Of the three dispute providers selected by ICANN, WIPO (the World Intellectual Property Organization) is the first out of the gates to hand down decisions against legal rights objections to gTLDs and in favor of applicants.
Of note, WIPO recently rejected objections against the .Limited gTLD, which was applied for by Donuts, and an objection against .RightAtHome, which was applied for by S.C. Johnson.
In the case of .RightAtHome, the objector was unable to prove that the gTLD would create an unfair likelihood of confusion with its own RIGHT AT HOME trademark. The use of the word “unfair” in this standard means that it must be proven that the applicant exhibits some improper motive in applying for and using its .RightAtHome gTLD.
While the Panelist acknowledges that the trademarks of the parties are identical in sound and very close in appearance, the Panelist agreed with the applicant’s assertion that different businesses can each use the identical trademark for different industries where each has legitimate rights to their respective mark.
The Panelist also agreed that the “peaceful coexistence of the parties’ respective marks” over the past few years and the fact that the listed gTLD applicant has permission [from its parent company, SC Johnson] to use the [email protected] mark for purposes of this gTLD application should allow the application for .RightAtHome to continue.
In the case of .Limited, Limited Stores filed an objection against Donuts on the grounds that “the mark THE LIMITED has been registered in numerous countries and jurisdictions to identify and distinguish its clothing and accessories.” Donuts’ response was the “limited” is a generic term and “its second level names will be attractive to a variety of Internet users.”
The WIPO Panelist decided that Donuts can continue with its .Limited application since, ultimately, the extension doesn’t have the article “The” before the word “Limited”. The panelist noted that the “[New gTLD Applicant] Guidebook 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 Applicant, or something intolerable in the state of affairs which would obtain if Applicant were permitted to keep the String in dispute.”
So far, it looks like the rubric in the New gTLD Applicant Guidebook is producing unambiguous results and the WIPO Panelists are taking a rather conservative approach that favors gTLD applicants and the ICANN process. Will that continue? We can only wait and see.
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