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.
The first three panel decisions were all rejected and covered applications for the extensions .HOME, .VIP, and .RIGHTATHOME.
With respect to .home, the respondent was Charleston Road Registry (on behalf of Google, Inc.) and the objector was Defender Security Company. The panel, in an extremely comprehensive and well-reasoned opinion, found that Defender Security had no trademark rights (or rights at all) in the .HOME mark and that it had simply tried to fabricate rights in order to block other applicants from the .HOME registry.
The panel analyzed the merits of the objection, assuming limited trademark rights, and found that (i) Google’s plan to use the .HOME registry in its generic sense eliminated the possibility of confusion; and (ii) Defender Security had disclaimed the term “home” in several of its federal trademark applications and therefore could not claim rights after the fact.
There are still eight (8) other applicants for .HOME facing an objection from Defender Security. However, considering the finding that Defender Security did not have rights in the mark it is likely that the other objections will also be rejected.
For .RIGHTATHOME the panel reasoned that even though the Objector had rights to the mark RIGHT AT HOME, because it had let the applicant, SC Johnson, use the mark RIGHT@HOME for a number of years prior to the New gTLD application it could not object to its use as a gTLD. It further noted that the years of prior use allowed by the Objector showed the marks could co-exist peacefully and without actual confusion.
This decision is interesting and extremely important in that it indicates that the failure to enforce rights against similar trademarks that might later provide the basis for a New gTLD application could be held against the objecting party. This argument is common in terms of assessing whether trademarks can co-exist with each other, but is an extension of this concept as applied to New gTLD applications.
Lastly, the .VIP decision hinged largely on the panel’s finding that even though the Objector had legitimate rights to the mark VIP via its trademark registration, including services related to domain name “connection and management”, because the gTLD was to be used descriptively for the commonly used term “Very Important Persons”, there would be no confusion with the Objector’s mark. A quote from the decision sums up this reasoning, stating: “[t]he Panel is not able to find, on the evidence before it, that if the Respondent is awarded the new <.vip> gTLD, the Respondent’s use of that domain, even for the registration of <.vip> domain names, will be likely to infringe the Objector’s registered trade mark.”
In sum, the decisions indicate that the prosecution history and maintenance of a trademark will have broader implications than just the registration of that particular mark – and both will be important factors in determining the scope of rights when looking at New gTLD objections...