The ICANN Legal Rights Objection: Statistics and Takeaways Andrew Abrams Google, Mountain View, California, USA Internet Committee—Domain Disputes Subcommittee Don Moody New gTLD Disputes, Sherman Oaks, California, USA Internet Committee—Domain Disputes Subcommittee Scott Austin VLP Law Group, LLP, Charlotte, North Carolina, USA Internet Committee—gTLD Registry Issues Subcommittee Jonas Koelle Merck KgaA, Darmstadt, Germany Internet Committee—gTLD Registry Issues Subcommittee The Internet Corporation for Assigned Names and Numbers (ICANN), as part of its new generic top-level domain (gTLD) program, incorporated several dispute resolution procedures intended to afford businesses, individuals, governmental entities and communities the opportunity to challenge the introduction of certain new gTLD strings into the domain name system. One such mechanism was the Legal Rights Objection (LRO), under which parties could object to a new gTLD string on the basis that it would violate the trademark rights of the objector. ICANN selected the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center to administer all LRO disputes. WIPO panelists were charged with considering whether potential use of an applied-for gTLD string (i) “takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark … or IGO [intergovernmental organization] name or acronym,” (ii) “unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym,” or (iii) “otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym.” ICANN, gTLD Applicant Guidebook, Module 3, § 3.5.2 (June 4, 2012). This article analyzes the 69 LRO complaints filed during the first round of the new gTLD program and distills several lessons learned and recommendations for brand owners to consider in helping to shape subsequent new gTLD rounds.
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The ICANN Legal Rights Objection: Statistics and Takeaways Andrew Abrams Google, Mountain View, California, USA Internet Committee—Domain Disputes Subcommittee Don Moody New gTLD Disputes, Sherman Oaks, California, USA Internet Committee—Domain Disputes Subcommittee Scott Austin VLP Law Group, LLP, Charlotte, North Carolina, USA Internet Committee—gTLD Registry Issues Subcommittee Jonas Koelle Merck KgaA, Darmstadt, Germany Internet Committee—gTLD Registry Issues Subcommittee The Internet Corporation for Assigned Names and Numbers (ICANN), as part of its new generic top-level domain (gTLD) program, incorporated several dispute resolution procedures intended to afford businesses, individuals, governmental entities and communities the opportunity to challenge the introduction of certain new gTLD strings into the domain name system. One such mechanism was the Legal Rights Objection (LRO), under which parties could object to a new gTLD string on the basis that it would violate the trademark rights of the objector. ICANN selected the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center to administer all LRO disputes. WIPO panelists were charged with considering whether potential use of an applied-for gTLD string (i) “takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark … or IGO [intergovernmental organization] name or acronym,” (ii) “unjustifiably impairs the distinctive character or the reputation of the objector’s mark or IGO name or acronym,” or (iii) “otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name or acronym.” ICANN, gTLD Applicant Guidebook, Module 3, § 3.5.2 (June 4, 2012). This article analyzes the 69 LRO complaints filed during the first round of the new gTLD program and distills several lessons learned and recommendations for brand owners to consider in helping to shape subsequent new gTLD rounds.
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Background and Statistical Data Sixty-nine LRO complaints were filed during the first round of new gTLD applications, which involved 37 unique strings. The 69 cases involved 34 distinct objectors and 51 distinct new gTLD applicants. Of these disputes, the objector prevailed in only four cases. The applicant prevailed in the vast majority—specifically, 59—of the cases. As for the remaining six cases, two were terminated, one was withdrawn and three resulted in withdrawal of the new gTLD application. All these outcomes essentially indicated settlement between the parties. A graphic breakdown of the outcomes of the LRO complaints is shown below.
Table 1(see Annex) details the string, objector, applicant and outcome in each LRO complaint. LRO complaints filed generally can also be broken down further into (1) those involving trademarks that the WIPO panelists considered to be non-dictionary or uncommon terms, (2) those involving trademarks that also happen to be common or dictionary terms and (3) those involving newly formed applicant entities’ attempting to obtain trademark protection for their new gTLD strings. More specifically, the last category concerns national trademark registrations that were obtained primarily as leverage to support a new gTLD application and/or a LRO complaint, with little or no demonstrable prior use. A breakdown of all 37 strings by these three categories appears in Table 2. See also WIPO Arbitration and Mediation Center, End Report on Legal Rights Objection Procedure 2013, at 12 (December 2013). A case study of the significant determinations in each category follows.
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Trademarks That Overlap with Common Terms or Dictionary Terms One significant category of LRO determinations from WIPO panels involved cases where the string corresponded to the complainant’s trademark(s) but where the string was also a common or dictionary term. In virtually all of these cases, the WIPO panelists relied on evidence establishing that the applicant selected the applied-for gTLD string purely for its descriptive or dictionary meaning. They concluded that the new gTLD applicant had not violated any LRO element where the complainant had adopted a common dictionary term as a trademark, regardless of acquired distinctiveness or its strength as an arbitrary mark. .COACH: Coach, Inc. v. Koko Island, LLC aka Dozen Donuts, LLC aka Donuts Inc., WIPO Case No. LRO2013-0002 (Aug. 14, 2013) Coach, Inc., owner of the COACH trademark in connection with luxury handbags and accessories, filed an LRO complaint against Koko Island, LLC, a subsidiary of Donuts Inc. (Donuts). Donuts had applied for more than 300 new gTLD strings, including the .COACH gTLD. The applicant asserted that its target market for the .COACH gTLD was athletic coaching and training subject matter. Its primary argument was that Coach could not object to the .COACH string because the string had a common dictionary meaning beyond the scope of Coach’s trademark rights and to terminate the application would severely undermine the right of free speech. In making its determination, the panel applied the tripartite thresholds set forth in the gTLD Applicant Guidebook for LRO complaints. In addition, LRO panels consider eight non-exhaustive factors in determining whether the applied-for string meets one or more of these three grounds for sustaining the objection:1 1 Readers should compare the above-referenced LRO standards with those used for another type of ICANN new gTLD objection called “String Confusion.” There are some similarities between String Confusion Objections and LROs, but there are numerous differences as well. Among other things, despite the presence of the word “confusion” in the title, many of the factors that typically are found in a traditional trademark likelihood-of-confusion analysis (and that are mirrored in LRO, as shown above) are not found in String Confusion Objections, the latter being much more limited in scope. Specifically, String Confusion examines only the visual, auditory and connotative characteristics of the two strings at issue; it does not delve into many other facets, such as examining each party’s respective rights in the mark as a result of use in commerce. It also does not consider the applicant’s intent, or any “fair use” types of concerns. Thus, String Confusion focuses only on the perceived similarity between the two strings. See, e.g., ICANN New gTLD Applicant Guidebook, Module 3, at 3-18. String Confusion Objections can best be thought of as being a similar—though more limited—“cousin” to LROs, akin to how passing off or unfair competition claims in common law would relate to more formalized
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i. Identity between the new gTLD string and the objector’s trademark in
appearance, phonetic sound and meaning. ii. Bona fide acquisition and use of the mark by the objector. iii. Recognition in the relevant sector of the public of the gTLD string, as the mark
either of the objector or of the applicant or a third party. iv. Intent in applying for the gTLD, including whether the applicant, at the time of
application for the gTLD, had knowledge of the objector’s mark, or could not have reasonably been unaware of that mark, and including whether the applicant engaged in a pattern of bad-faith conduct in applying for gTLDs that were identical or confusingly similar to the trademarks of others.
v. Use of, or demonstrable preparations to use, the gTLD string in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise by the objector of its trademark rights.
vi. Trademark or other intellectual property rights held by the applicant in the gTLD string; whether any acquisition of such rights in the sign, or use of the sign, has been bona fide; and whether the purported or likely use of the opposed string by the respondent is consistent with such acquisition or use.
vii. The name of the gTLD applicant, particularly whether the applicant has been commonly known by the gTLD string, and if so, whether any purported or likely use of the gTLD by the applicant is consistent therewith and bona fide.
viii. Any likelihood of confusion with the objector’s trademark as to the source, sponsorship, affiliation or endorsement of the gTLD string based on the intended use of the gTLD by the applicant.
In Coach, the panel considered each of these eight factors. Although it agreed that Coach had proven valid rights in its COACH trademark, the panel recognized that the .COACH new gTLD string consisted of a common dictionary term that could readily be put to use to describe goods, services and activities other than those related to the COACH trademark. Ultimately, the panel concluded that, given the many varying definitions of the term “coach,” no appreciable number of Internet users would confuse the proposed string with the famous COACH trademark. Thus, it found there would be no “impermissible likelihood of confusion,” even if there might be some de minimis confusion between the COACH trademark and the .COACH new gTLD string. The panel therefore ruled in favor of the applicant and allowed the .COACH application to proceed through the program toward contracting and delegation.
trademark infringement mechanisms found under the Lanham Act (or similar statutes). For more information on String Confusion Objections (and to view copies of decisions), visit the American Arbitration Association’s International Centre for Dispute Resolution String Confusion Objections homepage.
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.LIMITED: Limited Stores, LLC v. Big Fest, LLC, WIPO Case No. LRO2013-0049 (July 15, 2013) Limited Stores, LLC, owner of the trademark THE LIMITED in connection with fashion retail clothing stores, filed an LRO complaint against Big Fest, LLC, a subsidiary of Donuts Inc. The applicant asserted that its .LIMITED new gTLD string targeted “a very broad and diverse group of registrants that may include companies and non-profits in multiple international and intra-country jurisdictions that use the ‘limited’ term as a corporate or organizational identifier.” The applicant’s consistent primary argument was that its .LIMITED new gTLD string had a common dictionary meaning beyond the scope of Limited Stores’ trademark rights, and to terminate the application would severely undermine the right of free speech. In weighing the eight non-exhaustive factors, and opining on the ultimate question of whether the .LIMITED new gTLD string would create an impermissible likelihood of confusion with the trademark THE LIMITED, the panel first emphasized that “the definite article ‘the’ makes a great deal of difference.” “Without the ‘the’ in the string,” the panel continued, “[the] [a]pplicant’s claim to legitimacy is much more plausible and stronger, and the prospect of confusion is reduced.” The panel further noted that the objector could not “escape the reality that ‘limited’ is a common word with various meanings, and as such it is possible for someone to make a legitimate use of the string.” Consequently, it found that THE LIMITED trademark was similar, but not identical to, the .LIMITED new gTLD string. In addition, the panel observed that there was “simply no viable evidence in the record to suggest that significant source confusion—among consumers or non-consumers who use the Internet—will ensue,” as well as “myriad legitimate third-party uses of the term ‘limited’ which cause no confusion with [the] [o]bjector’s THE LIMITED mark” sufficient to justify an “impermissible likelihood of confusion,” as required under the LRO. The panel therefore ruled in favor of the applicant and allowed the .LIMITED new gTLD string to proceed through the application and delegation process. .EXPRESS: Express, LLC v. Sea Sunset, LLC, WIPO Case No. LRO2013-0022 (July 9, 2013) The objector in this case is the owner of the trademark EXPRESS, used in connection with fashion retail stores, clothing and accessories. The applicant, another subsidiary of Donuts Inc., asserted that the .EXPRESS string would be attractive to a variety of Internet users. Just as in the .COACH and .LIMITED cases, the applicant’s primary argument was that Express, LLC could not object to the .EXPRESS string because the string had a common dictionary meaning beyond the scope of the objector’s trademark rights, and to terminate the application would severely undermine the applicant’s free speech rights.
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The panel ultimately decided that while the objector owned rights in the EXPRESS trademark for use in connection with apparel and fashion accessories, and that while that trademark was 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 [the applicant] as a gTLD. There are a wide range of second-level domains that might be used in association with the <.express> gTLD string that would not give rise to a likelihood of confusion with [the objector’s] trademark.…” The panel further recognized that should the applicant successfully secure the gTLD, the objector might 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,” the panel noted, “[the objector] faces this risk because it adopted a common word in the English language for its trademark. It may be difficult to protect that term outside its channel of trade.” Thus, the panel concluded that “ICANN could have but did not adopt a rule precluding adoption of gTLDs using common dictionary or generic terms that may also serve as trademarks. [The applicant] has applied for a gTLD that is a commonly used term with a variety of meanings in the English language. The Panel does not regard the possibility that some second-level domain name registrants may create domain names that seek to take unfair advantage of [the objector’s] trademark as a sufficient ground for finding that [the applicant’s] intended use of the <.express> gTLD creates an impermissible likelihood of confusion with [the objector’s] trademark.” The panel therefore ruled in favor of the applicant and allowed the .EXPRESS string to proceed through the application and delegation process. .DIY: Scripps Networks, LLC v. Charleston Road Registry Inc., WIPO Case No. LRO2013-0019 (Aug. 12, 2013) The objector is the owner of the DIY trademark, used in connection with “lifestyle-oriented content” for television and online, mobile and print media—most notably, DIY Network television programming. The applicant, a subsidiary of Google Inc., asserted that the .DIY string was targeted to the “do-it-yourself” market, and that “diy” was “a common acronym for the phrase ‘do-it-yourself.’” Its primary argument was that DIY was a commonly used, generic acronym for the phrase “do-it-yourself”; that the objector’s rights in the DIY mark were circumscribed as a result of these generic uses of the term; that using the term in its generic sense did not interfere with the objector’s trademark rights; and that an open registry using the generic term would increase consumer choice and competition in the marketplace for “DIY” goods, services and information and would do so without infringing, impairing or taking unfair advantage of the objector’s trademarks.
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While the panel conceded that the objector had demonstrated rights in the DIY trademark, it found that “‘DIY’ is a commonly used, generic acronym for the phrase ‘do it yourself’, as found in dictionaries, online and print media, Internet domain names, retail industry market reports, and Internet search engine results. … Where a mark consists of a dictionary word or acronym, as it does here, the scope of trademark protection must necessarily be construed narrowly to avoid giving a company exclusive rights to use a term in its generic sense.” Interestingly, in this case, the panel noted that “the issue of the generic quality of the acronym ‘DIY’ ha[d] arisen previously in the context of a dispute concerning the domain name <diy.biz>. In 2002, a UDRP panel dismissed the complaint brought by a United Kingdom company claiming rights in the unregistered mark DIY, remarking, ‘it is in practice impossible to run a business in do-it-yourself products without using the letters DIY in a wholly generic, descriptive way.’” Here, the panel found similarly that a new gTLD intended for use by DIY manufacturers, retailers and enthusiasts might appropriately, even necessarily, use the generic acronym for the very products and activities in which they were interested. Thus, the panel concluded that the applicant’s intended use of the applied-for new gTLD—which was composed solely of the generic acronym DIY—would not create an impermissible likelihood of confusion with the objector’s DIY marks. It therefore ruled in favor of the applicant and allowed the .DIY string to proceed through the application and delegation process. As the four cases discussed above illustrate, the LRO panels accorded significant weight to the fact that these strings involved generic terms that also functioned as trademarks in connection with a limited scope of goods and services, elevating free expression in the form of open TLDs over the limited trademark rights of the objectors. Abbreviated Trademarks That Overlap with Dictionary Terms Another significant category of LRO cases involved strings purportedly representing trademarks, in an abbreviated, truncated or otherwise shortened form, that overlapped with dictionary terms. Several key cases in this category are discussed below. .BLUE: Blue Cross & Blue Shield Ass’n v. Afilias Ltd., WIPO Case No. LRO2013-0004 (Aug. 16, 2013) The objector, Blue Cross, is the owner of several BLUE and numerous BLUE-formative trademarks used in connection with various services in the field of health and wellness. The applicant, Afilias, had a large portfolio of applications for new gTLDs, including a number of color-related TLDs (e.g., .BLUE, .RED, .PINK, .BLACK). In assessing whether the .BLUE string would cause an impermissible likelihood of confusion with the objector’s trademarks, the panel cited the following observations
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made by the panel in Right At Home, Inc v. Johnson Shareholdings, Inc (WIPO Case No. LRO2013-0030) (gTLD string <.rightathome>): “Procedure, Section 3.5.2 [of the gTLD Applicant Guidebook]. The use of the terms ‘unfair’, ‘unjustifiably’, and ‘impermissible’ as modifiers, respectively, of ‘advantage’, ‘impairs’, and ‘likelihood of confusion’ in Section 3.5.2 suggests that there must be something more than mere advantage gained, or mere impairment, or mere likelihood of confusion for an Objection to succeed under the Procedure. It seems, rather, that there must be something untoward—even if not to the level of bad faith—in the conduct or motives of [the applicant], or something intolerable in the state of affairs which would obtain if the [applicant were] permitted to keep the [s]tring in dispute.” The panel in Blue Cross also noted that “where the … gTLD string consists of nothing more than one of the more commonly used generic expressions in the English language, … it may be difficult for an objector to persuade an expert panel that the gTLD string on its own, without more, will perform any source indication function.” Thus, “the vast majority of Internet users coming across a <.blue> gTLD would have no reason to assume that it was intended as anything other than a reference to the common English word ‘blue’.” As a result, the panel found that “the [a]pplicant proposes to use the dictionary term ‘blue’ in accordance with its dictionary meaning, and although the [a]pplicant may have anticipated some confusion arising at the second level in its proposed <.blue> gTLD, the [p]anel does not believe there is any evidence that the [a]pplicant will or may use the gTLD dishonestly, or otherwise in bad faith.” It concluded that the objector had not shown “that the potential use of the applied-for <.blue> gTLD by the [a]pplicant creates an impermissible likelihood of confusion between the <.blue> gTLD and any of the [o]bjector’s ‘Blue’ marks.” The panel therefore ruled in favor of the applicant and allowed the .BLUE string to proceed through the application and delegation process. .MOTO: Motorola Trademark Holdings LLC. v. United TLD Holdco. Ltd., WIPO Case No. LRO2013-0054 (Aug. 8, 2013) Here, the fact pattern was similar to that in the Blue Cross case. The objector owns trademarks for MOTO, as well as MOTO-formative marks such as, for example, MOTOROLA and HELLOMOTO. According to the applicant, “The term ‘moto’ is a generic and broadly used word that holds particular affinity for people and organizations interested and engaged in the world of motorcycles and other motor-equipped vehicles.” Interestingly, in this case, the panel accorded significant weight to an expert report submitted by the applicant, which presented the testimony of a linguistic expert who opined on the generic meaning of “moto” in connection with motorcycles and other motorized vehicles. It also accorded much weight to prior UDRP panel findings that “moto” was a generic or common name referring to motorcycles. Thus, the panel
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concluded that while the.MOTO string was nearly identical to the MOTO trademarks in appearance and sound, their meanings were substantially different. The panel noted that the objector’s MOTO and MOTO-formative marks were being used “to protect goods and services in classes 9, 35, 37, 38 and 42, which are not related to motorcycles and motor vehicles, while the applied-for gTLD has a chiefly generic and common meaning for motorcycles and motor-vehicles.” Therefore, “assuming that future second level domains in <.moto> would largely reflect such affinity or interests,” the panel did not see “any special reason to conclude that [the] [a]pplicant’s intended use would create an impermissible likelihood of confusion with [the] [o]bjector’s mark as to the source, sponsorship, affiliation or endorsement of the gTLD.” The panel therefore ruled in favor of the applicant and allowed the .MOTO string to proceed through the application and delegation process. Additional cases in a similar vein included .ZONE (AutoZone Parts, Inc. v. Outer Falls, LLC), in which the objection was ultimately withdrawn; .PIN (Pinterest, Inc. v. Amazon EU S.à.r.l.), in which the applicant prevailed; and .FOOD (Scripps Networks Interactive, Inc. v. Wild Orchard, LLC and Scripps Networks Interactive, Inc. v. Dot Food, LLC), in which both applicants prevailed. .DIRECT: DirecTV Group Inc. v. Dish DBS Corp., WIPO Case No. LRO2013-0005 (July 29, 2013) This case, which arguably falls in the category of “abbreviated trademarks overlapping with dictionary terms,” represents one of only four cases in which the objector prevailed. Unlike the other cases in this category, however, this case involved two direct competitors in the satellite television market. The objector is the owner of the well-known DIRECTV and DIRECT-formative trademarks in connection with satellite television services. According to the applicant, a subsidiary of Dish Network Corporation, the objector’s direct competitor, “DISH provides programming and content ‘direct’ to consumers, direct to their homes, direct to their screens. DISH also will provide telecommunications services ‘direct’ to consumers. DISH offers consumers direct choice, direct value, and direct service. ‘Direct’ service has been a key element of DISH’s offerings since its founding. That is why DISH selected <.direct> as a gTLD.” The objector viewed the application as “a clear case of underhanded business practices by a competitor.” The panel ultimately agreed. “[The applicant], a purveyor of satellite television services, is seeking to use the word ‘direct,’ which is the dominant part of the family of marks owned and used by its chief competitor in the satellite television business, [the] [o]bjector.” Therefore, on the record before it, the panel unanimously concluded that the applicant “likely chose the <.direct> string for the sole purpose of disrupting the business of [the] [o]bjector.”
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More specifically, the panel concluded that the potential use of the applied-for gTLD would take unfair advantage of the distinctive character or the reputation of the objector’s registered marks, unjustifiably impair the distinctive character or the reputation of the objector’s mark, and otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark. The panel further concluded that “there is something untoward in [the applicant’s] motives here, and that an intolerable state of affairs would obtain if [the applicant’s] application for the [s]tring were allowed to stand.” Critically, in this case, the panel found that there was recognition in the relevant sector of the public of the sign corresponding to the gTLD (i.e., DIRECT) as the mark of the objector—even though the sign was not identical to the objector’s DIRECTV mark and even though the word “direct” was generic in certain contexts and was contained in other trademarks not associated with the objector. This determination can likely be explained by the panel’s overall bad-faith finding with respect to the applicant’s motives in applying for the string: “In contrast to applying for a gTLD string on the basis of its generic or dictionary meaning, which LRO panels regard as permissible in many circumstances (see Express, LLC v. Sea Sunset, LLC…), this [p]anel finds that [the applicant’s] likely intention was to target the trademark of a direct competitor.” Thus, the panel concluded, “[t]he parties are in direct competition for the satellite television market, and the dominant word in [the] [o]bjector’s family of marks is the word ‘direct.’ Under these circumstances, … consumer confusion would be the likely result if [the applicant] were allowed to keep and use the <.direct> string.” As a result of these unusual anticompetitive circumstances, the panel ruled in favor of the objector and directed that Dish’s application for .DIRECT be terminated. As in the cases that involved strings comprising dictionary terms, in these cases the LRO panels accorded significant weight to the fact that the strings involved generic terms that also operated as trademarks in connection with a limited scope of goods and services, elevating free expression in the form of open TLDs over the limited trademark rights of the objectors. The one exception in this context was the .DIRECT case, which involved an atypically high level of bad faith on the part of the applicant, which clearly sought the string in order to disrupt its direct competitor. Other Cases of Note Dot Trademarks As noted above, several LRO cases involved objectors that had obtained trademark registrations primarily for the purpose of supporting an application for a new gTLD and/or an LRO, with little or no demonstrable prior use. A few examples of cases involving “dot trademarks” are discussed below.
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.MUSIC: DotMusic Ltd. v. DotMusic Inc., WIPO Case No. LRO2013-0060 (Aug. 26, 2013) DotMusic Ltd. filed an LRO against every other application for .MUSIC (seven LROs in total). The basis of its claims was two Community Trade Mark registrations, for .MUSIC & Design and DOTMUSIC & Design, both in connection with its planned launch of a .MUSIC new gTLD. Of key significance in this decision (and similarly in the other .MUSIC decisions) was the panel’s finding that the objector lacked enforceable rights in the term “.music”: “[T]he claimed trademark registrations utilize a design element, and do not afford trademark rights to the words alone. Similar[ly], the action by the United States Patent and Trademark Office (the ‘USPTO’) to refuse registration of .MUSIC and DOTMUSIC as trademarks is based on the conclusion that the name is generic and does not serve as trademarks for a domain name registry relating to music. This situation is readily distinguishable from a situation where the senior user has established trademark rights in a brand and is seeking to prevent the use of a gTLD that matches its protectable brand. Here, the [o]bjector lacks a protectable brand in ‘.music’ (or ‘dotMusic’) per se because they are generic terms for its claimed services.” Ultimately, as a result, the panel denied the objection. .TUNES: DotTunes Ltd. v. Amazon EU S.à.r.l., WIPO Case No. LTO2013-0065 (July 14, 2013) DotTunes Ltd., a related entity of DotMusic Ltd., filed a similar LRO against the other applicant for .TUNES (Amazon EU S.à.r.l.). Just as in the .MUSIC cases, the basis of DotTunes’ claims was a Community Trade Mark registration, in this case for .TUNES & Design, in connection with its planned launch of a .TUNES new gTLD. Similarly, the panel here denied the objection: “The word ‘tunes’ is … a generic and descriptive mark when used in relation to music, which is the intended use of both the [o]bjector and the [a]pplicant. 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.… Given the generic nature of the sign and the limited use of the [o]bjector’s mark, … there is little or no likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the gTLD.” .SONG: DotSong Ltd. v. Amazon EU S.à.r.l., WIPO Case No. LRO2013-0064 (July 22, 2013) DotSong Ltd., which, unsurprisingly, is also a related entity of DotMusic Ltd., filed a similar LRO against the other applicant for .SONG (Amazon EU S.à.r.l.). Just as in the .MUSIC and .TUNES cases, the basis of DotSong’s claims was a Community Trade
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Mark registration, for .SONG & Design, in connection with its planned launch of a .SONG new gTLD. Here, as in those .cases, the panel denied the objection for substantially the same reasons: “The [o]bjector’s trademark .SONG is identical to the gTLD <.song>. The word ‘song’ is, however, a generic and descriptive mark when used in relation to music, which is the intended use of both the [o]bjector and the [a]pplicant. The .SONG trademark as registered includes many other elements, including colors, a speech bubble and the image of a person wearing headphones. None of these are similar to the <.song> gTLD. It is in fact likely that an application for ‘SONG’ by itself as a trademark without these additional features would have been rejected for registration in the context of music. … Given the generic nature of the sign and the limited use of the [o]bjector’s mark, … there is little or no likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the gTLD.” .VIP: I-REGISTRY Ltd v. VIP Registry Pte Ltd, WIPO Case No. LRO2013-0016 (Aug. 20, 2013) This case similarly involved trademark rights obtained “as part of a strategy to support the application for the <.vip> string.” By contrast with the .MUSIC, .TUNES and .SONG cases, the trademark here was for the word mark VIP, without design or figurative elements. Nonetheless, the panel found that “the manner in which the [o]bjector and the [a]pplicant are using ‘VIP’ on their websites reflect[s] their preparations to use the term in the applied-for gTLD string not as a source identifier but, rather, in its descriptive sense, that is, as the acronym for ‘very important persons’.” Thus, again, the panel concluded that the applicant’s use of the gTLD would not create a likelihood of confusion with the objector’s mark, and it rejected the objection. As these cases show, regardless of the questionable nature of the trademark rights asserted, if the gTLD involved had a generic meaning, the panel was loath to uphold the objection. Internationalized Domain Names (IDNs) and Foreign Marks One interesting facet of the LROs involved IDNs and foreign-language marks. Several of these cases, which were not substantively different from the other LRO cases, are briefly discussed below. .微博 [Mandarin Chinese for “microblog”]: Sina Corp. v. Tencent Holdings Limited, WIPO Case No. LRO2013-0040 (Aug. 28, 2013) In this case, the objector is a Chinese online media company that operates micro-blogging services in China, including 503 million registered users through its WEIBO.COM website. “Weibo” is the Chinese pinyin transliteration of 微博; the objector
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owns registered trademarks for 微博 in China. The applicant, which is also an online services company, launched a competing microblogging service including about 373 million registered users. The applicant owns trademarks for TENCENT 微博 T.QQ.COM & Device and TENCENT WEIBO & Device. Both sets of rights pre-date either party’s application for the .微博 string. This case is similar to other cases examined above in that the applicant’s primary contention was that 微博 is a generic or descriptive word for microblog service, describing functions and characteristics of microblog service. However, unlike in the majority of cases where a gTLD string had a generic meaning, the panel here found that “the [a]pplicant’s potential use of the term ‘微博’ as a gTLD unjustifiably impairs the distinctive character of the [o]bjector’s mark 微博 that is currently legitimately registered.” The applicant intended to operate the string in a closed manner for its own internal use. Thus, this case could perhaps best be analogized to the .DIRECT case, also involving direct competitors, where the applicant would have operated the TLD in a closed manner rather than as an open generic TLD, and it resulted in a similar outcome—the objector prevailed. Interestingly, however, in this case, one of the three panelists filed a dissenting opinion that would have denied the objection on the basis that the string was generic when used in connection with the proposed microblogging meaning and use. .WEIBO: Sina Corp. v. Tencent Holdings Limited, WIPO Case No. LRO2013-0041 (Aug. 28, 2013) This case was nearly identical to the .微博 case—the only distinction was the actual string involved, .WEIBO, which is the pinyin translation of .微博. The .WEIBO decision itself was essentially the same as the .微博 decision, including the same dissenting opinion. .KOM: Regtime Ltd. & Legato Ltd. v. VeriSign Sarl, WIPO Case No. LRO2013-0066 (Aug. 23, 2013) Regtime Ltd., the objector in this case, owns the Russian trademark KOM in connection with telecommunication and various other services. In essence, the objector ran an alternative root zone in order to offer domain name registrations in a pseudo-.KOM TLD to Russian-speaking Internet users before IDN versions of the popular .COM and .NET TLDs became available. The applicant, an affiliate of VeriSign, applied for .KOM as the Cyrillic transliteration of its well-known .COM TLD. Ultimately, finding that the KOM trademark was generic with respect to domain registration services and that consumers would be likely to understand the trademark as the Cyrillic transliteration of the .COM TLD, the panel denied the objection. .OPГ: Regtime Ltd. & Legato Ltd. v. Public Interest Registry, WIPO Case No. LRO2013-0067 (Aug. 23, 2013)
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This case was similar in every material respect to the .KOM case—the only distinctions being that the string involved, .OPГ, is the Cyrillic transliteration of .ORG as opposed to .COM and the applicant, Public Interest Registry, operates the well-known .ORG TLD, whereas VeriSign operates .COM. Otherwise, the findings and conclusions of the panel, and its ultimate denial of the objection, were essentially identical. Brand vs. Brand Cases One final category of LRO cases that are noteworthy is the few outlying cases involving an objector and an applicant that both have arguably legitimate trademark rights overlapping with the applied-for string. These cases generally involved parties with a history of infighting regarding their competing trademark rights across the globe. They are briefly examined below. .DELMONTE: Del Monte Corp. v. Del Monte International GmbH, WIPO Case No. LRO2013-0001 (July 29, 2013) In this case, each party owned trademark rights in certain jurisdictions around the world for the DEL MONTE mark. Notably, the applicant possessed rights only in South Africa, whereas the objector possessed rights in the United States, Europe and several other regions. Evidently, these circumstances arose when the U.S.-based Del Monte licensed various rights in other jurisdictions, including to the applicant in South Africa. The panel found that despite these arrangements, the objector was the ultimate source of goods in the mind of the general public vis-à-vis the DEL MONTE trademark. Ultimately, despite the somewhat convoluted history between the parties, the panel found, “The Objector has established at least a prima facie case that the Respondent’s intended use of the applied-for gTLD, to the exclusion of the Objector and the other licensees, is likely to unsettle the delicate balance struck by the competing interests of the parties under the licensing arrangements and, more importantly, is likely to create an impermissible likelihood of confusion with the Objector’s Trade Mark as to the source, sponsorship, affiliation or endorsement of the applied-for gTLD.” Thus, the Panel upheld the objection and directed that the Respondent’s .DELMONTE application be terminated. A further development unique to this case was the appeal by the applicant to a U.S. federal court challenging the LRO determination. Del Monte International (DMI), the Respondent in the LRO, filed suit in the United States District Court for the Central District of California seeking a declaration that it had bona fide rights in the DEL MONTE mark, that it was not in violation of the Anticybersquatting Consumer Protection Act (ACPA) as a result of its application for the .DELMONTE gTLD, and that the gTLD would not create an impermissible likelihood of confusion with the other Del Monte trademarks. The court held that although there was a case or controversy under the
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ACPA, DMI failed to state a claim for relief under the ACPA. The court pointed to several insufficiencies in the claim, most notably that ICANN was not a “domain name registration authority” within the meaning of the ACPA and that the TLD was never delegated, and therefore could not be considered as having been “registered” within the meaning of the ACPA—although the court assumed, without deciding, that the .DELMONTE TLD was a “domain name” within the meaning of the ACPA. .MERCK: Merck KGaA v. Merck Registry Holdings, Inc., WIPO Case No. LRO2013-0009 (Sept. 24, 2013); Merck & Co. v. Merck KGaA, WIPO Case No. LRO2013-0069 (July 31, 2013) Similar in many respects to the .DELMONTE case, these cases involved competing rights holders operating in different jurisdictions globally. The two Merck entities had shared a common origin in Germany and later split into two entities—one based in the United States and having rights in the United States and Canada, the other based in Germany and having rights in the rest of the world, all pursuant to a coexistence agreement. These cases also reflect the continuation of longtime infighting between the Merck entities over global trademark rights, and, in particular, usage of the MERCK trademark on the Internet. Both entities applied for, and objected to the other’s application for, the .MERCK string. Unlike in the .DELMONTE case, however, given the finding that each party possessed arguably legitimate rights to the .MERCK string, each .MERCK LRO resulted in the applicant’s prevailing. Thus, both Merck entities’ applications for the .MERCK string were permitted to proceed, requiring further dispute resolution by the parties. The parties continue to engage in discussions between themselves and with ICANN to determine which entity, if either, will ultimately be delegated the .MERCK string. Round One Takeaways for Brand Owners, and Lessons for Round Two The LROs demonstrated a number of important lessons for brand owners in the new gTLD space. First, proving bad faith by an applicant before its registry launches is extremely difficult, as generally the only evidence of intent is the language of the application itself. In addition, the LROs demonstrated that prior success in UDRP proceedings does not necessarily result in success in the LROs. The latter have a much higher evidentiary standard (more akin to the Uniform Rapid Suspension (URS) System), and the lack of “use” of the TLD prior to delegation is a significant obstacle in demonstrating whether the applicant’s stated intentions are bona fide. In addition, the brand owner will likely lose the LRO unless the trademark involved as the basis for the LRO is fanciful—in other words, where the trademark asserted is also a common or dictionary term in other contexts, the free expression rights to these meanings will likely trump the asserted trademark rights. Thus, brand owners with important marks that are also dictionary terms should apply for those TLDs in the next
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round, rather than reactively relying on the LRO process to prevent another party from running a generic TLD that also consists of the mark. Finally, the LRO process, and the wider new gTLD objection landscape, have demonstrated extremely limited means for appealing panel decisions. The limited options for appealing such decisions include Requests for Reconsideration, the Independent Review Panel process and potentially String Confusion Inconsistency review; however, each of these mechanisms carries with it fundamental flaws. In addition, the Post-Delegation Dispute Resolution Procedure (PDDRP) is also not a realistic mechanism to address any specific abuse resulting from infringing registrations in a TLD, as it requires systematic and intentional complicity in the infringement by the registry operator, which is highly unlikely to occur or be proven. Ultimately, lawsuits are a possible avenue for appeal, but there is very little precedent so far in the new gTLD arena and outcomes would involve significant uncertainty and risk, as demonstrated by the .DELMONTE lawsuit. Additional information regarding Legal Rights Objections may be found at the sources listed below. ICANN, Objection & Dispute Resolution. ICANN, Objection Determinations. WIPO, Legal Rights Objections Under ICANN’s New gTLD Program. WIPO Arbitration and Mediation Center End Report on Legal Rights Objection Procedure 2013 (December 2013).
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ANNEX Table 1 String Applicant Objector Outcome
ACADEMY Half Oaks, LLC Academy, Ltd., d/b/a Academy Sports + Outdoors
Applicant Prevailed
AXIS Saudi Telecom Company Axis Communications AB/Axis AB Terminated
BIO Starting Dot Biotechnology Industry Organization
Applicant Prevailed
BLUE Afilias Limited Blue Cross and Blue Shield Association (“BCBSA”)
Applicant Prevailed
CAM Dot Agency Limited AC Webconnecting Holding B.V. Applicant Prevailed
CAM United TLD Holdco Ltd. AC Webconnecting Holding B.V. Applicant Prevailed
COACH Koko Island, LLC aka Dozen Donuts, LLC aka Donuts, Inc
Coach, Inc. Applicant Prevailed
DELMONTE Del Monte International GmbH Del Monte Corporation Objector Prevailed
DIRECT Dish DBS Corporation The DirecTV Group Inc. Objector Prevailed
DIY Charleston Road Registry Inc. Scripps Networks, LLC Applicant
Prevailed
ECO Top Level Domain Holdings Limited planet.ECO, LLC Applicant
Prevailed
EMERCK Merck KGaA Merck & Co., Inc. Applicant Prevailed
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