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Roussos loses new gTLD objection

Kevin Murphy, July 15, 2013, 17:11:23 (UTC), Domain Policy

The World Intellectual Property Organization has thrown out a second new gTLD objection that was based on a hastily acquired trademark filed by .music hopeful Constantine Roussos.

While Amazon, the defendant, is the only applicant for .tunes, Amazon is in the .music contention set with one of Roussos’ companies. The objection filed by Roussos’ DotTunes Ltd was, I assume in that light, tactical.

In the fourth Legal Rights Objection ruling to date, the WIPO panelist ruled that DotTunes’ European Community trademark wasn’t famous enough to warrant rights protection under the LRO.

The panelist wrote (pdf):

The Objector’s trademark .TUNES is phonetically similar to the gTLD <.tunes>. The word “tunes” is, however, a generic and descriptive mark when used in relation to music, which is the intended use of both the Objector and the Applicant. The .TUNES trademark as registered includes many other elements, including, colours, a speech bubble and the image of a person wearing headphones. None of these are similar to the <.tunes> gTLD. It is in fact likely that an application for “TUNES” by itself as a trademark without these additional features would have been rejected for registration.

DotTunes had acquired its trademark in December 2011, shortly before ICANN started accepting new gTLD applications, when Roussos intended to submit many more applications than he ended up filing.

A trademark on .home acquired by Roussos around the same time and transferred to .home applicant Defender Security and used in an LRO against another applicant was thrown out last week.

It’s the third instance of an LRO failing because the trademark owner had acquired its trademark solely in order to have some ammo during the objection phase of the new gTLD program.

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Comments (15)

  1. Thanks for the mention Kevin. However, we did not lost another Objection (as of yet, just to clarify) so perhaps you could edit your subject because it is factually incorrect and we also did not apply for this string. It was clearly a defensive registration because we thought it would dilute the .MUSIC brand and create confusion in the marketplace akin to the issue with plurals and singulars.

    Also the most important quotes from the WIPO panelist:

    “Objector filed evidence showing the fame of .MUSIC including the sponsorship of various events, press releases and Internet traffic.” (page 3)

    “The Objector has produced very little evidence of use of .TUNES in trade or commerce. More substantial evidence was produced in relation to the use of .MUSIC.” (page 4)

    • Kevin Murphy says:

      Fair point. I guess Defender was the applicant in the other case.

      I’ve tweaked the headline and first para for clarity.

    • John Berryhill says:

      “we did not lost another Objection (as of yet, just to clarify)”

      And to clarify further, the .home EU trademark application was applied for by you, personally, in December, and sold as a package deal along with the ridiculous Godaddy reseller website. The published decision in the .home objections so far states that the reseller website terms stated it was operated by “CGR” and/or “.music”.

      So while it is true that you did not lose that LRO, it was clearly lost on the basis of supposed “goodwill” in the “mark” you sold to that other party, out of the batch of EU applications you filed.

      It was a foolish idea from the start, and but for the fact that you got someone to pay you for these magic beans, remains a foolish idea.

      • John, I repeat I am not the applicant for .HOME nor did we apply for such a string. We only applied for .MUSIC (emphasis added) and the basis of goodwill and fame from our perspective is only in regards to .MUSIC and protecting the .MUSIC brand from dilution. No-one can deny it is famous, especially since an entire community is behind it. No easy feat and all a result of our significant efforts over the years to build the brand.

        • John Berryhill says:

          Constantine, the entire file of EU trademark registrations is available online, as are Cyprus corporate registrations.

          These things are public records, you know. If you click on “access to file” in the EU trademark records, you get the full history, and copies of every document.

          On December 30, 2011, EU 010535201 was filed. The applicant is “Constantine Roussos”, an individual. It was one of dozens of EU filings you made and filed through your attorney Ms. Dreyfus who, coincidentally, is a WIPO LRO panelist.

          On May 15, 2012 – gee what an interesting time for TLD applicants – that application was assigned to the newly formed DotHome Ltd. of Cyprus. There was a question from the OHIM office, since there was only one attorney signature on the assignment, and Ms. Dreyfus had to clarify that she was the attorney for both the assignor and the assignee.

          Now, if you have nothing to do with .home, then why on earth were you claiming before the EU trademark office that you possessed trademark rights in an alleged “.home” mark?

          That’s a rhetorical question, Constantine and, again, I think you are a great guy, which is the only reason why I would suggest that these sorts of shenanigans do not befit the level of esteem I hold for you.

          The sad thing is that the schmucks to whom you sold it didn’t understand the backstory on what they bought, rendering their LRO filings to be factually false in relation to how long Dothome Ltd. had been doing what.

          The only thing I can imagine is that you got some really bad advice and believed it.

  2. Thanks Kevin for clarifying this. Just because we have been so active in the domain/music space does not mean we are involved in every application or objection out there 🙂

    Just for the record we wanted to clearly mention that we did not apply for this string and the objection was clearly a defensive registration because having multiple music-themed synonyms would dilute our community-based .MUSIC brand and certainly create confusion in the marketplace akin to the issue with plurals and singulars, which we publicly disagree with. We do believe allowing plurals and singulars or confusing synonyms is not at all useful to the Internet community and we believe it will create a strong likelihood of confusion on the Internet, which will be abused by bad actors – especially in non-community-based sensitive strings without appropriate pro-active safeguards.

    These are the quotes we thought were the most notable by WIPO panelist which have a great weight for our community-based and branded .MUSIC:

    “Objector filed evidence showing the fame of .MUSIC including the sponsorship of various events, press releases and Internet traffic.” (page 3)

    “The Objector has produced very little evidence of use of .TUNES in trade or commerce. More substantial evidence was produced in relation to the use of .MUSIC.” (page 4)

    We agree with official WIPO statements that “When one trademark owner registers its trademark in one such gTLD and another owner registers an identical or similar mark in another gTLD, the public will not be able to clearly attribute each domain name to a specific trademark owner . This is likely to cause confusion. Moreover, to the extent Internet users are unable (or become unaccustomed) to associate one mark with a specific business origin, the distinctive character of a trademark will be diluted (http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ Section 20).”

    Also it is also noteworthy to mention about our cases against applicants with open, sensitive music-themed strings without appropriate safeguards that WIPO agrees that “from an IP perspective, adding more open (emphasis added), i.e., unrestricted and unsponsored/non-community-based gTLDs, is more likely to increase the likelihood of confusion (and the cost for defensive or preemptive measures) than the scope for brand differentiation.” (http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ Section 21).

    Thanks again for the mention.

  3. John Berryhill says:

    “we wanted to clearly mention that we did not apply for this string and the objection was clearly a defensive registration”

    So, in other words, your representations in this filing to the extent that you had valuable and substantial trademark rights in the string, were just fluff. No wonder your attorney appears to have not been clear on whether they wanted their name on this thing.

    “These are the quotes we thought were the most notable by WIPO panelist which have a great weight for our community-based and branded .MUSIC”

    I want what you are smoking. That was the panelist’s polite way of saying, “There was a pile of other stuff relating to .music, but this case isn’t about that.” Saying that you filed evidence for the purpose of showing something irrelevant is the panelists way of saying “even if he did prove something about .music, it has nothing to do with the facts here.”

    You have a solid application for .music. It is unfortunate that you have chosen to cheapen your laudable efforts in that application and your other activities, by engaging in these pointless trademark games.

    • John, I appreciate that you consider our .MUSIC efforts as laudable. Thank you for that. We did not play any trademark games with anything that was not related to .MUSIC to protect its brand, its goodwill created and to protect all our significant marketing efforts. We did not file any WIPO cases that were unrelated to .MUSIC. We are certainly not trying to game the system in any manner and it is all to protect our .MUSIC legitimate rights. We never have and we never will try to game the system. Our ONLY interest (and our only application) is .MUSIC Wish you great success in your efforts.

      • John Berryhill says:

        “We did not play any trademark games with anything that was not related to .MUSIC.”

        Constantine, I do not know whom you mean by “we” in that sentence. I am addressing you. I suggest you have a heart-to-heart chat with the guy who has all of these “legitimate rights”:

        .LAWYER
        Trade mark No: 010576676 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .ATTORNEY
        Trade mark No: 010544385 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .ARTIST
        Trade mark No: 010544377 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .VIDEO
        Trade mark No: 010535441 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .MOVIE
        Filing date: 30/12/2011 Date of registration: 22/06/2012
        Name of the owner: Constantinos Roussos

        .STORE
        Trade mark No: 010535383 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .PROPERTY
        Trade mark No: 010535342 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .ONLINE
        Trade mark No: 010535318 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .MUS
        Trade mark No: 010535301 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .LAW
        Trade mark No: 010535227 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .FILM
        Trade mark No: 010535169 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        .FASHION
        Trade mark No: 010535111 Type of mark: Figurative
        Name of the owner: Constantinos Roussos

        • John,

          You are obviously very upset about .HOME because your client – UniRegistry – was objected to using the .HOME trademark. For the record, I had nothing to do with filing that objection case. No need to divert your frustration at me.

          Please keep in mind, the objections to music-themed strings were filed to protect our legitimate interests in .MUSIC. The key distinction that you conveniently fail to acknowledge is that the only string that my company applied for is .MUSIC. This is a brand that my company developed over years of hard, tireless work, and by spending millions of dollars in marketing efforts to put together a powerful community-based application.

          I certainly appreciate the fact that you acknowledge that it is in fact a solid, “laudable” application. It is within our rights to protect the .MUSIC brand. Tremendous equity and good will has been built around our brand, which is undeniable. We did not game the system, we built a brand! That is what everyone seems to forget, or at least conveniently ignore, to make their “story” work.

          In context and to prove this point, no-one is talking about .MOVIE (a comparable string) in the ICANN community or at-large entertainment industry (or the media) because of precisely what I am discussing here: because no brand was created for .MOVIE. In contrast, we created a brand and are recognized as .MUSIC and this is why there are so many conversations surrounding it. This is undeniable. As mentioned, the reason behind this is because we created a recognized brand over a 7 year period and our .MUSIC community-based brand has legitimate, and important reasons to be protected. The .MUSIC claims should be respected, and the repeated attempts to conflate them with other trademarks that we applied for, but for which we chose not to pursue and build brands is disingenuous and misleading. Had we filed objections based on those trademarks, that would have be disingenuous.

          These examples and “other” trademarks that you cite have no absolutely relevance whatsoever to the new gTLD program or our .MUSIC efforts. My company did not apply for any of these strings and, most importantly did not create brands out of those trademarks. We applied for them with the intention of creating a strong brand surrounding them, but chose not pursue any of these because building a brand does take years and literally millions of dollars. There is a reason we only applied for .MUSIC and the only reason we only filed music-themed objections. This is the essence of this conversation. To your credit, thank you for acknowledging out efforts in developing .MUSIC which should the only obvious point here.

          As for your comments about my attorney appearing “not been clear on whether they wanted their name on this thing” I would like to enlighten you that I personally filed these objections without the assistance of counsel because I believe in .MUSIC case so strongly, and I am the Objector. Of course, I have now added counsel’s assistance for our sole application, and they are providing advice and valuable guidance on a multitude of fronts. No need to be making assumptions here. Just wanted to clear things out.

          I sincerely wish you the best of luck in your cases, which I repeat I am not involved in. All that I am focused on and always been focusing on is the .MUSIC brand and community-based efforts for which believe in and I care deeply for.

          Regards

          • John Berryhill says:

            Constantine, I am not in the least bit frustrated.

            I just can’t imagine what tortured logic it takes to file a boatload of .word trademark applications in Europe and say:

            “These examples and “other” trademarks that you cite have no absolutely relevance whatsoever to the new gTLD program”

            Okay, fine, those filings had “no absolutely (sic) relevance whatsoever to the new gTLD program”, you just have a strange hobby of filing .word trademark applications for amusement. But the terms of service for the “registrar” located at dothome.net still say:

            “This Universal Terms of Service Agreement (this “Agreement”) is entered into by and between .MUSIC – Music.us – CGR, an AZ individual (“New Generic Top-Level Domain (gTLD) TLD Extension”) and you”

            Again, okay fine. A registrar reseller which states, on its own website, to be “.MUSIC – Music.us – CGR” has nothing to do with .music.

            I suppose next you’ll be telling me these aren’t the droids I’m looking for. It only works in the movies.

          • John,

            I just explained this but once again for some reason you are missing my comments. Certainly I have no such “hobby” or have “amusement” for filing for marks 🙂

            I repeat again, for clarification purposes our initial plan when we applied for the marks was to build brands surrounding these strings but decided NOT to pursue that (and still believe our decision was the correct one) because, as our .MUSIC brand illustrates, it would cost millions of dollars, significant resources and time to do so i.e it would be virtually impossible. So again, we did NOT apply for these strings nor did we object against any applicant who applied for them, which – as I have already stated and agree with you – would truly be disingenuous but you seem to ignore this important fact. We are not affecting any contention set except the one of .MUSIC.

            Again for clarification purposes my company CGR sold the .HOME application and Cyprus company DotHome Limited hence the mention of CGR in the registrar reseller agreement which we signed and had in place before the sale of the company. As you can see from an article from DomainIncite from last year (http://domainincite.com/10935-roussos-sells-his-home-new-gtld-application) “Applicant name is now “Dothome Ltd”, whereas originally it was “DotHome/CGR E-Commerce Ltd”. “All our assets and intellectual property pertaining to .HOME were transferred to Defender.”

            I truly do wish you the best in your .HOME application and the objection and reiterate again I am NOT the applicant NOR a shareholder of .HOME. Whether intellectual property creates confusion or is “famous” or “well-recognized” or is a brand with substantial evidence of use in commerce and trade is up to a Panelist and the community to decide. I think we made the strongest case for the .MUSIC brand quite obvious. I do not see many mentioning .MOVIE in any discussions, publications or outreach. You have to agree .MUSIC has been mentioned hundreds of times more than .MOVIE- a comparable string. Both strings are of comparable in size and popularity but in regards to “fame”, branding and exposure within both the domain community and entertainment/music community the facts, publications and music community support is unquestionable to prove the “fame” and branding part. There is a significant distinction in the case of trademark strength and goodwill.

            The Panelists are smart and will come to a fair and reasoned conclusion whether a mark is famous or not and worthy of protection to prevent unfair advantage or dilution of one’s brand. It is clear that for .MUSIC it is indisputable. That is my strong opinion. For the other marks and objections relating to non-music-themed cases you can be the judge. You are a pretty good attorney and certainly have a good idea which mark has a strong case or not.

            Give Frank my regards. I think you guys are building a great team and company at UniRegistry.

            Best

  4. John Berryhill says:

    “our initial plan when we applied for the marks was to build brands surrounding these strings but decided NOT to pursue that”

    That must have been quite a rapid and remarkable scale back of plans, given that you filed all of the applications in late 2011, just prior to opening of the TAS system itself in early 2012, and would have had to establish “rights” in generic words in a matter of weeks. But having decided not to “build brand surrounding these strings”, then one wonders just what it was you were purporting to sell to others in May 2012. And I am on record in public commentary going back several years, on the foolishness of this sort of game, which has been referred to in other blogs as “TLD front running” as long ago as 2009, and well prior to any engagement I have in connection with the TLD program. My comments here are a continuation of those longstanding observations, based on public records, and are solely my own.

    • John,

      We came up with the same conclusion as you and decided not to do anything with those marks. That was the right decision and we both agree with that. As you have noted .MUSIC is in a class of its own and that is the only thing that matters. it is our brand and working to creating a positive community string around it. Looking forward to seeing you in Buenos Aires!

  5. John Berryhill says:

    “We came up with the same conclusion as you and decided not to do anything with those marks.”

    …except sell them to someone who, if I were them, would be surprised that you don’t stand behind whatever you sold them. March 2012 – while the TAS system was running – was pretty late in the game to reach those conclusions. You may, of course, voluntarily cancel the remaining EU registrations, lest anyone in the future be misled into believing them to be of any value. Unlike the costs and fees incurred by filing them in the first place, canceling them, and putting them behind you, is free.

    http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0038.pdf

    “The Panel accepts Respondent’s observations as to the timing of Objector’s trademarks acquisitions in
    relation to the New gTLD Program, and concurs with Respondent that the Objector did not attempt to acquire or use any of the referenced trademarks until after the New gTLD Program had been announced. It thus appears that Objector attempted to acquire the referenced trademarks specifically to create a basis for filing the present Objection and under the gTLD Program.

    Also, the Panel agrees that the Objector could not have been running a domain registration site since
    December 2011 through the domain , since DotHome Ltd. appears to have only been formed on March 28, 2012, and before that, the owner of the domain name was “Constantinos George Roussos Ecommerce Ltd (CGR Ecommerce Ltd)”.

    In light of the above, the Panel finds that the acquisition and use of the trademarks in question was not bona fide.”

    It would be unfortunate if, in the future, you were found to have engaged in any transactions not considered “bona fide”.

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