Legal Right Objections in New gTLD Expansion Rounds: Standing and Substantive Requirements

This is the second part of the blog post discussing the outcome of the expert determinations rendered in the 2012 gTLD expansion round, being informative for the new round of objections to start in the second quarter of 2026.

Standing Requirements: Determinations in the 2012 gTLD Expansion Round

The LRO mechanism establishes a low threshold for standing, which is granted to “rightsholders” and intergovernmental organizations, with the former defined broadly as any entity claiming existing legal rights, including registered or unregistered trademarks.

When analyzing standing, panels consistently clarified that proof of infringement is not required at the standing stage; it is sufficient that the objector demonstrates the existence of rights:

“it is not a requirement for standing that the objector’s trademark rights be infringed. The issue of whether the objector’s trademark rights would be infringed by the use of the applied-for gTLD string is relevant to whether the substance of the objection is made out, not to whether the objector has standing to bring the objection“. (AC Webconnecting Holding B.V. v. United TLD Holdco Ltd, WIPO Case No. LRO2013-0006, section 6.D)

This approach mirrors the approach taken by panels with respect to the first element under the UDRP, where panels similarly adopt a low entry bar.

An analysis of the expert determinations rendered in the 2012 round confirms this approach.

In this sense, one aspect is that the strength of the trademark invoked by the objector did not affect standing, even if it was ultimately considered at merits stage. In the <.now> objections brought by Starbucks, panels acknowledged valid trademark rights, but rejected the claims also due to the low distinctiveness of the term “now”, a common English word:

“One important factor which must be taken into account is the relatively low distinctiveness of the Objector’s Trade Mark in that it consists of an ordinary English word NOW and consequently, the burden of proof showing that the average Internet users who exercise some care and good sense in their search for goods and services in the Internet associate the applied-for gTLD <.now> with the Objector’s Trade Mark is a very heavy one which the Objector has not successfully discharged.” (Starbucks (HK) Limited v. Grand Turn LLC, WIPO Case No. LRO2013-0025, 6(iii))

Another aspect where experts took a similar stance as UDRP panels is that the location of the trademark is irrelevant: “[t]his is because the Internet has global reach, so the use of gTLDs is not limited by geography.[…]” As such, panels accepted that trademark rights may arise globally, rejecting territorial limitations due to the inherently international nature of the DNS, such as the determinations in the cases concerning the domain name <.pin>. (Pinterest, Inc. v. Amazon EU S.à.r.l, WIPO Case No. LRO2013-0050).

Further, in the <.weibo> and <.微> cases, the panel accepted standing despite ongoing disputes regarding the validity of the objector’s trademark, emphasizing that LRO proceedings rely on the current legal status of rights.

Experts also adopted a flexible understanding of qualifying rights. In the <.mls> case, a certification trademark was deemed sufficient for standing. In that case the respondent had filed a jurisdictional objection arguing that “the Objector’s certification mark in Canada for a term that is completely generic and descriptive in the real estate industry in English-speaking jurisdictions, cannot be used as the basis for an objection under the Procedure”. The expert disagreed, and considered that “the expression “rightsholders” should not be read as restrictively as the Applicant seeks.” Moreover, the expert deemed that “there is no justification for a restrictive reading of the words “mark” or “trademark”.[…].” (The Canadian Real Estate Association v. Afilias Limited, WIPO Case No. LRO2013-0008, section 9)

Similarly, licensees were recognized as having standing, as seen in the <.vip> cases, provided that sufficient evidence of the license relationship was produced. While some panels expressed concerns about the validity of a trademark consisting of “vip” which is a common term used inter alia to describe a service of suitable quality for a very important person, panels proceeded on the basis of a valid trademark registration. On the merits, given mainly the descriptive character of the string, experts concluded that even though the complainant had trademark rights to VIP, “the protection afforded by the registration of that mark should be seen as relatively narrowly confined“, and the objections were all rejected, as confusion with the objector’s mark was not likely.

Conversely, lack of evidence could defeat standing, as in the <.cam> objections, where the objector provided no evidence in support of its assertion that it is the controlling shareholder of the owner of one of the registered trademarks relied upon, which made the panel not to rely on that trademark, declining “for the purpose of this Objection, to consider these trademarks as giving rise to legal rights of the Objector”.

Timing of trademark registrations and good faith in the application thereof also influenced outcomes. In the <.home> disputes, trademark applications filed after the launch of the gTLD programme were viewed with suspicion, with panels often finding either no standing or weak substantive claims. In these cases, nine objections were filed by the US company Defender Security Company who relied on trademark applications, or trademark rights applied for or assigned to the objector after the publication of the 2012 Applicant Guidebook. The objector was also an applicant for the string <.home> and claimed, when applying for the string, that it will create an open registry “for those who wish to make dictionary and other permissible uses of [such] domains”. When discussing the merits, panels considered that the objector obtained the relied upon trademarks primarily to bolster its application for the <.home> string, which calls good faith into question (however, this same point was decided differently by other panels that consider such acquisition by the applicant as in bona fide) or that there was no evidence that the objector’s trademark are well known and identified with the objector, or that the applicant should have been aware of the objector’s trademarks.

Similar reasoning applied in the <.music> cases, where trademarks were considered part of a strategic effort to block competitors, rather than genuine commercial identifiers.

Also, in the objections concerning the string <.cam>, the objector relied on trademark rights for CAM that were applied after the publication of the 2012 Applicant Guidebook. This was not fatal to standing, but it was on the merits, where the expert found that since there is no evidence that the objector has developed a reputation in the trademark, it follows that “there is no evidence that the trademark has any goodwill on which a free ride could be taken”. (AC Webconnecting Holding B.V. v. United TLD Holdco Ltd, WIPO Case No. LRO2013-0006, section 6.F)

Lastly, in what concerned disclaimed terms, the second largest objector for the 2012 gTLD programme was the United States Postal Services, who filed seven objections concerning the string <.mail>, in which it relied on various trademark registrations that included US MAIL or MAIL. In these cases panels were reluctant to accept standing based on the USPTO registrations where the objector has disclaimed exclusive rights in “mail”, because the objector did not establish that “mail” has secondary meaning as the mark of the objector for purposes of the proceeding, but ultimately accepted that the objector had standing on the basis of “other composite marks that include the word “mail””. The objections were rejected except for two that were terminated.

Substantive Requirements: Determinations in the 2012 gTLD Expansion Round

At the core of LRO adjudication lies the concept of “potential use.” Panels assessed whether the applicant’s anticipated use of the gTLD string would infringe the objector’s rights, but they did so prospectively and at a high level of abstraction. In defining this standard, panels have adopted a dual inquiry: they considered both the uses expressly proposed in the application and any other uses that appear reasonably likely in light of the application materials and surrounding circumstances.

Yet the breadth of “potential use” is counterbalanced by a decisive jurisdictional limit. The LRO procedure concerns only the applicant’s conduct at the top level. It does not extend to the conduct of future registrants at the second level (i.e., the holders of domain names registered under the gTLD once delegated). As a result, panels do not evaluate hypothetical infringements that might arise from downstream registrations. Risks associated with second-level use are addressed through other ICANN mechanisms, such as the UDRP, the URS, or the PDDRP, as well as through national courts applying trademark and unfair competition law.

This demarcation has practical consequences. It narrows the evidentiary universe to the applicant’s plans and reasonably foreseeable conduct, excluding speculative scenarios about how third parties might misuse second-level domains. It also clarifies the remedial logic of the system: LROs act as a gatekeeping device at the point of delegation, while post-delegation mechanisms address concrete instances of abuse.

Descriptive and Dictionary Terms: The Predominant Context

The practical significance of the “potential use” standard is most evident in the large number of LROs directed at strings with descriptive or dictionary meaning. Across these cases, panels have articulated a consistent principle: bona fide use of a common term in its ordinary, descriptive sense will generally not give rise to a likelihood of confusion or to an infringement of trademark rights.

The reasoning is straightforward. An applicant who seeks to operate a registry based on that ordinary meaning is not, without more, appropriating the distinctiveness of the mark. Rather, it is participating in the shared semantic field of the language. Panels have therefore required objectors to demonstrate something more than mere identity or similarity between the string and the mark; they must show that the applicant’s intended use targets the trademark as such, rather than the term’s generic meaning.

The determinations concerning the string <.mail> illustrate this approach. Panels accepted that “mail” has a clear functional association with electronic communication services. Where the applicant proposed to use the string in connection with email-related services, panels concluded that Internet users would perceive the string descriptively, as indicating the nature of the service rather than its commercial source: “Given the Respondent’s stated intention is to use the applied-for gTLD in connection to the descriptive or dictionary meaning of “mail” as email, the Panel finds that the intended use of the applied-for gTLD is unlikely to cause confusion with the Objector’s marks as to the source, sponsorship, affiliation or endorsement of the gTLD.” (United States Postal Service v. WhitePages TLD LLC, WIPO Case No. LRO2013-0048, section 7.B.viii) Thus, on that basis, confusion as to source, sponsorship, affiliation, or endorsement was considered unlikely.

Further, where applicants proposed a bona fide use of as a generic term for a domain name registry related to “music”, panels found that bona fide use of a generic term in its ordinary generic sense does not violate the rights of another user of that term.

A similar logic informed decisions on <.vip>. Panels observed that, to the Internet community at large, “vip” would most likely be seen as indicating a category or characteristic of services—such as exclusivity or premium status—rather than as a badge of origin.

The objections to <.food> provide a particularly clear illustration of how panels integrated intended use into their analysis. The objector, a media company with trademark rights in FOOD for entertainment services, challenged applications by registry operators intending to use the string for a broad, unrestricted domain space related to the food industry. Panels rejected the objections, emphasizing that the applicants’ intended use was anchored in the dictionary meaning of “food.” The proposed model—reselling second-level domains to the public without restriction—reinforced the conclusion that the string would function generically, not as a source identifier linked to the objector.

This reasoning extends across a range of strings, including <.academy>, <.blue>, <.coach>, and <.express>. In each instance, panels placed decisive weight on the generic or common character of the term and on the applicant’s bona fide intention to operate a registry reflecting that meaning. The result is a consistent line of authority: where the applied-for string is a common word and the applicant’s use is aligned with its ordinary sense, there is typically no unfair advantage, no impairment of distinctiveness, and no impermissible likelihood of confusion at the top level.

Importantly, panels have been explicit that this conclusion does not leave trademark owners without recourse. If specific second-level domain names registered under the gTLD infringe their rights, they may pursue remedies through the UDRP, the URS, or national courts.

The same analytical framework is evident in cases involving terms with multiple meanings or cross-linguistic significance. For instance, in objections to <.bio>, panels highlighted the term’s diverse meanings across languages and contexts—from “biography” to “biology” to “organic.” This semantic breadth makes it inherently difficult to demonstrate that the applicant’s use would create a likelihood of confusion with a particular mark. Where a term is polyvalent, the inference that consumers will associate it with a specific undertaking becomes less plausible.

A comparable approach was taken in relation to <.diy>. Panels accepted that “DIY” (do-it-yourself) is a widely used generic expression referring to a broad category of activities and products. The applicant’s planned use of the string, oriented toward that general concept rather than toward any specific company or community, was therefore seen as descriptive. Similar reasoning proved persuasive in cases concerning <.eco> and <.limited>, where the terms’ generic or descriptive character again weighed against a finding of infringement.

Beyond Cybersquatting: Competing Rights and Unfair Advantage

While LROs are limited in their top-level focus, they are not confined to the narrow paradigm of cybersquatting that characterizes UDRP. The structure of the new gTLD programme—particularly the significant financial and procedural barriers to applying for a TLD—reduces the likelihood of opportunistic registrations aimed at resale.

Unlike second-level domain names, which can be registered at relatively low cost and thus lend themselves to speculative or abusive practices, gTLD applications require substantial investment and regulatory compliance. As a result, disputes at the top level are less about opportunistic capture and more about strategic positioning within a limited namespace.

The few cases where objections were upheld illustrate this point: in the case concerning <.direct> the panel upheld the objection, placing significant weight on the competitive relationship between the parties. The evidence suggested that the applicant had selected the string not merely for its descriptive value, but with the intention of disrupting the business of a direct competitor and capitalizing on the reputation of the objector’s mark. In these circumstances, the panel found that the applicant’s potential use would take unfair advantage of the distinctive character or reputation of the mark, impair that distinctiveness, and create an impermissible likelihood of confusion.

A similarly nuanced analysis is evident in the <.delmonte> dispute. The respondent, an assignee of licence agreements with the objector, applied for the gTLD without the objector’s authorisation. The objection was grounded in allegations of bad faith and breach of contractual obligations. Although the respondent argued that such contractual disputes fell outside the scope of the LRO procedure—drawing analogies with UDRP practice— the panel engaged with the merits of the case. The majority panel concluded that, while not all elements of the applicable test were satisfied, the respondent’s conduct, including the acquisition of trademark registrations in potential violation of the license agreements, was relevant to the assessment of likelihood of confusion.

There were, however, panels who suggested that there should not be a significant divergence between the criteria applied under the LRO framework and those under the UDRP, such as in the dispute over <.merck>, where the parties held rights in the same mark in different jurisdictions.

Territoriality of Rights

Questions of territoriality also arise acutely in LRO proceedings. The <.yellowpages> case is instructive. Both the objector and the applicant possessed trademark rights and significant goodwill, but in different geographical markets—the United Kingdom and Australia, respectively. The panel rejected the objection, emphasizing the priority-based nature of the gTLD application process and the absence of a principle that territorial trademark rights should preclude the delegation of a globally applicable string. The “critical issue,” as framed by the panel, was whether the existence of territorial rights in the term “YELLOW PAGES” meant that no applicant should be entitled to the gTLD. The answer, in the circumstances, was negative.

Remarks

The overwhelming majority of LROs in the 2012 gTLD expansion round were directed at strings with descriptive or dictionary meaning. In most cases, panels rejected the objections on the basis of the applicant’s credible explanation that the string had been selected for its ordinary meaning. Conversely, where panels concluded that the application sought to target a trademark rather than to exploit a generic meaning, they were willing to find the application objectionable.

The jurisprudence of the 2012 round offers several lessons for future expansions of the gTLD space, including the current one taking place in 2026. First, it confirms that LROs are not a general-purpose trademark enforcement tool, but a specialized mechanism, the analysis being limited to the principles in the Applicant Guidebook and relevant procedure, addressing specific risk at the point of delegation. Second, it demonstrates the centrality of the applicant’s stated and evidenced intentions, which can decisively shape the outcome of an objection. Third, it underscores the importance of linguistic analysis—how a term is understood by the relevant public—in assessing likelihood of confusion at the top level.

* The post was summarized with AI assistance, being based on a larger study prepared by the author during the PhD studies.