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Panel doesn’t consider TLD in the first-ever new gTLD UDRP case

Kevin Murphy, March 17, 2014, Domain Policy

The first new gTLD domain name has been lost to a UDRP complaint.

The famous German bike maker Canyon Bicycles won canyon.bike from a registrant who said he’d bought the name — and others — in order to protect the company from cybersquatters.

The panelist in the case, WIPO’s Andrew Lothian, declined to consider the fact that the TLD was related to Canyon’s business in making his decision. Finding confusing similarity, he wrote:

The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach. However, the Panel considers that it is not necessary to do so in the present case.

Canyon had argued that the fact that it’s a .bike domain reinforced the similarity between the domain and the mark, but it’s longstanding WIPO policy that the TLD is irrelevant when determining confusing similarity.

The domain was registered under Whois privacy but, when it was lifted, Canyon looked the registrant up on social media and discovered he was very familiar with the world of bikes.

The registrant told WIPO that he’s registered Canyon’s mark “with the best of intentions”.

Apparently, he’s registered more than one famous brand in a new gTLD in the belief that the existence of the program was not wildly known, in order to transfer the domains to the mark holders.

He claimed “that many companies have been content with his actions” according to the decision.

But the fact that he’d asked for money from Canyon was — of course — enough for Lothan to find bad faith.

He also chose to use the fact that the registrant had made no attempt to remove the default Go Daddy parking page — which the registrar monetizes with PPC — as further evidence of bad faith.

The domain is to be transferred.

Roussos loses last .music LRO

Kevin Murphy, August 27, 2013, Domain Registries

Constantine Roussos’ DotMusic Ltd has lost its seventh and final Legal Rights Objection against rival .music applicants.

In the decision in DotMusic Ltd v DotMusic Inc, published (pdf) this hour, WIPO panelist Mark Partridge ruled:

the Panel is compelled to conclude that the Objector lacks enforceable rights. The term “.music” (or “dotMusic”) would in the Panel’s opinion be recognized as a generic designation for a top-level domain name directed at or relating to music and music-related services. As a result, the Panel is of the opinion that the Objector cannot own trademark rights in the terms “.music” (or “dotMusic”) per se as a matter of law, even if it has developed awareness of that term as being associated with it as the name of an entity.

That’s roughly in keeping with the first six DotMusic decisions and a not remotely surprising result.

The objections phase for .music is not over yet, however. There are still seven Community Objections pending, most of them filed by American Association of Independent Music, which is affiliated with Roussos’ bid.

There’s also the possibility that DotMusic and/or .music LLC (which also has industry backing) could apply for a Community Priority Evaluation, which would kill off all rivals at a stroke.

I’ve yet to hear a convincing argument why either application could win a CPE, so my guess is that .music is, eventually, heading to auction.

.vip and .now clear objections

Kevin Murphy, August 23, 2013, Domain Registries

The latest batch of Legal Rights Objection results has seen two proposed new gTLDs — .vip and .now — emerge unscathed from the objections phase of the new gTLD program.

There are six applications for .vip and one of the applicants, I-Registry, had filed LROs against its competitors.

Starbucks (HK), a cable company rather than a coffee chain, had also filed LROs against each of its five rivals for .now.

With yesterday’s decisions, all 10 objections have now been rejected.

In the case of .vip, every applicant wants to run it as a generic term, but I-Registry had obtained a European trademark on its proposed brand.

But Starbucks’ .now was to be a dot-brand reflecting a pre-existing mark unrelated to domain names. WIPO panelists found that trademark did not trump the proposed generic use by other applicants, however.

Both strings will now head to contention resolution, where an auction seems the most likely way to decide the winners.

That’s all folks, no more LRO news

Kevin Murphy, August 2, 2013, Domain Policy

The results of Legal Rights Objections against new gTLD applications are no longer news.

That’s the decision handed down by the editor here at DI’s Global World International Headquarters today.

“Hey, Keith,” she barked from her ermine-carpeted corner office. “This LRO stuff is getting a bit old, don’t you think?”

“My name’s Kevin,” I said.

“Whatever,” she said. “LRO is now dog-bites-man. I decree it thus. No more of it, understand? Write more about Go Daddy girls.”

She has a point (she’s a great editor and I love her dearly).

The Legal Rights Objection has, I think, said pretty much everything it’s going to say in this new gTLD application round. I’m feeling pretty confident we can predict that all outstanding LROs will fail.

This prediction is based largely on the fact that the 69 LROs filed in this round all pretty much fall into three categories.

  • Front-running. These are the cases where the objector is an applicant that secured a trademark on its chosen gTLD string, usually with the dot, just in order to game the LRO process. These have all been rejected so far. I thought Constantine Roussos’ .music objection was the only one with a sliver of a chance; now that it’s been rejected I think the chances of any outstanding objections of this type prevailing are zero.
  • Brand v Brand. The objector may or may not be an applicant too, but both it and the respondent both own legit trademarks on the string in question. WIPO’s LRO panelists have made it clear, most recently yesterday in Merck v Merck (pdf) and Merck v Merck (pdf), that having a famous brand does not give you the right to block somebody else from owning a matching famous brand as a gTLD.
  • Generic trademarks. Cases where an owner of a legit brand that matches a dictionary word files an objection against an applicant for the same string that proposes to use it in its generic sense. See Express v Donuts, for example. Panelists have found that unless there’s some nefarious intent by the applicant, the mandatory second-level rights protection mechanisms new gTLD registries must abide by are sufficient to protect trademark rights. As I don’t believe any applicants have a nefarious intent, I don’t believe any of these LROs will succeed.

In short, the LRO may be one of many deterrents to top-level cybersquatting, but has proven itself an essentially useless cash sink if you want to prevent the use of a trademark at the top level.

The impact of this, I believe, will be to give new gTLD consultants another excellent reason to push defensive gTLD applications on big brands in future new gTLD rounds.

Whether it will inspire unsavory types to apply for generic terms in future, in order to extort money from matching brands, will depend to a large extent on whether applicants in this round wind up making lucrative deals with the brands they’re competing against.

In any event, it seems certain that the LRO-to-application ratio will be far lower in future rounds.

DI will of course continue to peruse each new LRO as it is published and will report on any genuinely interesting developments, but we will not cover each decision as a matter of course.

Decisions are published by WIPO daily here and email notifications are sent along with WIPO’s daily UDRP newsletter.

Information about Go Daddy girls can, from now on, be found here.

DotMusic loses LRO, and four other cases rejected

Kevin Murphy, July 31, 2013, Domain Policy

Constantine Roussos has lost his first Legal Rights Objection over the flagship .music gTLD.

The case, DotMusic v Charleston Road Registry (pdf) was actually thrown out on a technicality — DotMusic didn’t present any evidence to show that it was the owner of the trademarks in question.

But the WIPO panelist handling the case made it pretty clear that DotMusic wouldn’t have won on the merits anyway.

If any applicant can be said to have built a brand around a proposed generic-term gTLD, it’s Roussos. DotMusic has been promoting .music on social media an in the music industry for years.

The company also owns the string “music” in a number of second-tier TLDs such as .co, .biz and .fm.

It’s not a bogus, last-minute attempt to game the system, like the .home cases — filed using Roussos-acquired trademarks — that have been thrown out repeatedly over the last couple of weeks.

The panelist addressed this directly:

On the one hand, the Panel recognizes that there has been a real investment by the Objector and associated parties in the trademark registrations, domain name registrations, sponsorship and branding to create consumer recognition and goodwill entitled to protection. On the other hand, there is a circularity in the Objector’s position in that the rights upon which the Objector relies to defeat the application are to a certain extent conditional on the defeat of the Applicant and the Objector’s success in obtaining the <.music> gTLD string.

In other words, Catch-22.

The panelist decided that .music is generic, that Google’s proposed use of it is generic, and that obtaining a trademark on a gTLD should not be a legit way to exclude rival applicants for that gTLD.

One objective of the Objector has been to obtain precisely the type of competitive advantage (in this case in the application process for the <.music> gTLD string) that the doctrine of generic names is designed to prevent. However, as the Applicant proposes to use the <.music> gTLD string in a generic sense it is immune from this challenge.

On that basis, the LRO would have failed, had DotMusic managed to demonstrate standing to object in the first place.

Unfortunately, DotMusic didn’t present any evidence that it actually owned the trademarks in question, which were applied for by Roussos and assigned to his company CGR E-Commerce.

The objection failed on that basis.

Defender Security, which obtained trademarks on “.home” from Roussos, ran into the same problems proving ownership of the trademarks in its LROs on the .home gTLD.

Four other LROs were decided this week:

.mail (United States Postal Service v. GMO Registry)

The case (pdf) turned on whether USPS owns a trademark that exactly matches the applied-for string (it doesn’t) and whether the word “mail” should be considered generic (it is) rather than a source identifier (it isn’t).

It’s pretty much the same logic applied in the two previous .mail LROs.

.food (Scripps Networks Interactive v. Dot Food, LLC)

This is the first of two competitive LROs filed by Scripps — which runs TV stations including the Food Network — against its .food applicant rivals to be decided.

Scripps has a bunch of trademarks containing the word “food”, including a November 2011 registration in the US for “Food” alone, covering entertainment services.

The WIPO panelist found (pdf) that the trademark was legit, but decided that it was not enough to prevent Dot Food using the matching string as a gTLD.

The fact that rights protection mechanisms exist in the new gTLD program was key:

to the extent that registration and use of a particular second-level domain within the <.food> gTLD actually creates a likelihood of confusion, then Objector will have remedies available to it, including the established Uniform Domain Name Dispute Resolution Policy, the forthcoming Uniform Rapid Suspension System and relevant laws. The fact that such disputes at the second level may arise is inherent in ICANN’s new gTLD program and is not in the circumstances of this case sufficient to uphold the present legal rights objection.

Objector’s rights in the FOOD mark do not confer upon it the exclusive right to use of the word “food” in all circumstances, particularly where, as here, Applicant intends to use the <.food> gTLD in connection with the food industry. Such intended use of the word would appear to be only for its dictionary meaning and not because of Objector’s trademark rights.

.vip (i-Registry v. Charleston Road Registry)

It’s the second objection by .vip applicant to get thrown out. In this case the respondent was Google.

Like the first time, the WIPO panelist found that the i-Registry trademark had been obtained for the purposes of the new gTLD program and that Google’s use of it in its generic sense would not infringe its rights.

.cam (AC Webconnecting Holding v. Dot Agency)

The second and final LRO decision (pdf) in the .cam contention set.

AC Webconnecting, an operator of webcam-based porn sites, lost again on the grounds that it applied for its trademark just a month before ICANN opened up the new gTLD application window in January last year.

The company didn’t have time to, and produced no evidence to suggest that, it had used the trademark and built up goodwill around “.cam” in the normal course of business.

In other words, front-running doesn’t pay.