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) against its .TUNES application. The LRO was rejected by a WIPO panel that reviewed it.
An LRO can be filed when an Objector believes that the applied-for gTLD string infringes on its existing legal rights (i.e., trademark rights) in the applied for name.
Mr. Roussos filed the LRO on March 13, 2013. This particular objection is just the fourth decided by WIPO.
The basis for the objection was that Mr. Roussos is the owner in the European Union of the .TUNES trademark. He also asserted that his company, dotMusic, does business under the mark.
Amazon responded by arguing there was no evidence that Mr. Roussos was using the .TUNES mark and that there was not enough of a connection between .TUNES and the .MUSIC mark (that Mr. Roussos is using extensively) to warrant upholding the objection. The Panel stated that it “does not consider than any consumer seeing the gTLD <.tunes> would relate it to [Mr. Roussos].”
Mr. Roussos spoke with Michael Berkins of www.thedomains.com in a recent interview and explained that the LRO was a defensive move and that his motivation in raising an objection was to attempt to clear any sort of confusion because “multiple music-themed synonyms would dilute our community-based .MUSIC brand and certainly create confusion in the marketplace akin to the issue with plurals and singulars, which we publicly disagree with.”
This LRO decision is important because it shows that an objector must provide evidence that it actually carries out business under the mark. Thus, registering trademarks in other parts of the world will probably not be enough to support a bona fide LRO if the objector cannot show a strong enough affiliation with that trademark.
This decision marks the beginnings of many LRO decisions to come and we will continue to update you on the pending cases...