The strings concerned were .vip, .express and .home.
Legal rights objections can be brought based on IP rights where a complainant believes that an applied-for gTLD takes unfair advantage of the distinctive character or reputation of its trade mark, unjustifiably impairs its reputation or otherwise creates a likelihood of confusion.
In the .vip case, German company I-REGISTRY has a pending German application for VIP and its parent company owns a CTM for VIP. But the gTLD applicant, Vipspace Enterprises of Texas, USA and Munich, Germany owns a CTM for DOTVIP.
Panellist Tony Willoughby said he was satisfied that the applicant intended to use the gTLD “first and foremost as a descriptive term describing the purpose and characteristics of the domain (i.e. a domain for Very Important Persons)” and that therefore confusion was unlikely.
The .express dispute pitted a clothing store called Express against Sea Sunset, a subsidiary of Donuts (which has applied for more than 300 new gTLDs). Panellist Frederick M Abbott found that there were “so many common usages of the term ‘express’ that it is not reasonable to foreclose its use by Respondent as a gTLD”.
The decision is analysed by Kevin Murphy on his Domain Incite blog. He suggests it may be bad news for owners of dictionary-word brands: “The ruling could have a big impact on future rounds of the new gTLD program, possibly giving rise to an influx of defensive, generic-word dot-brand applications.”
The .home case pitted Defender Security Company, which owns a CTM word and design mark for .HOME, against Charleston Road Registry (a Google company), which had applied for the .home gTLD.
Panellist M Scott Donahey found that the objector “had not met its burden to show that it is a rightsholder for purposes of this proceeding” and that, even if it had met that burden, the objection should be rejected.
The same company has eight other complaints pending against applicants for .home.
More than 70 legal rights objections to new gTLD applications were filed. The full list is available on the WIPO Arbitration and Mediation Center website.
