First LRO decisions have just been published on the WIPO website (1).
As you know, the WIPO is the exclusive provider of the LRO which is a way for trademark owners to file a complaint against a new gTLD’s application which appears to constitute in particular an infringement to its trademark. The objections were relating to the following new top-level domain (TLD).
The objections were relating to the following new TLD:
- SC Johnson’s .rightathome
- Vipspace Enterprises’ .vip
- Google’s .home
Objectors to .home, .vip, and .rightathome all lost their cases.
SC Johnson’s .rightathome:
The applicant is a subsidiary of the well-known cosmetics company SC Johnson, which uses “Right@Home” as a brand since 2008. SC Johnson is a manufacturer of various household products. The objector is Right At Home, an international provider of in-home elderly care services which uses “RIGHT AT HOME” as a brand since 1995.
Complainant argued that the applicant’s use of its proposed .rightathome TLD would cause confusion among consumers.
In this case, the panelist has discussed each of the 8 points described in ICANN’s new gTLD Applicant Guidebook, and had to decide whether the evidence favors the objector or the applicant. Panel concludes that the applicant won on five out of the eight criteria.
The panelist rejected the objection on three main elements.
Firstly, the parties target their services to separate types of customers. There is no likelihood of confusion in different markets because it’s unlikely internet users will think the gTLD belongs to Right At Home. Secondly, the term “Right At Home” is also used by other companies in addition to the Complainant and Respondent. Finally, the applicant did not apply for .rightathome in bad faith.
Vipspace Enterprises’ .vip:
The objection was filed by one .vip applicant against another.
The respondent is Vipspace and the objector is I-Registry. The latter’s parent company, I-content Ltd, is the registered proprietor of the VIP word mark. The parent company granted the objector an exclusive license to use the mark. Vipspace Enterprises is the registered proprietor of the DOTVIP Community Trade Mark.
The panelist’s decision focuses on the generic nature of the string in question. Both trademarks were filed for the word “VIP” meaning “Very Important Person” for services activities providing to “important persons”. These trademarks are thus descriptive trademarks.
The panel found that the intended use of the gTLD will lead to it being seen “first and foremost as a descriptive term describing the purpose and characteristics of the domain”, adding that confusion with the objector’s mark was not likely.
The objector, Defender Security Company, is a home security company and has also applied for .home and objected to nine of its competitors for the string. The applicant was Charleston Road Registry which is Google’s domain registry.
The panelist considered each of the home-related marks identified in the complaint and concluded that the objector failed for lack of evidence that complainant held valid rights to the said marks.
Indeed the Community trademark cited in the complaint did not belong to the objector but to one of its subsidiary and the Complainant was not able to demonstrate a subsidiary link between the companies. For the US trademarks cited in the complaint, which are not registered, objector “fails to attach any evidence of the factor that would tend to established secondary meaning in support of rights”. Indeed Panel noticed that in cases involving claimed common law or unregistered trademarks, the said mark may have a secondary meaning or distinctiveness. Objector failed for lack of evidence that he is the rightholder of the said marks.
Moreover, the panelist considers that: “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”.
More than 60 LRO are actually pending before the WIPO Arbitration and Mediation Center, and additional decisions are expected soon.
(2) http://archive.icann.org/fr/topics/new-gtlds/rfp-clean-19sep11-fr.pdf section 3.5.2