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That’s all folks, no more LRO news

Kevin Murphy, August 2, 2013, 12:17:22 (UTC), Domain Policy

The results of Legal Rights Objections against new gTLD applications are no longer news.
That’s the decision handed down by the editor here at DI’s Global World International Headquarters today.
“Hey, Keith,” she barked from her ermine-carpeted corner office. “This LRO stuff is getting a bit old, don’t you think?”
“My name’s Kevin,” I said.
“Whatever,” she said. “LRO is now dog-bites-man. I decree it thus. No more of it, understand? Write more about Go Daddy girls.”
She has a point (she’s a great editor and I love her dearly).
The Legal Rights Objection has, I think, said pretty much everything it’s going to say in this new gTLD application round. I’m feeling pretty confident we can predict that all outstanding LROs will fail.
This prediction is based largely on the fact that the 69 LROs filed in this round all pretty much fall into three categories.

  • Front-running. These are the cases where the objector is an applicant that secured a trademark on its chosen gTLD string, usually with the dot, just in order to game the LRO process. These have all been rejected so far. I thought Constantine Roussos’ .music objection was the only one with a sliver of a chance; now that it’s been rejected I think the chances of any outstanding objections of this type prevailing are zero.
  • Brand v Brand. The objector may or may not be an applicant too, but both it and the respondent both own legit trademarks on the string in question. WIPO’s LRO panelists have made it clear, most recently yesterday in Merck v Merck (pdf) and Merck v Merck (pdf), that having a famous brand does not give you the right to block somebody else from owning a matching famous brand as a gTLD.
  • Generic trademarks. Cases where an owner of a legit brand that matches a dictionary word files an objection against an applicant for the same string that proposes to use it in its generic sense. See Express v Donuts, for example. Panelists have found that unless there’s some nefarious intent by the applicant, the mandatory second-level rights protection mechanisms new gTLD registries must abide by are sufficient to protect trademark rights. As I don’t believe any applicants have a nefarious intent, I don’t believe any of these LROs will succeed.

In short, the LRO may be one of many deterrents to top-level cybersquatting, but has proven itself an essentially useless cash sink if you want to prevent the use of a trademark at the top level.
The impact of this, I believe, will be to give new gTLD consultants another excellent reason to push defensive gTLD applications on big brands in future new gTLD rounds.
Whether it will inspire unsavory types to apply for generic terms in future, in order to extort money from matching brands, will depend to a large extent on whether applicants in this round wind up making lucrative deals with the brands they’re competing against.
In any event, it seems certain that the LRO-to-application ratio will be far lower in future rounds.
DI will of course continue to peruse each new LRO as it is published and will report on any genuinely interesting developments, but we will not cover each decision as a matter of course.
Decisions are published by WIPO daily here and email notifications are sent along with WIPO’s daily UDRP newsletter.
Information about Go Daddy girls can, from now on, be found here.

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Comments (4)

  1. Avtal says:

    The decisions on .ком and .орг (Cyrillic transliterations of .com and .org) have the potential to be interesting.
    A summary of the history of the IP rights on both sides, if the panelist provides one, could make for good reading (assuming you’re into that sort of thing, which if you are reading this comment buried deep in Kevin’s blog, you probably are).
    I’m personally curious to see whether Verisign points out in their rebuttal that ком is a generic word in Russian meaning “lump”.

    • Kevin Murphy says:

      I think IDN cases like these definitely fall into the category of “genuinely interesting developments”.

  2. Great points Kevin and thank you for your positive thoughts about .MUSIC possibly winning an LRO case. We thought the .MUSIC decision was not a well-thought out decision which we could punch 100 holes into.
    I agree with you completely on the notion of pushing defensive gTLD applications on big brands in future new gTLD rounds. This is what I was saying earlier. This LRO loophole will be gamed in future rounds. I hope there is an LRO decision which is in favor of an Objector just for this reason alone.There are many Fortune 500 companies with generic names that others can apply for and as you said “extort money from matching brands.” We feel the same about .MUSIC. I certainly hope the CPE will be transparent and fair.
    On Avtal’s point, the IDN LROs will be very interesting indeed.

  3. Philip Corwin says:

    It’s become pretty clear that the LRO is useless for blocking registration of a general purpose open registration generic word gTLD that is someone else’s trademark for a particular line of commerce. Unless the rules change, there will likely be lots of defensive corporate applications in the second round.
    On top of that, if closed generics are permitted to any extent there will be even more applications to buy up key generic terms before the competition does.
    What a business plan — take public domain dictionary words in all the world’s major languages, and sell them at the top level for six figures to big companies with deep pockets.

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