The World Intellectual Property Organization (WIPO) has rejected all of the first three resolved legal rights objections (LROs) to new gTLD applications.
The gTLDs – .home from Google, .vip from Vipspace Enterprise and .rightathome from SC Johnson – were all subject to unsuccessful LRO complaints.
The objectors had to show that should the disputed new gTLD to be approved by ICANN, it would infringe their existing trademark rights.
In the objection against .home it was considered that the objector, home security company Defender Security Company, which also applied for .home, had not made legitimate attempts to register a trademark for .home.
A WIPO panel wrote: “The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced.”
In the case of .vip, both the applicant, Texas-based Vipspace Enterprise, which offers services for celebrities, and the objector, German-based company, I-Registry, had filed for the same "VIP” trademark within months of each other.
However, the panel found that the intended use of the gTLD will lead to it being seen “first and foremost as a descriptive term describing the purpose and characteristics of the domain”, adding that confusion with the objector’s mark was not likely.
According to Stephane Van Gelder, former head of the GNSO council, ICANN’s decision making body for gTLDs, the failed objections show WIPO “will not be fooled” by obvious attempts to abuse the system.
He said: “I think it will set a trend and send a warning out saying ‘do not try and use the objection process just to block someone else when you don’t actually have grounds to’,” he said.
“It appears to be a good result for the system itself, which is coming up with results you can understand.”
In the third rejected objection, home care provider Right at Home, had objected to SC Johnson’s application for the .rightathome gTLD on the grounds that it infringed its trademark.
SC Johnson, which makes products to use in the home, has also used the Right at Home brand for a number of years.
It was suggested that both the applicant and objector had significant cases to make.
Nicholas Bolter, partner at Edwards Wildman Palmer LLP, said it was clear SC Johnson had not applied for the gTLD in bad faith.
He told WIPR: “There can be companies who both use similar trademarks but only one can use the gTLD. I find it peculiar when a company who had the chance to apply registers an objection in hindsight, as they had the opportunity but didn’t take it.”
He added: “They [the three rejections] all seem to be the right decision and shows that the new LRO system is working well; let’s hope it sets a precedent.”
This article was first published on 10 July 2013 in World IP Review
gTLD, WIPO, trademarks, Google