Del Monte succeeds in new gTLD challenge

In a split decision published this week, a WIPO panel found that there was “something untoward” about an application for the gTLD .delmonte filed by Del Monte International, based in Monte Carlo.

The objector, Del Monte Corporation, owns trade marks for Del Monte in 177 jurisdictions, with use going back to 1891.

Respondent Del Monte International owns trade mark registrations for Del Monte in South Africa, which date to 1966. It has also signed three licence agreements with Del Monte Corporation regarding use of the trade mark on certain products and in certain geographical areas.

Del Monte International had applied for the .delmonte string without notifying Del Monte Corporation or any of its other licensees.

No other parties applied for the string in this round.

The panel considered eight factors in its decision, regarding the registration and use of the mark, and any rights owned by the respondent.

Two of the three-person panel, Sebastian Hughes and William Towns, agreed that the gTLD applied for “creates an impermissible likelihood of confusion between the gTLD and the Objector’s mark”.

But panellist Robert Badgley dissented, saying it was “a close case” and a few points tipped the balance in favour of the respondent: “Respondent has a bona fide basis for owning this gTLD, even if Objector would also have a had a bona fide basis if it had been the applicant for this gTLD.”

Badgley also said he had favoured the acceptance of supplemental submissions from the parties, something which the majority refused. In particular, the South African trade mark certificates were not available to the panel.

The LRO procedure enables rights owners to challenge new gTLD applications that they believe take unfair advantage of, impair the distinctive character of, or otherwise create an impermissible likelihood of confusion with their mark.

Nearly 80 LROs have been filed. So far, 30 have been decided and Del Monte is the first one in which the objection has been upheld. Four cases have been terminated.