The new gTLDs and the resolution of trade mark disputes
CITATION: Karjiker, S. 2014. The new gTLDs and the resolution of trade mark disputes. Stellenbosch Law Review = Stellenbosch Regstydskrif 25(2):408-424.
The original publication is available at https://journals.co.za/content/journal/ju_slr
Following ICANN's decision to permit new top-level domains pursuant to its New gTLD Program, and the likely explosion in the number of top-level domains ("TLDs"), it was anticipated that there would be competing claims to register new TLDs, particular by trade mark owners. Given the success of ICANN's earlier alternative dispute resolution system - the Uniform Dispute Resolution Policy ("UDRP") - ICANN decided to again make use of an alternative dispute resolution mechanism. To this end, the New gTLD Dispute Resolution Procedure (the "Procedure") was introduced to resolve disputes relating to applications for new TLDs. There are different dispute resolution mechanisms within the Procedure for each of the four enumerated grounds of opposition, and the Legal Rights Objection ("LRO") is the dispute resolution mechanism for trade mark disputes. A number of trade mark disputes have now been determined under the LRO, which has provided some insights into how disputes are likely to be determined under it. From a trade mark perspective, there does appear to be a concern that not all trade marks are being given equal recognition. There appears to be a tendency to give greater weight to trade marks from certain jurisdictions. Hopefully, this concern is more apparent than real, because, if that is not the case, the credibility of the LRO as a dispute resolution mechanism may be undermined.