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Donuts chalks up another LRO win

Donuts has successfully fought off another Legal Rights Objection against one of its new gTLD applications.

This time the objector was The Limited, apparently the operator of a large chain of clothing stores in the US, and the applied-for gTLD was .limited, which is uncontested.

Key to the World Intellectual Property Organization panelist’s decision appears to be the fact that the brand and the trademark in question is “The Limited” rather than “Limited”.

The retailer failed to show that it was commonly known by the word “Limited” alone, whereas Donuts made the case that “limited” is a common generic word with multiple uses.

The panelist wrote:

The definite article “the” makes a difference in this case. If the string were <.thelimited>, Applicant’s professed plans for the String would be highly suspect. This is because limited liability businesses do not use the term “the limited” (or an abbreviation or derivation thereof) in their company name.

In the absence of the definite article “the” in the String, however, Applicant’s proposed use of the String is plausible and legitimate, and the likelihood of confusion between Objector’s mark and the String is greatly reduced. There is simply no viable evidence in the record to suggest that significant source confusion – among consumers or non-consumers who use the Internet – will ensue if Applicant carries out its plans.

It’s the sixth LRO to be decided and the sixth finding in favor of the new gTLD applicant.

Donuts also fought off an objection from another clothing retailer, Express, which it is fighting for the .express gTLD.

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Trademark Clearinghouse cutting it fine for new gTLD launches

Kevin Murphy, July 16, 2013, Domain Policy

The Trademark+50 rights protection mechanism for new gTLDs is late, potentially complicating the lives of trademark professionals.

During a session with registries and registrars at ICANN 47 in Durban today, executives from IBM and Deloitte, which are managing the Trademark Clearinghouse, laid out their go-live expectations.

The TMCH is the central repository of trademark records that will support the mandatory Sunrise periods and Trademark Claims services during new gTLD launches.

Trademark+50 is the system approved by ICANN earlier this year that will also trigger Claims notices for up to 50 strings trademark owners have won at UDRP or in court.

IBM and Deloitte said that they hope to have a Sunrise sandbox ready for registry testing by the end of July, with a production environment live by August 9 and Claims following a month later.

These were hopes, not commitments, they stressed.

When asked about Trademark+50, an IBM representative acknowledged that it had to be ready before any new gTLD started its Claims period but said it is going to take “months” to implement.

“It’ll be in time, it’ll be before Claims start,” he said.

“It’s probably going to be difficult to reach before the middle of September,” another TMCH exec said. “We know it cannot be the week before Claims starts, it cannot be two weeks or three weeks before Claims starts.”

ICANN still hasn’t finalized its set of requirements for Trademark+50, but the TMCH executives said they hope to get that settled in Durban this week, possibly this evening.

So what’s going to be impact of the expected TMCH go-live schedule? It doesn’t seem likely to delay the launch of the first new gTLDs.

ICANN doesn’t expect the first Trademark Claims period to begin until November, which gives the first registries two months to test their systems against Trademark+50. Tight, but doable.

The real impact might be on trademark owners.

ICANN’s current earliest projection for a new gTLD being delegated is September 5. On that date, the first registry could choose to give trademark owners the 30-day mandatory Sunrise warning.

So the first Sunrise period would start October 5 or thereabouts.

That’s where it starts getting tricky.

See, the TMCH’s early bird pricing ends the day the first Sunrise period begins, so there’s certain to be a mad rush by trademark owners to get their trademarks registered in the first week of October.

Even if many brands aren’t too worried about being protected in the IDN gTLDs that will launch first, they’ll want to secure the discount if they have a large portfolio of trademarks.

And history has shown most trademark owners leave Sunrise registrations to the last minute. That’s why pretty much every Sunrise period to date has been extended — the registry can’t cope with the influx.

In the case of the TMCH, however, they’re also going to be battering a Trademark+50 system that’s been in production for no more than a couple of weeks and will, software being software, likely be full of bugs.

It could get messy.

“When IP owners find out that this is not going to be in production a week or two or a few weeks before the first [new gTLD] goes into Claims, they’re going to go ballistic,” Neustar VP Jeff Neuman said at the session today.

At the very least, it looks like trademark owners will have only a brief window to add their extra strings — which could amount to hundreds in many cases — to their TMCH records before the first Sunrise.

That scenario is mostly speculation, of course, based on a first delegation date that ICANN admits is “hypothetical” and the TMCH’s tentative schedule outlined today.

IBM and Deloitte execs are expected to provided a fuller explanation of the current state of play during a dedicated session in Durban on Wednesday at 11am local time.

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GAC to kill off .amazon

The Governmental Advisory Committee has agreed to file a consensus objection against Amazon’s application for .amazon.

The decision, which came this morning during a GAC session at the ICANN meeting in Durban, also applies to the company’s applications for .amazon in non-Latin scripts.

The objection came at the behest of Brazil and other Latin American countries that claim rights to Amazon as a geographic term, and follows failed attempts by Amazon to reach agreement.

Brazil was able to achieve consensus in the GAC because the United States, which refused to agree to the objection three months ago in Beijing, had decided to keep mum this time around.

The objection will be forwarded to the ICANN board in the GAC’s Durban communique later in the week, after which the board will have a presumption that the .amazon application should be rejected.

The board could overrule the GAC, but it seems unlikely.

It’s the second big American brand to get the GAC kiss of death after Patagonia, which withdrew its application for .patagonia last week after the US revealed its hands-off approach for Durban.

Both Amazon and Patagonia slipped through the standard Geographic Names Panel check because they’re trans-national regions, whereas the panel used lists of administrative divisions to determine whether strings were geographic.

Amazon the company was named after the region or river in Latin America, which was in turn named after a culture of female warriors originating from, according to Herodotus, Ukraine.

It’s not known whether Ukraine had a position on the objection and Herodotus was unavailable for comment.

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100th new gTLD application withdrawn

Former London mayor Ken Livingstone, rejoice!

L’Oreal has withdrawn its gTLD application for .redken, a dot-brand for one of its hair care products that I am reliably informed is not named after the balding socialist politician.

It’s the seventh of the company’s 14 new gTLD bids to be withdrawn.

Also today, it emerged that portfolio applicant Famous Four Media has withdrawn its application for .health, the only one of the four bids for that string yet to pass Initial Evaluation.

The string is one of the most controversial, being the subject of multiple very expensive to defend objections as well as strong Governmental Advisory Committee advice.

As of today, 100 new gTLD applications have been withdrawn, 53 of which were for uncontested strings.

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Roussos loses new gTLD objection

Kevin Murphy, July 15, 2013, 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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