Scarborough warning for new gtld registrants as government objections published

It's · · · — — — · · · for new gtld registrants now government objections have been published.  ICANN's Government Advisory Committee has published a list of 'Early Warnings' by national governments to around 250 of the requested new gtlds.

The list indicates which country has objected and provides brief details of the grounds for doing so. Curiously, almost half of the objections were filed by Australia, including against .attorney and .lawyer. The reason given is that the use of these terms is restricted and the applicant for the new gtld has not satisfied the relevant authorities that it qualifies to be able to use the term. The warning states:

Consumer protection: The string [.attorney/.lawyer] is linked to a regulated market sector, and [applicant] does not appear to have proposed sufficient mechanisms to minimise potential consumer harm.

I'll just wait over here.

The reason given for issuing warnings in respect of generic tlds (such as .search) is that competition will be distorted if the right is granted to a single entity.  Clearly more sanguine about such matters, the UK's only warning was that the applicant for .rugby was not representative of the community.  Similar objections were raised by other countries against .africa .swiss and .roma.

 

Applicants now have a 21-day period in which to respond. If they choose to withdraw their application then they will receive a US$138,000 refund (80% of the fee) [that's still a disbursement cost of US$34,500 to get this far, the same as just over 200 UK trade mark applications - Merpel].

This Kat thinks it odd that only Australia raised objections based on use of the restricted terms 'lawyer' and 'attorney' and wonders if these should be added to the UK's sensitive terms list.  This is contained in the Companies Act 2006 (which replaced the Business Names Act 1985) and, pursuant to section 55, requires businesses to, for example, seek the permission of the Secretary of State for Business, Enterprise & Regulatory Reform before using the term Patent, Registered or Sheffield in a business name.  For those not wishing to analyse The Company, Limited Liability Partnership and Business Names (Sensitive Words and Expressions) Regulations 2009, fortunately, Companies House has produced this neat guide here.

I wonder if my horoscope has the answer.

As with everything on the internet, surely the first question should be whether the site is directed at consumers in the jurisdiction.  In the European Union a consistent line of CJEU decisions including L’Oréal SA, Lancôme parfums et beauté & Cie, Laboratoire Garnier & Cie, L’Oréal (UK) Limited v eBay International AG, eBay Europe SARL and eBay (UK) Limited Case C-324/09 (IPKat posts here, here and here), means that can usually be determined by analysis of whether or not the average consumer of the goods or services would regard the website as being aimed and directed at him by reason of the nature of the goods or services, the language used, the currency accepted and delivery options available.  It is no good, using Mr Richard Miller QC's 'super-telescope' analogy (Euromarket Designs Inc v Peters and another [2000] All ER (D) 1050), to say that even if the website can be 'seen' from the jurisdiction it is active within it.

If .lawyer and .attorney are ultimately only directed at non-Australian consumers then the warning might seem a bit over the top; if they are not, then presumably each country will have to take steps to enforce their domestic legislation on sensitive terms [you assume that the applicant is Australian or that ICANN will implement a suitable legal mechanism to allow blocking and/or suspension].

This Kat wonders what will happen next. The objections are not binding on ICANN which seems keen to launch by May 2013 and the applicants have invested so much to get this far. The battle lines are drawn. A scrum seems inevitable.