Legal Rights Objections in New gTLD Expansion Rounds: General Aspects
As explained in the introductory post, the expansion of the domain name system through new generic Top-Level Domains (gTLDs), under the auspices of ICANN, introduced a pre-delegation objection mechanism aimed at balancing innovation with the protection of pre-existing rights.
Among the four objection grounds, the Legal Rights Objection (LRO) occupies a central position in safeguarding trademark holders and other rightsholders from abusive or unfair exploitation of their rights at the top-level of the DNS.
This blog post examines the determinations in the 2012 expansion round, the analysis being instructive for the new gTLD expansion round started at the end of April 2026, with the objection period being expected to start in the last quarter of 2026.
The post will have two parts: in the first part it explores the main features of the legal rights objections and also includes a brief overview of the four objections that were upheld in the 2012 round. The second part will explore the standing requirements and substantive elements and how these were taken into consideration by the expert panels in the 2012 round.
The post is not aimed at a comprehensive analysis of the procedure, rather it aims at putting together a map with arguments raised in the previous round, that could also be found in the current expansion round.
General Aspects
An existing legal rights objection refers to the objection that the string comprising the potential new gTLD infringes “the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.” (Procedure attached to Module 3 of the 2012 Applicant Guidebook, and 2026 Applicant Guidebook).
The 2012 Applicant Guidebook identified two types of existing legal rights objections: (a) infringement of an objector’s legal rights in a trademark; or (b) infringement of an objector’s legal rights in an intergovernmental organization (“IGO”) name (section 3.2.2.2). A similar provision is included in the 2026 Applicant Guidebook (section 4.5.2.2). In the 2012 gTLD expansion round, objectors were either trademark owners or other applicants in the same gTLD program.
The general intent behind the 2012 Applicant Guidebook and the relevant procedure was to provide the holder of existing rights (including registered or unregistered trademark rights), which have been acquired and used on a genuine and bona fide basis, with an opportunity to object to an applied-for gTLD on the ground that such gTLD would infringe those existing legal rights. The same intent is reflected in the 2026 Applicant Guidebook.
Under this objection, an objector has a burden of showing that the potential use of the applied-for gTLD by the applicant: (i) takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”) or IGO name or acronym, or (ii) unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym, or (iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym (section 3.5.2 of the 2012 Applicant Guidebook, respectively section 4.5.10.2.1 of the 2026 Applicant Guidebook).
In cases where the objection is based on trademark rights, section 3.5.2 of the 2012 Applicant Guidebook then listed eight non-exclusive factors that a panel must consider in determining whether the objector has satisfied its burden or not. Section 3.5 also states that the Panel may “refer to other relevant rules of international law in connection with the standards.”
The eight factors can be briefly described as requiring a holistic assessment balancing similarity, legitimacy, intent and use in trademark rights by objector, recognition in the sector of the sign corresponding to the gTLD, intent and bona fide of the applicant, and likely confusion of the intended use to determine whether a gTLD unjustifiably interferes with existing trademark rights.
These factors resemble, but are not identical to, traditional trademark infringement analysis.
The 2026 Applicant Guidebook provides for a new factor, namely whether the applicant’s intended use of a common dictionary term that is also a trademark is intended to take advantage of such common meaning or targets a trademark (section 4.5.10.2.2, item 9).
As a WIPO report shows in what concerns the outcome in the determinations in the 2012 expansion round, “of the 71 filed legal rights objections, 2 were dismissed for non-compliance. Six proceedings were terminated, in 3 cases due to the withdrawal of gTLD applications. Expert panels upheld 4 legal rights objections, with dissenting opinions in 3 of these cases. Expert panels rejected 59 legal rights objections.”
Therefore, while procedural aspects—such as standing—were relatively permissive, the substantive conditions for success under LRO were stringent and context-driven, as demonstrated by the rejection rate in the 2012 round.
The Objections Upheld in the 2012 Round, an Overview
An objection that was upheld was the one against the application for the string <.direct>. The objection was filed by the US company The DirecTV Group Inc., who had trademark registrations for DIRECTV, which were used to identify and distinguish its digital and satellite television services. The objector and the respondent were direct competitors, as the respondent was a subsidiary of a company providing “satellite television, broadband services, audio programming, and interactive television services to commercial and residential customers in the United States“. The respondent had not used the trademark DIRECT and, when applying for the <.direct> gTLD, it explained that it seeks to expand its ability to inter alia “create a connected digital presence and personalised brand experience for customers and other business partners”. The respondent at the same time denied that it intends to use the string as a trademark, stating that the word “direct” is generic and hence cannot serve as a mark. The panel rejected the alleged bona fide motives, and considered instead that the respondent behaviour is “part of a battle for satellite television market share”. The panel concluded that the “Respondent likely chose the <.direct>
string for the sole purpose of disrupting the business of Objector“.
A second objection that was upheld was the one against the application for the string <.delmonte>. The objector was the US company DelMonte Corporation, and was the owner of the trademark DEL MONTE with first use in commerce as of October 1891; it held many other trademark registrations for DEL MONTE including in Switzerland since May 1976. The respondent also had trademark rights in the same trademark but in South Africa, those being assigned to it by the objector. The objection was upheld, but with a dissent. The panel majority considered relevant inter alia that the respondent “arguably violated the terms of its Licence Agreements with the Objector by acquiring trade mark registrations that under the circumstances might have been acquired to bolster the Respondent’s eventual gTLD application”. On the other hand, the dissenting opinion considered that the respondent had a bona fide basis of owning the string as inter alia the fact that multiple entities have been using the same trademark in the same general area of commerce for many years suggested that the public was not confused.
The third and the fourth LRO that were allowed concerned the string <.weibo> and the string <.微博>, the Chinese pinyin transliteration corresponding to <.weibo>. In both cases, the objector was Sina Corporation, a Chinese online media company for Chinese communities around the world, who held trademark rights for the Chinese pinyin transliteration of “weibo”. The applicant, Tencent Holdings Limited, China was providing Internet, mobile and telecommunication services and online advertising. It argued that its use of the term “weibo” and its pinyin transliteration was bona fide and legitimate, as the term is descriptive word of micro-blogging services, and in addition, the objector’s Chinese trademark was under dispute “on the ground that it is “too generic” and is lacking in distinctiveness”.
The majority panel found that even if there were disputes concerning the validity of the objector’s Chinese trademark, and there was a possibility that the said mark would be invalidated in the future for losing distinctiveness, “the proceedings of the Legal Right Objection only resolves the conflicts between existing legal rights and the applied-for gTLD strings”, therefore the “decision can and should, therefore, proceed on the basis of current legal status of the Objector’s mark”. Thus, the objection was not dismissed on this ground, even if the panel questioned the future validity of the objector’s relied upon trademark for losing its distinctiveness.
Further, the panel majority concluded that, based on the gTLD application for “.weibo,” the applicant’s intended use of the string exclusively for its micro-blogging services would unjustifiably impair the distinctive character of the Objector’s registered mark 微博. When making this assessment, the panel majority held that, once approved, the applicant’s stated commitments become binding under the ICANN agreement, making it appropriate to assess the application on the basis that the string will be used as described. With this understanding, the panel majority noted that “notwithstanding its claims about the descriptive nature of the
term, the majority of the Panel concludes that the Applicant appears to plan to use the term in a nondescriptive sense for its own services“, which “will in the view of the majority of the Panel inevitably impair the distinctive character of the Objector’s mark 微博.”
A dissenting opinion was issued in this case. It focused chiefly on the descriptive meaning of the term in dispute, and the fact that according to trademark law principles, generally the use of a term which has a descriptive meaning in a manner that is consistent with its descriptive meaning should not infringe a trademark for that term. The dissent emphasized that if the terms in dispute are descriptive of micro-blogging and the applicant intends to use it for micro-blogging services, then it would be difficult for the objector to succeed in the proceedings.
In the 2026 gTLD expansion round this issue is addressed under the new Applicant Guidebook, which, as indicated above, included an exemplificative factor to be assessed by experts in this regard, namely whether the applicant’s intended use of a common dictionary term that is also a trademark is intended to take advantage of such common meaning or targets a trademark.