Donuts thwarts Express in gTLD legal battle

14-07-2013

US fashion retailer Express has failed in its bid to stop Donuts, the leading applicant for new generic top-level domains (gTLDs), from competing for the .express domain.

A World Intellectual Property Organization (WIPO) panellist ruled against the retailer’s legal rights objection (LRO) to the application, finding that ‘Express’ is not exclusive enough to block Donuts from having the corresponding domain.

Express, which has also applied for the gTLD, objected to Donuts’s application based on its trademark rights. The company has owned a US trademark since 1979 and operates more than 600 retail stores worldwide.

Donuts’s bid for .express as a generic term is one of more than 300 applications the company has made.

In its response to the LRO, Donuts showed that numerous companies use ‘Express’ as a trademark. And using survey evidence – the validity of which Express contested – Donuts claimed that only 8 percent of people interested in fashion associated the term “express” with fashion.

Ruling on the dispute on July 9, panellist Frederick Abbott said that while Express has a US trademark, one which is reasonably well known among a relevant segment of US consumers, “there are so many common usages of the term ‘Express’ that it is not reasonable to foreclose its use by respondent as a gTLD”.

He added: “Complainant may be required to address potential Internet user confusion in the commercial marketplace for its products based on the registration (or attempted registration) of certain second level domains. However, complainant faces this risk because it adopted a common word in the English language for its trademark. It may be difficult to protect that term outside its channel of trade.”

Donuts welcomed the decision in a statement, saying “we're obviously happy the panellist confirmed this is a generic dictionary term that shouldn't be reserved for use by one company”.

Express could not be reached for comment.

The decision means both companies are still in the race for the gTLD, with an auction needed to separate them unless they can come to a private agreement.

Flip Petillion, partner at Crowell & Moring LLP, said the decision was “absolutely fair”.

“It’s a common dictionary, or generic, term. We all knew this could happen – a generic application does not necessarily mean [intent to use] in bad faith. I would have ruled the same way”.

Petillion said “most likely you will not win in these disputes” if you own a trademark that is used generically.

But Matthew Harris, partner at Waterfront Solicitors LLP, said none of the LRO decisions is binding, even though “one would expect panels to look at how things are expressed in previous decisions and take those into account”.

He added: “It’s always going to be an assessment of the facts of the case. It’s not going to be an immediate get out of jail free card – an application could be for a descriptive or generic term where there are still strong trademark rights.”

In the ruling on .express, panellist Abbot noted that “ICANN could have but did not adopt a rule precluding adoption of gTLDs using common dictionary or generic terms that may also serve as trademarks”.

Harris continued: “There is a lack of clarity in the underlying provisions here. They will become clearer as the cases continue. What will be really interesting is if and when a panel goes the other way – and knocks out an application.”

There have been four LROs resolved so far – the other three covering .vip, .rightathome and .home.

This article was first published on 15 July 2013 in World IP Review

donuts, express, .express gTLD, icann, wipo, lro

Trademarks and Brands Online