Last month we wrote about ICANN’s new gTLD objection procedure. Another aspect of the procedure is the possibility that disputing parties could be forced into an auction for the right to operate their applied-for gTLDs.
For Legal Rights, Limited Public Interest, and Community Objections, the result of winning an objection is relatively straightforward—the application is rejected. However, with String Confusion Objections, the result can be much different. Only if an objector already operates a gTLD (i.e., .com, .net, .edu, etc.) will the other applicant’s proposed gTLD be rejected. Otherwise, the result of winning String Confusion Objection is to drop BOTH applicants in to a “string contention set.”
What’s a string contention set? A string contention set is essentially ICANN’s process to sort out who gets identical or confusingly similar applied for gTLDs. Once applicants with similar or identical gTLDs are placed in a string contention set, either by a String Confusion Objection or through ICANN’s own review, there are essentially only four ways out: (1) withdrawal of an application, (2) “community priority evaluation,” (3) an agreement among the parties, or (4) a last-resort auction. These procedures are governed by Module 4 of ICANN’s Applicant Guidebook.
It’s not difficult to see how this procedure could escalate to auction quickly for many gTLD applicants. Unless an applicant withdraws, is a special “community based applicant”, or they reach a negotiated agreement among all the parties in their contention set, the only remaining option will be to hold an auction. The winner of this auction gets to keep his or her gTLD while the losers’ applications are rejected.
Thus, for many applicants filing a String Confusion Objection, the point is clear—winning a string contention objection might only be half the battle. In reality, it might just be setting up a second, perhaps very expensive fight for their proposed gTLD at auction.
Lastly, there is one other consideration all applicants/objectors should be aware of—the finality of ICANN’s gTLD Dispute Resolution Procedure. Unlike ICANN’s Uniform Dispute Resolution Procedure for domain name disputes (UDRP), with ICANN’s New gTLD Dispute Resolution Procedure, there is no built in right to appeal a gTLD objection determination to a court of law. There is however one important caveat: by filing a Legal Rights Objection with WIPO, applicants do not waive their ability to enforce their legal rights (such as trademark) in the courts.
