IP: First three Legal Rights Objection decisions released

The World Intellectual Property Organization recently struck down several objections to new generic top-level domain names

Pursuant to Paragraph 3.2.1 of the Internet Corporation for Assigned Names and Numbers’ (ICANN) new gTLD Applicant Guidebook, a formal objection to an application for a new generic top-level domain (gTLD) may be filed on any one of four grounds, one of which is the Legal Rights Objection. The basis for a Legal Rights Objection is that “the applied-for gTLD string infringes the existing legal rights of the objector.”

The World Intellectual Property Organization recently released the first three decisions relating to Legal Rights Objection (LRO). Each of the matters involved different situations, but the outcome was the same, with all three decisions denying the objectors’ complaints.

In the first objection over an application for .VIP, the objector, I-REGISTRY Ltd, operates websites at www.i-registry.com and www.vip-registry.com. The latter site is devoted to the .vip gTLD in anticipation of I-REGISTRY succeeding with its application. The objector's parent company holds a Community Trade Mark (CTM) registration for VIP as a word and had granted to I-REGISTRY an exclusive license to use the trademark.

The respondent, Vipspace Enterprises LLC, operates a website at www.vipspaces.com, which features news items about international celebrities and advertisements advising readers that “.VIP(DOTVIP) is to become the global Top Level Domain for VIPs” and encouraging them to “reserve [a .VIP] domain name without obligation now!” The respondent also holds a CTM for DOTVIP as a word. In the respondent’s new gTLD application, it stated that “DOTVIP (.vip) is the new Top Level Domain exclusively developed for very important persons and very important projects.”

As an initial matter, the panel found that even though the objector is only a licensee of the trademark, this was a sufficient standing for objection. In evaluating the eight-factor test set out by the LRO Procedure, the panel found particularly persuasive that both the objector and respondent acknowledge that to the Internet community at large, VIP is going to be seen as a reference to “very important persons” rather than to someone's trademark. As such, the panel found that the respondent had not taken unfair advantage of the distinctive character or the reputation of the objector’s trademark, impaired the distinctive character or the reputation of the objector’s mark, or otherwise created an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.

In the second dispute over .rightathome, the objector, Right At Home, was an “international franchise organization” that provides home health care services worldwide. The objector has registered the mark RIGHT AT HOME in the U.S. and other countries. The objector also operates a website at rightathome.net..

The respondent, Johnson Shareholdings, Inc. is a wholly-owned subsidiary of S.C. Johnson & Sons Inc. SC Johnson has operated for decades and is a major manufacturer of various consumer household products. SC Johnson has used the mark “RIGHT@HOME” to provide housekeeping information in various fields such as cleaning, cooking, arts and crafts, interior decorating, gardening and home storage management. This mark was registered in the U.S. in November 2010. The respondent also maintains a website at rightathome.com, which houses recipes, cooking tips, food storage tips and coupons for various SC Johnson products.

In this matter, that panel noted that the LRO Procedure sets out eight non-exclusive factors to consider, but that depending on facts and circumstances, some factors may be more significant than others. Here, the panel found it persuasive that third parties, as well as SC Johnson, had “coexisted in their endeavors” and denied the objector's complaint.

In the third dispute over .home, the objector, Defendant Security Co., asserted that it was the second-largest provider of residential security systems in the U.S., and that it offers domain name services through the website to which the domain name dothome.net resolves. The objector attached multiple annexes to its application, complete with icons of its purported trademarks. Several of these images and text, while presented as sufficient to state a claim under the LRO Procedure, were still in the application phase and had not yet been granted.

Contributing Author

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John McElwaine

John C. McElwaine is a partner and intellectual property attorney at Nelson Mullins Riley & Scarborough, LLP (Charleston, S.C.). He devotes his practice to Internet,...

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