Last week was a big one for domain news. From AdWeek to The Guardian it seemed like everyone had an opinion on the .Sucks domain and its possible effect on brands and businesses. We were thinking about it too -- will the domain stay true to its mission to become a place where customers can vent? Time will tell.
The U.S. Dist. Court in Central California issued a recent decision regarding whether a New gTLD is a "domain" for the purposes of analyzing the Anti-Cybersquatting Protection Act (ACPA) - a case of first impression. The case pitted Del Monte International, against it's subsidiary Del Monte Corp., who have been arguing over whether the subsidiary can own and run the New gTLD .DELMONTE. The application for .DELMONTE was made through ICANN, was objected to by the parent company Del Monte International and eventually found its way to Federal Court after an arbitration panel decided that the objection was meritorious.
In the future one aspect of brand management and trademark protection will be making sure that the ability to exploit a trademark via a TLD is explicitly dealt with in a trademark license agreement. Specifically, in the Legal Rights decision handed down in the decision over the proposed New TLD ".Delmonte" the issue before the panel was whether the Respondent/Licensee was allowed to own and operate a .Delmonte TLD under the terms of the trademark license.
We discuss the .AMAZON New gTLD application and the role of the Government Advisory Council in making decisions about geographic TLDs, the recent decision concerning the Legal Rights Objection for .MUSIC, .MAIL, and more.
The United States Postal Service lost its Legal Rights Objection (LRO) to Amazon's registry application for the .MAIL New gTLD. Because LRO's are based on principles of trademark law and the established rights of a mark holder in a national jurisdiction, the objector has to provide facts and evidence that support their claim to ownership of a confusingly similar mark.
Limited Stores lost its Legal Rights Objection (LRO) over the New gTLD .limited which the company Big Fest, LLC (a subsidiary of Donuts, Inc.) applied for. The decision is noteworthy as the panel reasoned that even though Limited Stores had trademark rights in the mark THE LIMITED the addition of the article THE in this case was enough to distinguish the mark from the .limited string, stating:
The company Pinterest lost a Legal Rights Objection (LRO) against Amazon, Inc. related to the New gTLD string .PIN that Amazon applied for. Pinterest lost, even though it is the world’s third largest social media site behind Facebook and Twitter and uses the term “pin” for almost all of its functions.
Although Amazon got some bad news about its .AMAZON New gTLD application this week, not all of its "New gTLD news" was bad as it prevailed in a Legal Rights Objection (“LRO”) filed by Mr. Constantine Roussos (CEO of DotMusic, LLC) against its .TUNES application. The LRO was rejected by a WIPO panel that reviewed it.
Legal Rights Objections Denied On .HOME, .VIP and .RIGHTATHOME – TM Prosecution History Important In Decisions
WIPO has started reporting on the decisions concerning the New gTLD Legal Rights Objections. Legal Rights Objections (LRO) are objections filed against New gTLD applications on the general basis of the objector's established trademark rights.