United-States: court says cybersquatting protection doesn’t apply to gTLD application

business-dreyfus-81-150x150On February 5, 2014, the District Court of California ruled on a Legal Rights’ Objection (LRO) regarding the <.delmonte> gTLD (generic Top-Level Domain). The LRO was a protection awarded to trademark holders in ICANN’s New gTLD Program from June 2012 to March 2013. Trademark owners could file objections to new gTLD applications before the World Intellectual Property Organization (WIPO) to challenge the depositor’s rights to the gTLD.


Here, the court addressed a request to challenge a decision made by WIPO on the <.delmonte> in July 2013. The case involved two companies named Del Monte, a Delaware entity and its licensee, a Swiss company. The Swiss entity applied for the <.delmonte> gTLD as a license holder of the “DEL MONTE” trademark. However, the application was successfully contested by the Delaware entity by a LRO. In response, the Swiss company sued in US Federal Court to obtain the rights to the gTLD at issue and the Delaware company to give up its LRO.


The Swiss entity based its complaint on both the Anti-cybersquatting Consumer Protection Act (ACPA) and “reverse domain name hijacking”. Both of these claims involve domain names. The main question here is whether the claims can also apply to new gTLD applications.


Such a requirement begs the question of the new generic top-level domain’s registration. The court therefore questioned whether ICANN could be considered as a domain name registration authority. Texts and Case law diverge on the matter. In this case, ICANN was considered “much like a traditional domain name registrar” but the court’s analysis remained inconclusive for the new gTLDs.


It then turned to the registration and use of the new generic top-level domain. The court said that the <.delmonte> gTLD was never properly registered. Therefore, the ACPA’s requirement of “registration, trafficking or use” to constitute cybersquatting could not be asserted. As a result, the Delaware entity maintained the right it acquired with the LRO to the <.delmonte> gTLD.


This decision also highlights the fact that the ACPA was not written to take into account the new gTLDs. A reform of the Act should be considered to adapt it to ICANN’s new top-level domains.