LRO. This paints an overall ominous future for other potential Objectors.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at The University of British Columbia.

The post Canadian Objection to proposed .mls domain .rejected appeared first on IPOsgoode.

Background

The World Intellectual Property Organization () is a specialized UN agency focused on intellectual property. It operates an alternative dispute resolution () process for a variety of intellectual property disputes that may arise internationally, including disputes related to patents, copyrights, and trade-marks. WIPO also handles disputes related to the for the Internet Corporation for Assigned Names and Numbers (). ICANN is an American non-profit that manages IP addressing and domain name registration for the internet, essentially organizing every device and website that can be connected to over the internet. In 2011, ICANN decided to open up registration of new gTLDs. (More coverage by the IPilogue on this topic can be found , , , and .)

The Decisions So Far

For a successful LRO, the objector must prove on a balance of probabilities that the applied-for gTLD infringes an established legal right. (See the��, Module 3.5.2.) In doing so, there are two steps that need to be completed - first the objector must establish a legal right, and second the objector must demonstrate the proposed gTLD will infringe that right. Given the nature of domain names, trade-marks have been the only established rights currently used to challenge a proposed gTLD. The objections so far have been rejected for��either��failing to establish an existing right, or failing to demonstrate infringement of an established right.

Failing to Establish a Legal Right

These decisions involve a number of firms that seem to have applied for trade-mark registration for the purpose of objecting to gTLD applications, as in the case of�� - an entity that objected to an application by a wholly-owned subsidiary of Google to register ".home". ,

“The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced.”

The US Postal Service (USPS) had a�����ɳ��� of .mail, as the USPS owns a trade-mark for "U.S. Mail", but not the word "mail". Some����these early decisions ruling there was no established right as bringing clarity and predictability to the process, while strongly rejecting any��perceived��abuses of the objection system.

Failing to Establish Infringement

The more controversial rejected objections have been those where the objector had a clearly established trade-mark, but failed to show the proposed gTLD would infringe their right. A legal analyst at Bloomberg���� and����as setting two precedents that will make it difficult to launch a successful trade-mark based LRO. the panelist in��Right at Home��sets an exceedingly high burden for demonstrating infringement that would justify an objection. It is also argued that��Express LLC reinforces that the registration of a mark for a common English word is��insufficient��to block a proposed gTLD. It is possible that these decisions and their subsequent endorsement make it almost impossible for an objector with a valid established right to successfully challenge a proposed gTLD.

Going Forward

If these legal commentators are correct, it will be all but impossible for mark holders to successfully challenge gTLD registrations. As a result, any further objections will have to be filed through the pre-existing Uniform Domain Name Dispute Resolution Policy on a domain-by-domain basis, where panelists will decide if a specific URL infringes a trade-mark. Given the good track record of success by many rights holders using this process, the same commentators����this will be the true mechanism for objectors to protect their intellectual property. Even with the complete shut-out of objectors, it is still too early to completely dismiss a successful LRO, and perhaps one of the outstanding 50 will set a precedent for what a��successful��LRO looks like.

Alex Buonassisi is an IPilogue Editor and a JD Candidate at Thompson Rivers University.

The post .shut-out for Legal Rights Objections in New gTLD Registrations appeared first on IPOsgoode.