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Donuts beats dot-brand in fight over .express gTLD

Kevin Murphy, July 11, 2013, 20:43:49 (UTC), Domain Policy

Donuts has prevailed in the first big dust-up between a portfolio gTLD applicant and a dot-brand hopeful.
The World Intellectual Property Organization today published its decision (pdf) in the Legal Rights Objection filed by a clothing retailer called Express over the .express gTLD.
The ruling could have a big impact on future rounds of the new gTLD program, possibly giving rise to an influx of defensive, generic-word dot-brand applications.
Both Express and Donuts have applied for .express. They’re the only two applicants for the string.
Express runs about 600 stores in the US and elsewhere and has had a trademark on its name since 1979. Donuts, as with all of its 307 original applications, wants to run .express as an open gTLD.
Express argued in its LRO that a Donuts-run .express would severely damage its brand, saying:

Should applicants for new TLDs be able to operate unrestricted TLDs represented by generic words which are also extremely well known brands, billions of dollars of goodwill will be wiped out in a TLD heartbeat.

Donuts, in its response, pointed out that there are thousands of uses of the word “express” in trademarks and other contexts, and even produced a survey that it said showed only 8% of fashionistas even associate the word with the brand.
The WIPO panelist, after what appears to have been something of a crisis moment of wondering what the hell ICANN was thinking when it designed the LRO, sided with Donuts. He said:

The Panel ultimately decides that the trademark owner (Complainant) should not be able to prevent adoption by the applicant (Respondent) of the applied-for gTLD <.express> in the particular context presented here. While Complainant certainly owns rights in the EXPRESS trademark for use in connection with apparel and fashion accessories, and while that trademark is reasonably well known among a relevant segment of consumers in the United States, there are so many common usages of the term “express” that it is not reasonable to foreclose its use by Respondent as a gTLD.

He follows up with a few sentences that should give owners of dictionary-word trademarks reason to be worried.

The Panel recognizes that, should Respondent successfully secure the gTLD, Complainant may be required to address potential Internet user confusion in the commercial marketplace for its products based on the registration (or attempted registration) of certain second level domains. However, Complainant faces this risk because it adopted a common word in the English language for its trademark. Moreover, Complainant has applied for the identical <.express> string as a gTLD in competition with Respondent. Ultimately, the parties may well end up in an auction contest for the gTLD. This is not Complainant’s last chance to secure its trademark as a gTLD.

In other words, Express can either pay ICANN or Donuts a bunch of cash at auction to get its dot-brand, or it can let Donuts win and spend a bunch of cash on defensive registrations and UDRP/URS complaints. Not a great result for Express either way.
The panelist takes 10 pages of his 26-page decision to explain his deliberations, but it basically boils down to this: Express’ trademark is too generic to give the company exclusivity over the word.
It’s hard to disagree with his reasoning.
If subsequent LROs go the same way, and I suspect they will, then it will quickly become clear that the only way to guarantee nobody else gets your dictionary-word brand as a gTLD will be to apply for it yourself and fight it all the way to auction.

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Comments (3)

  1. pacey says:
    July 12, 2013 at 2:13 am

    not a shock that the outcome of the first brand LRO will push brands to file for their marks as new gTLD string – $$$. if every LRO goes against the trademark owner/complainant (especially when respondents such as Donuts have NO rights in the word at all) it will prove nothing more than that ICANN and WIPO are only interested in lining their own pockets, why create an objection procedure that no brand owner can prevail in?

    Reply
    • John Berryhill says:
      July 12, 2013 at 10:10 pm

      “why create an objection procedure that no brand owner can prevail in?”
      That is quite an extrapolation from this one decision involving a dictionary word.
      Brands are not all created equal, and their existence does not foreclose the use of words for their ordinary meaning.

      Reply
  2. Donuts Inc. says:
    July 13, 2013 at 10:12 am

    Even were all objections denied, it doesn’t mean the objection process was a failure. Just that applicants followed the rules. We applied for .express and not .ibm for a reason.

    Reply

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