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Six more LROs kicked out, most for “front-running”

Kevin Murphy, July 28, 2013, 21:03:59 (UTC), Domain Policy

Six more new gTLD Legal Rights Objections, six more rejected objections.

The World Intellectual Property Organization is chewing through its caseload of LROs at a regular pace now, made all the more easier by the fact that a body of precedent is being accumulated.

Objections rejected in decisions published last week cover the gTLDs .home, .song, .yellowpages, .gmbh and .cam.

All but one were thrown out, with slightly different panelist reasoning, because they had engaged in some measure of “front-running” — applying for a trademark just in order to protect a gTLD application.

Here’s a quick summary of each decision, starting with what looks to be the most interesting:

.yellowpages (hibu (UK) v. Telstra)

Last week somebody asked me on Twitter which LROs I thought might actually succeed. I replied:

Well, my initial hunch on .yellowpages was wrong, and I think I’m very likely to have been wrong about the other two also.

This case is interesting because it specifically addresses the issue of two matching trademarks happily living side-by-side in the trademark world but clashing horribly in the unique gTLD space.

The objector in this case, hibu, publishes the Yellow Pages phone book in the UK and has a big portfolio of trademarks and case law protecting its brand. If anyone has rights, it’s these guys.

But the “Yellow Pages” brand is used in several countries by several companies. In the US, there’s some case law suggesting that the term is now generic, but that’s not the case in the UK or Australia.

On the receiving end of the objection was the Australian telecoms firm Telstra, which is the publisher of the Aussie version of the Yellow Pages and, luckily for it, the only applicant for .yellowpages.

The British company argued that “no party should be entitled to register the Applied-for gTLD”, due to the potential for confusion between the same brand being owned by different companies in different countries.

The panel concluded that brands will clash in the new gTLD space, and that that’s okay:

It is inherent in the nature of the gTLD regime that those applicants who are granted gTLDs will have first-level power extending throughout the Internet and across jurisdictions. The prospect of coincidence of brand names and a likelihood of confusion exists.

The critical issue in this LRO proceeding is whether the Objector’s territorial rights in the term “YELLOW PAGES” (and the prospect of other non-objecting third parties’ territorial right) means that the applicant (or anyone else for that matter) should not be entitled to the Applied-for gTLD.

The panelist uses the eight-criteria test in the Applicant Guidebook to make his decision, but he chose to highlight two words:

the Panel finds that the Objector has failed to establish, as it alleges, that the potential use of the Applied-for gTLD by the applicant… unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’s mark.

Because Telstra has rights to “Yellow Pages” too, and because it’s promising to respect trademark rights at the second level, the panelist concluded that its application should be allowed to proceed.

It’s the third instance of a clash between rights holders in the LRO process and the third time that the WIPO panelist has adopted a laissez faire approach to new gTLDs.

And as I’ve said twice before, if this type of decision becomes the norm — and I think it will — we’re likely to see many more defensive applications for brand names in future new gTLD rounds.

The LRO is not shaping up to be an alternative to applying for a gTLD as a means to defend a legitimate brand. Applying for a gTLD matching your trademark and then fighting through the application process may turn out to be the only way to make sure nobody else gets that gTLD.

.cam (AC Webconnecting Holding v. United TLD Holdco)

Both sides of this case are applicants for .cam. United TLD is a Demand Media subsidiary while AC Webconnecting is a Netherlands-based operator of several webcam-based porn sites.

Like so many other applicants, AC Webconnecting applied for its European trademark registration for “.cam” and a matching logo in December 2011, just before the ICANN application window opened.

The panelist decided that its trademark was acquired in a bona fide fashion, he also decided that the company had not had enough time to build up a “distinctive character” or “reputation” of its marks.

That meant the Demand Media application could not be said to take “unfair advantage” of the marks. The panelist wrote:

Given the relatively short existence of these trademarks, it is unlikely that either [trademark] has developed a reputation.

In the Panel’s opinion, replication of a trademark does not, of itself, amount to taking unfair advantage of the trademark – something more is required.

the Panel considers that this something more in the present context needs to be along the lines of an act that has a commercial effect on a trademark which is undertaken in bad faith – such as free riding on the goodwill of the trademark, for commercial benefit, in a manner that is contrary to honest commercial practices.

What we’re seeing here is another example of a trademark front-runner losing, and of a panelist indicating that applicants need some kind of bad faith in order to lose and LRO.

.home (Defender Security Company v. DotHome Inc.)

Kicked out for the same reasons as the other Defender objections to rival .home — it was a transparent gaming attempt based on a flimsy, recently acquired trademark. See here and here.

DotHome Inc is the subsidiary Directi/Radix is using to apply for .home.

The decision (pdf) goes into a bit more detail than the other .home decisions we’ve seen to date, including information about how much Defender paid to acquire its trademarks ($75,000) and how many domains its bogus Go Daddy reseller site has sold (three).

.home (Defender Security Company v. Baxter Pike)

Ditto. This time the applicant was a Donuts subsidiary.

.song (DotMusic Limited v. Amazon)

Like the failed .home objections, the .song objection was based on a trademark acquired tactically in late 2012 by Constantine Roussos, whose company, CGR E-Commerce, is applying for .music.

This objection failed (pdf) for the same reasons as the same company’s objection to Amazon’s .tunes application failed last week — a trademark for “.SONG” is simply too generic and descriptive to give DotMusic exclusive rights to the matching gTLD.

Roussos has also filed seven LROs against his competitors for .music, none of which have yet been decided.

.gmbh (TLDDOT GmbH v. InterNetWire Web-Development)

Both objector and respondent here are applicants for .gmbh, which indicates limited liability companies in German-speaking countries.

TLDDOT registered its European trademark in “.gmbh” a few years ago.

Despite the fact that it was obviously acquired purely in order to secure the matching gTLD, the panelist in this case ruled that it was bona fide.

Despite this, the panelist concluded that for InternetWire to operate .gmbh in the generic, dictionary-word sense outlined in its application would not infringe these trademark rights.

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Comments (3)

  1. Rubens Kuhl says:

    It’s very likely that the .axis objection will be the only LRO where objector ends up prevailing. Not due to merits but due to lack of timely response, unless WIPO revisits its decision.

  2. andrew says:

    Is not responding and automatic loss in LRO?

    • Rubens Kuhl says:

      Yeap. Not responding, not paying the administrative fee or not paying the panel fee all lead to automatic loss in objections.

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