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First string confusion decisions handed down, Verisign loses against .tvs

Kevin Murphy, August 13, 2013, 15:08:13 (UTC), Domain Policy

The International Centre for Dispute Resolution has started delivering its decisions in new gTLD String Confusion Objections, and we can report that Verisign has lost at least one case.
ICDR expert Stephen Strick delivered a brief, five-page ruling in the case of Verisign vs. T V Sundram Iyengar & Sons yesterday, ruling that .tvs is not confusingly similar to .tv.
TVS is a $6-billion-a-year, 100-year-old Indian conglomerate, while .tv is the ccTLD for Tuvalu, which Verisign manages because of its similarity of meaning to “television”.
It’s impossible to glean from the decision (pdf) what Verisign’s argument comprised. The summary is just two sentences long.
But TVS, in response, appears to have relied to an extent on the “DuPont factors” a 13-point test for trademark confusion that came out of a 1973 case in the US.
That’s the same precedent that has been found relevant in many Legal Rights Objections in cases handled by WIPO.
The “discussion and reasons for determination” section of the .tvs decision, in which Strick found that confusion was possible but not “probable”, amounts to just four sentences.
Here’s almost all of it. Emphasis in original:

in order for the Objector to prevail, Objector must prove that the co-existence of the two TLDs in question would probably result in user confusion. Given the analysis of the thirteen factors cited by Applicant derived from the DuPont case cited above, I find that Objector has failed to meet its burden of proof regarding the probability of such confusion. I note that while the co-existence of the two TLDs that are the subject of this proceeding may result in confusion by users, Objector has failed to meet its burden of proof to establish the likelihood or probability that users will be confused.
In considering parties’ arguments, I was persuaded, in part, by Applicant’s arguments relating to the commercial impression of the TVS TLD, including the proof offered by Applicant as to the longevity of the TVS brand, the limited nature of the gTLD’s intended use, the dissimilarity of the goods or services associated respectively with the two strings, ie TVS’s association with automobile products, the fact that TVS’s brand is associated with capital letters (whereas Objector’s .tv is in lower case), the fact that TVS is well known and associated with its companys’ [sic] brands, the lengthy market interface and the long historical co-existence of TVs and tv without evidence of confusion in the marketplace.

The geeks among you will no doubt be screaming at your screen right now: “WTF? He thought CASE was relevant?”
Yes, apparently the fact that the TVS trademark is in upper case makes a difference, despite the fact that the DNS is completely case-insensitive. Bit of a head-scratcher.
I understand several more decisions have also been sent to applicants and objectors, but they’re not yet pubicly available.
The ICDR’s web site for new gTLD decisions has been down for several days, returning 404 errors.

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Comments (1)

  1. John Berryhill says:
    August 13, 2013 at 3:44 pm

    “I was persuaded, in part, by Applicant’s arguments…”
    Then it would be nice to know more specifically what they were. For $10,000, you’d think a panelist might sum up the arguments of the parties, if the decision is going to be along the lines of “I liked the Applicant’s argument.” The UDRP costs $1500, and at least you get a thumbnail summary of who shot whom.
    This bodes well for Minds & Machines’ little-noticed upper case .COM application – “The TLD for people who need to shout!”

    Reply

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