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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.

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.

Donuts beats dot-brand in fight over .express gTLD

Kevin Murphy, July 11, 2013, 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.

First three new gTLD objections thrown out

Kevin Murphy, July 9, 2013, 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.

ICANN: about 274 new gTLD objections filed

Kevin Murphy, March 27, 2013, Domain Policy

There have been roughly 274 formal objections against new gTLD applications, ICANN said last night.

During a webinar with applicants, new gTLD program manager Christine Willet broke down the numbers. There have been:

  • 67 String Confusion Objections — these are of the “your TLD looks like my TLD” variety.
  • 71 Legal Rights Objections — “Your TLD looks like my trademark”
  • 23 Limited Public Interest Objections — “Your TLD infringes human rights”
  • 113 Community Objections — “Your TLD screws over my community”

Willett stressed that the numbers are based on ICANN’s non-comprehensive insight and subject to a couple of caveats.

The number could be higher if ICANN was not copied in on some objections sent to arbitration panels, or lower if the panels throw some out for not passing baseline administrative checks.

Judging by the small number of objections to be revealed by the World Intellectual Property Organization — which is handling trademark disputes for ICANN — most LROs so far are applicant versus applicant.

The International Chamber of Commerce has not yet published any information about Community Objections or Limited Public Interest Objections.

The International Center for Dispute Resolution has only revealed one String Confusion Objection so far, which we reported on a couple weeks ago.

Chutzpah alert! “Tube” domainer objects to Google’s .tube gTLD bid

Kevin Murphy, March 27, 2013, Domain Registries

Remember the “mystery gTLD applicant” that had promised to campaign against Google’s closed generic gTLD applications?

It turns out the company behind the campaign is actually Latin American Telecom, one of the three applicants for .tube, and that part of its strategy is a Legal Rights Objection.

According to a copy of the LRO kindly provided to DI this week, LAT claims that if Google gets to run .tube it would harm its Tube brand, for which it has a US trademark.

If you haven’t heard of Latin American Telecom, it, despite the name, appears to be primarily a domainer play. Founded in Mexico and based in Pittsburgh, its main claim to fame seems to be owning Mexico.com.

The company says it has also been building a network of roughly 1,500 video sites, all of which have a generic word or phrase followed by “tube.com” in their domains, since 2008.

It owns, for example, the domains IsraelTube.com, MozartTube.com, LabradorTube.com, AmericanWaterSpanielTube.com, DeepSeaFishingTube.com… you get the idea.

They’re all cookie-cutter microsites that pull their video content from Vimeo. Most or all of them appear to be hosted on the same server.

I’d be surprised if some of LAT’s domains, such as BlockbusterTube.com, PlaymateTube.com, FortyNinersTube.com and NascarTube.com, didn’t have trademark issues of their own.

But LAT was also granted a US trademark for the word TUBE almost a year ago, following a 2008 application, which gives it a basis to bring an LRO against Google.

According to its LRO:

The proposed purposes of and registrant limitations proposed for .TUBE by Google demonstrate that the intended purpose of Google’s .TUBE acquisition is to deprive other potential registry operators of an opportunity to build gTLD platforms for competition and innovation that challenge YouTube’s Internet video dominance. It is clear that Google’s intended use for .TUBE is identical to Objector’s TUBE Domain Channels and directly competes with Objector’s pre-existing trademark rights

There’s quite a lot of chutzpah being deployed here.

Would LAT’s ramschackle collection of –tube domains have any meaning at all were YouTube not so phenomenally successful? Who’s leveraging whose brand here, really?

For LAT to win its objection it has to show, among other things, that its TUBE trademark is famous and that Google being awarded .tube would impair its brand in some way.

But the company’s LRO is vague when it come to answering “Whether and to what extent there is recognition in the relevant sector of the public of the sign corresponding to the gTLD”.

It relies surprisingly heavily on its Twitter accounts — which have fewer followers than, for example, DI — rather than usage of its web sites, to demonstrate the success of the TUBE brand.

I don’t think its objection to Google’s .tube application is a sure thing by any stretch of the imagination.

There is a third .tube gTLD applicant, Donuts, but it has not yet received any LROs, according to WIPO’s web site.

Del Monte v Del Monte is the first new gTLD trademark objection

Kevin Murphy, March 15, 2013, Domain Registries

Two companies trading under the name Del Monte are involved in the first-to-be-revealed Legal Rights Objection, over the .delmonte gTLD, under the new gTLD program.

The World Intellectual Property Organization revealed the LRO — expected to be the first of many — this evening.

The applicant for .delmonte is a subsidiary of Fresh Del Monte Produce, Inc. The objector is Del Monte Corp.

Both companies are primarily known for canning fruit. According to Wikipedia, Fresh Del Monte was spun off from Del Monte in 1989 and continues to have a licensing arrangement to use the brand.

The deal apparently doesn’t extend to playing nicely over gTLDs, however.

Del Monte does business at delmonte.com, while Fresh Del Monte lives at freshdelmonte.com.

Legal Rights Objections allow trademark owners to challenge gTLD applications that look too much like their marks. It looks like Del Monte has a pretty good case, on the face of it.

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