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 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 parties long-standing trademark license agreement.

The decision was very well reasoned in terms of looking at the “Legal Rights” aspect of the issues between the parties, however, it did not go into a great deal of detail with respect to the complexities of dealing with the parties trademark license agreements and whether a TLD could be considered a “domain” as that term is typically used in a license agreement.

Although the panel found that the Respondent/Licensee did not have such rights, the decision was not unanimous and could very well turn out differently if brought before a court to decide. Pointedly, the dissent (respectfully) pointed out a stark contradiction in the logic of the majority, noting:

“[t]he fact that multiple entities have been using the same mark in the same general area of commerce (food) for many years suggests that the consuming public has not been too troubled or confused by this state of affairs. Indeed, as Respondent pointed out, Objector – who claims to be the policeman of the DEL MONTE mark – has allowed Respondent and other parties to make use of the DEL MONTE mark in several domain names (such as Respondent’s domain names <> and <>, registered in April 2000). This acquiescence by Objector in the use of domain names whose characters do not reflect a geographical or product-line restriction supports Respondent’s claim that it has acted in good faith.”

In sum, the decision is important because it stresses the need for trademark holders to make sure that trademark license agreements explicitly deal with the issue of a .brand TLD and who has the respective rights to apply, own and run a TLD for that .brand...