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First three new gTLD objections thrown out

Kevin Murphy, July 9, 2013, 21:47:42 (UTC), Domain Policy

Three objections against new gTLD applications have been thrown out by the World Intellectual Property Organization, two of them on the basis that they were blatant attempts to game the system.

The objections were all Legal Rights Objections. Essentially, they’re attempts by the objectors to show that for ICANN to approve the gTLD would infringe their existing trademark rights.

The applications being objected to were Google’s .home, SC Johnson’s .rightathome and Vipspace Enterprises .vip.

The decisions are of course completely unprecedented. No LROs have ever been decided before.

Let’s look at each in turn.

Google’s .home

The objector here was Defender Security Company, a home security company, which has also applied for .home and has objected to nine of its competitors for the string.

Basically, the objection was thrown out (pdf) because it was a transparent attempt to game the trademark system in order to secure a potentially lucrative gTLD.

Defender appears to have bought the application, along with associated companies, domains, social media accounts and trademarks, from CGR E-Commerce, a company owned by .music applicant Constantine Roussos.

The panelist in the case apparently doesn’t have a DomainTools subscription and couldn’t make the Roussos link from historical Whois records, but it’s plain to see for those who do.

The case was brought on the basis of a European Community trademark on the term “.home”, applied for in December 2011, just a few weeks before ICANN opened the new gTLD application window, and a US trademark on “true.home” applied for a few months later.

The objector also owned dothome.net, one of many throwaway Go Daddy domain name resellers Roussos set up in late 2011 in order to assert prior rights to TLDs he planned to apply for.

The panelist saw through all the nonsense and rejected the objection due to lack of standing.

Here’s the money quote:

The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the Objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced, specifically two weeks before the period to file applications for new gTLDs was to open.

For the EC trademark, lack of standing was found because Defender didn’t present any evidence that it actually owned the company, DotHome Ltd, that owned the trademark.

For the US trademark, which is still not registered, the panelist seems to have relied upon UDRP precedent covering rights in unregistered trademarks in his decision to find lack of standing.

The panelist also briefly addresses the Applicant Guidebook criteria for LROs, although it appears he was not obliged to, and found Defender’s arguments lacking.

In summary, it’s a sane decision that appears to show that you can’t secure a gTLD with subterfuge and bogosity.

It’s not looking good for the other eight objections Defender has filed.

Vipspace Enterprises’ .vip

This is another competitive objection, filed by one .vip applicant against another.

The objector in this case is German outfit I-Registry, which has applied for four gTLDs. The respondent is Vipspace, which has only applied for .vip.

In this case, both companies have applied for trademarks, one filed one month before the other.

The panelist’s decision focuses, sanely again, on the generic nature of the string in question.

Because both trademarks were filed for the word “VIP” meaning “Very Important Person”, which is the intended meaning of both applications, it’s hard to see how either is a proper brand.

The panelist wrote (pdf):

while SOAP, for example, may be a perfectly satisfactory trade mark for cars, it cannot serve as a trade mark for the cleaning product “soap”.

While the parties have used the term, “VIP”, in various forms on their website to indicate the manner in which the term will be used if they are successful in being awarded the domain, there is nothing before the Panel (beyond mere assertion) to show that either of them has yet traded under their marks sufficiently to displace the primary descriptive meaning of the term and establish a brand or at all.

In other words, it’s a second case of a WIPO panelist deciding that getting, or applying for, a trademark is not enough to grant a company exclusive rights to a new gTLD string.

Sanity, again, prevails.

SC Johnson’s .rightathome

While it contains the word “home”, this is a completely unrelated case with a different objector and a different panelist.

The objector here was Right At Home, a Nebraska-based international provider of in-home elderly care services. The applicant is a subsidiary of the well-known cosmetics company SC Johnson, which uses “Right@Home” as a brand.

It appears that both objector and applicant have really good rights to the string in question, which makes the panelist’s decision all the more interesting.

The way the LRO is described in ICANN’s new gTLD Applicant Guidebook, there are eight criteria that must be weighed by the panelist.

In this case, the panelist does not provide a conclusion showing how the weighting was done, but rather discusses each point in turn and decides whether the evidence favors the objector or the applicant.

The applicant here won on five out of the eight criteria.

The fact that the two companies offer different products and/or services, accompanied by the fact that the phrase “Right At Home” is in use by other companies in addition to the complainant and respondent appears to have been critical in tipping the balance.

In short, the panelist appears to have decided (pdf) that because SC Johnson did not apply for .rightathome in bad faith, and because it’s unlikely internet users will think the gTLD belongs to Right At Home, the objection should be rejected.

I am not a lawyer, but it appears that the key takeaway from this case is that owning a legitimately obtained brand is not enough to win an LRO if you’re an objector and the new gTLD applicant operates in a different vertical.

This will worry many people.

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Comments (7)

  1. Let me think about this ..

    a key takeaway from the 1970s and 1980s is that owning a legitimately obtained brand for Apple in the music business is not enough to win a case to prevent an upstart using the brand Apple for some new-fangled thing called a home computer.

    So.. sanity breaks out again!

    (Things did get interesting only the upstart computer people decided to enter the music business too!)

  2. Steve Levy says:

    The .rightathome decision should not be cause for worry to anyone since it was rightly decided under conventional trademark law. Just as the objector owned a legitimate (and registered) trademark, the applicant, SC Johnson, also owned a nearly identical legitimate, registered trademark for unrelated products. This is very similar to the DELTA brand being used by different companies in different verticals (airline, faucets, power tools) with each company owning registered trademarks for its particular category. However, only the airline owns Delta.com since it was able to buy it first or at the best price. New gTLDs are no different where the first amongst equals wins.

  3. Drewbert says:

    But isn’t Johnson’s mark “right@home”, not “rightathome”?

    I think this has been a FAIL on WIPO’s part.

    “The Panel finds that the word “at” and the symbol “@” are essentially synonymous in Internet parlance and concludes that this factor weighs in favor of Objector”

    Cough hack. Try substituting “at” for “@” in an email address and see how far your “essentially synonymous” gets you!

    The person with a REAL “rightathome” trademark gets the bums rush. Lovely.

    • Steve Levy says:

      Just because we’re dealing with domain names doesn’t mean that conventional trademark wisdom goes out the door. Ask the average consumer if they feel there’s a brand image difference between RIGHT AT HOME and RIGHT@HOME. Apart from the fact that they’re used in different industries, these brands are nearly identical in how they sound, look, and in their meaning so SCJ has just as much right to the gTLD as the objector (especially since the @ symbol is not a valid character for gTLDs). In any event, how can one have much sympathy for the objector when it didn’t file its own gTLD application for .rightathome?

    • Kevin Murphy says:

      You’re right. The Johnson brand is “Right@Home” rather than “Right At Home”. Thanks for the spot. I’ve corrected the article according.

  4. Scott Pinzon says:

    Kevin, this kind of cogent, concise summary is exactly why I read DomainIncite. Thanks for parsing all the boring legalese so I don’t have to!

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