In a 3 panelist ruling Vertical Axis holds on to ParkRoyal.com but there is no finding of Reverse Domain Name Hijacking.
1. The Parties
1.1 The Complainants are Grupo Costamex, S.A. de C.V. (“Costamex”) of Mexico City, Mexico and Operación y Supervisión de Hoteles, S.A. de C.V. (“Opyssa”) of Cancun, Mexico, represented internally.
1.2 The Respondent is Vertical Axis Inc. of Barbados, represented by ESQwire.com PC, United States of America.
4.1 The Complainants are part of the same group of companies and conduct business in the tourism sector. One of the Complainants, Costamex, is the parent company in this group. The Complainants’ business began in Mexico in 1984.
4.2 The Complainants’ revenues in 2010 were USD 222 million and they have 30 sales offices around the world. Their customer base comes from a large number of countries but is primarily from the North American continent.
4.3 The Complainants’ business first used the “Park Royal” brand in relation to its hotels in 1989. “Park Royal” hotels have subsequently been opened in various places in Mexico and Puerto Rico. The Complainants’ group of companies has been part of the RCI affiliation program since 1999, which has resulted in its Park Royal hotels being promoted among the RCI’s 3.7 million members around the world.
4.4 The Complainants also promote their business from a website operating from the url “www.royal-holiday.com”.
4.5 One of the Complainants, Costamex, is the owner of various trade marks that comprise of or incorporate the term “Park Royal” in one form or another in Mexico, the United States and Puerto Rico. Those marks include:
(i) Mexican registered trade mark no. 669695 for the word mark PARKROYAL in class 42 with a filing date of May 6, 1998. This is the earliest registered trade mark relied upon.
(ii) United States registered trade mark no. 3146797 for the word mark PARK ROYAL in class 39.
4.6 The Respondent is a well-known dealer and speculator in domain names. A company with the name Vertical Axis Inc. was incorporated in the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland in January 2002, but this would appear to be the predecessor in business to the Respondent, which is incorporated in Barbados with company no. 24264. Although it is registered in Barbados and two of its directors give addresses in Barbados, its third director, Mr. Ham, has an address in Vancouver, Canada.…
Parlance Corporation lost a UDRP against Dynamo.com on the domain name parlance.com
Of course the domain name is also a dictionary word and the panel found “the Complaint fails to establish either bad-faith registration or bad-faith use” so the panel should have found Reverse Domain Name Hijacking but didn’t even discuss the issue.
Here are the relevant findings by the one member panel:
The Complainant alleged that it owns A registered trademark PARLANCE and has used it since at least 1996 for its business, which is the provision of telephone operator services using speech recognition technology.
The mark was registered in June 1999.
The domain name was registered in August 2001, some 12 years ago but the panel also did not discuss the delay in bringing the proceeding either.
I think it was a lazy decision but a no brainier for the domain holder
“The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith because it is in the business of buying and selling domain names.
“The Respondent owns over 5000 domain names and it replied to an email from Complainant with an offer to acquire the disputed domain name, stating that the Complainant is not eligible to acquire or purchase the domain name (apparently the Respondent only sells domain names to entities that acquired a related mark after the domain name was registered)
“The Respondent states that it registered the disputed domain name for its own business use immediately upon abandonment by the prior registrant.
The Respondent executes name conception, logos and brand graphics, trademark research, and promotional copy for new start-ups and for corporations.
Founded in Silicon Valley and based there until 2005, the Respondent holds, and manages for clients, generic and coined domains from and for use in its business.
There are hundreds of companies in the US alone which offer the service of coining and locating names which are viable for a new mark use. Ideally the name proffered has an obtainable intuitive dotcom. The service is neither novel nor obscure, with demand over the past 20 years increasing alongside the growth of the internet.
“As the Respondent correctly points out, there is case law under the Policy to the effect that a business dealing in generic domain names is prima facie legitimate.
“As a result, it does have a legitimate interest in the domain name.
Since “parlance” is a word in the English language, and the Respondent is in the business of registering domain names composed of common words, the Panel holds that the Complainant has failed to satisfy its burden of proving that the Respondent lacks rights or legitimate interests.…
Regtime Ltd. and Legato Ltd of the Russian Federation just lost two separate Legal Rights Objections at WIPO on the new gTLD strings .OPR and .KOM
PIR operates the .Org registry.
The second objection was to Verisign’s new gTLD application for .Kom which is the more interesting decision in my opinion.
Regtime has functioned as an ICANN-accredited registrar since 2007. Regtime was the original owner of the word trademark КОМ, registered in the Russian Federation on August 4, 2009 with registration number 385,701 КОМ trademark”).
In the .KOM case Regtime says that in 2000, only ASCII domain names were available for registration in the Russian Federation.
Regtime recognized that VeriSign, Inc.’s solution, which required Internet users to switch character sets in order to type in a single IDN, did not fully meet the needs of Russian speaking Internet users, who wanted fully Cyrillic domain names.
Regtime licensed i-dns.net’s technology in order to provide a privately offered fully Cyrillic product with both the second level and the top-level sections in Cyrillic, described by the Objectors as the “КОМ Cyrillic IDN Product”. Because Regtime was not an ICANN- accredited registry operator like VeriSign, Inc., it could not create a Cyrillic version of an existing TLD, so its product would not be in the ICANN root and would only resolve if the Internet user downloaded a browser plug-in (known as “i-client”) that enabled the browser to resolve Regtime’s КОМ Cyrillic product, or the Internet user’s ISP applied a patch to its system which would enable the Internet user’s browser to resolve Regtime’s products. VeriSign, Inc. was an investor in i-dns.net, so it was fully aware of Regtime’s activities with regard to its КОМ Cyrillic product.
According to the Objectors, Regtime launched its КОМ Cyrillic product in March 2001 and issued press releases announcing the availability of its fully Cyrillic products through a number of channels including PRNewswire, Yahoo, and Techweb. On May 22, 2001, Regtime commenced a large public relations campaign to publicize its КОМ Cyrillic product in partnership with Interfax, the leading Russian International Information Group, which included a press conference with the leading Russian IT journalists and major television stations, as well as television ads on the major Russian National channels. The total expenditure by Regtime for this campaign was approximately USD 60,000. As a result, Regtime’s КОМ Cyrillic product received significant subsequent media attention, including by the BBC.…
Academy, LTD., d/b/a Academy Sports + Outdoors lost is Legal Rights Objection filed against Half Oaks, LLC (a Donuts compny) application for the new gTLD .Academy finding that “the common generic use of the term “academy”, as well as the lack of clear evidence showing widespread public recognition of the Objector’s ACADEMY marks, standing alone, weigh heavily in the Applicant’s favor. In this case, the Panel finds that such considerations must result in rejection of the Objector’s Objection.”
The three member WIPO panel went on to note:
The Panel’s Determinations on the Three Standards
1. Taking unfair advantage of the distinctive character or the reputation of an Objector’s mark
The Objector argued that allowing the Application to proceed would create the opportunity for the Applicant to unfairly take advantage of the public’s misperception that the Objector operates or is otherwise associated with the < .academy> gTLD. The Panel finds this argument unpersuasive. The mere delegation of a < .academy> gTLD is unlikely to create any public confusion of the kind alleged, particularly given the generic and common nature and widespread use of the word “academy”.
If a second level domain was to be registered in such a way as to infringe on the Objector’s trademark rights, the Objector could rely on the UDRP and/or the URS, and, depending on the circumstances, might also be entitled to redress in an appropriate Court.
Furthermore, any advantage from a second level domain registration would accrue primarily to the second level registrant, not to the Applicant. It is therefore hard to understand how the Applicant is taking advantage by its use of the < .academy> gTLD.
2. Unjustifiably impairing the distinctive character or the reputation of the Objector’s mark
The Panel is not persuaded by the evidence presented that the mere existence of the proposed < .academy> gTLD could impair the distinctive character or the reputation of any of the Objector’s ACADEMY marks, let alone do so “unjustifiably”. Given the widespread usage of the term “academy” in daily speech and in other unrelated trademarks, the < .academy> gTLD cannot be seen as impairing the distinctive character of Objector’s marks.
3. Otherwise creating an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s mark
Any confusion which could arise between the < .academy> gTLD string, standing alone, and the Objector’s ACADEMY marks (or with any of the Objector’s “family” of ACADEMY marks) may be insignificant.
The complication comes from the potential for confusion at the second level.…
Biotechnology Industry Organization of Washington, lost its Legal Rights Objection filed against Starting Dot applied for new gTLD .bio.
Here are the relevance findings by the one member WIPO panel:
A fundamental issue in this proceeding is the appropriate recognition of the word “bio” by different sectors of the public, founded on differences in the basic meaning of the word, and on differences in uses in different parts of the world.
From the Objector’s perspective, the word “bio” has become recognized as a powerful brand, signifying the services of its industry association and related activities.
From the Respondent’s perspective, the word “bio” itself is not perceived as a trade-mark, but as a word in common currency (in France and Germany in particular) which denotes organic characteristics in food or farming, and a variety of other meanings.
Respondent has gathered evidence showing that the word “bio” is widely used in third party trade-marks and domain names.
It also appears that Objector has tolerated widespread use of the term for many purposes (which even includes some examples of conferences in the field of biology).
No examples of enforcement against bio-formative domain names under the Uniform Domain Name Dispute Resolution Policy were identified. In the Panel’s view, this tends to show co-existence among many users of “bio” related signs, supporting Respondent’s contention that “bio” has many meanings and functions as a multi-facetted generic descriptor.
This factor favours the Respondent.
No specific conduct on the part of Respondent which could constitute evidence of an intention to trade on Objector’s reputation or the core elements of its business has been identified. On the evidence, the Panel therefore finds that Respondent intends to use the < .bio> string for the legitimate purposes described in its application.
In terms of awareness of Objector’s trade-mark rights, it appears likely that Respondent might have had at least some awareness, given the Internet presence of Objector’s business and its international registrations of the BIO marks. However, in this Panel’s view, this factor does not carry significant weight when there is otherwise no evidence that Respondent is attempting to trade on those rights.
In this matter, there has also been no suggestion that Respondent has engaged in a serial pattern of acquiring questionable gTLD strings.
Respondent’s application sets out the most reliable evidence of its plans for the < .bio> string. In this Panel’s view those stated plans indicate a bona fide offering of services related primarily to the operation of a platform for the sale and distribution of properly certified organic wares.…
Blue Cross and Blue Shield Association just lost a Legal Rights Objection to Afilias Limited new gTLD application for .Blue
Here are the relevant findings by the three member WIPO panel:
“”The Applicant has not denied that it was aware of the Objector when it lodged the Application. However, on the evidence which has been produced, the Panel has no reason to doubt the Applicant’s assertion that it applied for the <.blue> gTLD for the purpose of establishing a new registry which would provide domain names to individuals, businesses, and organizations wishing to establish or enhance a presence on the Internet having “an affinity” with the color blue. The Applicant’s intention was to evoke a connection with the color, not with anyone’s “blue” trademark. The fact that the Applicant has applied for four other “[color]” gTLDs is consistent with that assessment.
There is no allegation that the Applicant has engaged in any pattern of conduct whereby it has applied for or operates TLDs, or registrations in TLDs, which are identical or confusingly similar to the marks of others.
The Applicant does not claim to have made any use of a sign corresponding to the <.blue> gTLD in connection with any bona fide offering of goods or services, or bona fide provision of information. However, the Applicant does submit that it has made demonstrable preparations to use the sign corresponding to the <.blue> gTLD in connection with such services.
In the <.express> case, and in at least one other LRO decision,4 expert panels have regarded the respondent’s efforts to establish the technical and administrative infrastructure to operate the new gTLD registry, as forming part of “preparations to use” the applied-for gTLD string.
However it seems to this Panel that factor 5 is concerned less with use of (or demonstrable preparations to use) the particular gTLD itself, and more with use (or demonstrable preparations to use) a sign corresponding to the gTLD separately in some way, whether as a trademark or service mark, or for the bona fide provision of information.
Before its application reaches the Legal Rights Objection stage, every applicant for a new gTLD string will presumably have carried out some work planning and/or creating the technical and administrative structure which will be necessary to operate its proposed new registry.
On that basis, the Panel would say on the evidence before it that the Applicant has not made use of, or made relevant demonstrable preparations to use, a sign corresponding to the <.blue> gTLD in connection with a bona fide offering of goods or services, or bona fide provision of information.…
WIPO Denies Another Legal Rights Objection To .Music: Community Trademarks Of Objector “Not Bona Fide”
A WIPO panel has rejected another Legal Rights Objection to the new gTLD .Music .
This objection was to Famous Fours application to operate the .Music registry and was filed by another applicant for .Music, DotMusic Limited/Constantinos Roussos.
The panel basically found that the community trademarks of the Objector were not bona fide:
The Objector filed for registration of its .MUSIC and DOTMUSIC figurative Marks in the European Union on March 5, 2009.
Respondent has brought to the Panel’s attention that prior to the filing of the CTM applications, Mr. Constantinos Roussos had been refused trade mark registration in the United States for “DOTMUSIC”, “MUSIC.US”, and “.MUSIC and Design” filed on December 19, 2007, March 3, 2009, and December 31, 2010, respectively.
“DOTMUSIC” and “MUSIC.US” were refused for being merely descriptive, and the latter was essentially characterized as a domain name rather than a trade mark.
“The mark “.MUSIC and Design” was refused for lack of use in commerce as of the filing date of the application, and also because of the applicant’s failure to comply with the examining attorney’s requirement to disclaim “.MUSIC” apart from the mark as shown, as it was considered that the term “.MUSIC” merely described an ingredient, quality, characteristic, function, feature, purpose or use of the applicant’s services.”
“It bears noting that the very same “.MUSIC and Design” mark having been refused registration in the United States, became the subject of the Objector’s CTM registration No. 008139792.”
“Considering that ICANN’s New gTLD Program had been widely reported by the time the Objector’s representative filed for trade mark registration in the United States; that the CTMs were applied for only after being refused registration in the United States where the Objector’s operations seem to be based; and that the Objector’s CTMs have not been put to use within the European Union after registration, the Panel infers that the Objector acquired trade mark rights in “.MUSIC” for the primary purpose of bolstering its bid with ICANN to operate the .music gTLD.”
Altogether, in this Panel’s opinion these circumstances show that the Objector’s acquisition and use of its CTMs has not been bona fide.”
A WIPO panel has rejected Scripps Networks Legal Rights Objection to Google’s New gTLD application of .diy
Here are the relevant findings from the one member panel:
The Objector holds United States Registration No. 2457989 (registered June 5, 2001) for DIY.
The mark is registered in International Class 042 as a standard-character service mark for “providing a website of information about television programming; news and weather; gardening and landscaping; crafts and hobbies; sewing and quilting; furniture and antiques; interior design and decorating; home building, improvement, repairs and renovation; and similar projects and topics.”
The Objector also holds numerous other trademark registrations in the United States and some 32 other jurisdictions for word or design marks incorporating DYI with other relevant words, such as DIY NETWORK, DIY DOMINATOR, DIY DO IT, DIY DO IT YOURSELF, DIY KIDS, DIY ON DEMAND, DIY TO THE RESCUE, ASK DIY, DISASTER DIY, and DIY DO IT YOURSELF NETWORK.
The Panel concludes that these registered marks give the Objector standing to pursue a Legal Rights Objection against the Respondent’s application for the new gTLD string .diy
C. Potential Infringement of the Existing Legal Rights of the Objector
The applied-for string <.diy> is identical to the letters comprising the Objector’s registered DIY mark.
The record amply demonstrates, however, that “DIY” is a commonly used, generic acronym for the phrase “do it yourself”, as found in dictionaries, online and print media, Internet domain names, retail industry market reports, and Internet search engine results.
The Objector concludes that the new gTLD string <.diy> could not be used by the Respondent without infringing its existing legal rights.
The Panel does not agree with this conclusion.
The acronym “DIY” has generic meanings that are not exclusively associated with the Objector’s television programming and associated website content. The Objector’s DIY trademark, as described in the United States registration, is for use in connection with “a website”. As such, the Objector cannot displace all other uses of the generic term. Where a mark consists of a dictionary word or acronym, as it does here, the scope of trademark protection must necessarily be construed narrowly to avoid giving a company exclusive rights to use a term in its generic sense.
The operation of a gTLD registry is not the same business as the operation of a commercial website.
The Panel notes that the issue of the generic quality of the acronym “DIY” has arisen previously in the context of a dispute concerning the domain name <diy.biz>.…
Pinterest Lastest To Lose Legal Rights Objections To .New gTLD .Pin As 3 More Objections Are Thrown Out By Wipo
WIPO has decided three more Legal Rights Objections to New gTLD application and in all three cases the Objector has lost and the New gTLD applicant has won.
The cases decided today are:
Pinterest’s objection to Amazon’s application for the new gTLD .Pin;
Defender Security Company objection to Merchant Law Group’s application to its application for the new gTLD .Home and
The Canadian Real Estate Association’s objection to the new gTLD application of Afilias on .MLS
In the decision on .Pin the the issue was although the Objector had registered trademarks to the term Pinterst it didn’t have any registered trademark to the term “pin” which was the applied for gTLD:
“Although it appears to be common ground between the Parties that the principles of law enunciated by the United States Court of Appeals for the Ninth Circuit apply in determining likely confusion between Amazon’s proposed <.pin> gTLD and any trademark owned by Pinterest, the Panel does not accept Amazon’s
contention that Pinterest’s United States trademark rights (if any) are “the relevant rights” for the LRO and the Complainant sought to rely on two Community Trademarks (CTM) applications and the Panel held that the applications for CTMs revealed no obvious grounds for denying the registrations and as such the trade mark applications were considered sufficient for the purposes of the Policy.”
“Even if a respondent need only show an arguable case that the application will fail, a panel will still risk being drawn into an argument as to the merits of the application that it is likely to be ill placed to deal with.”
“In the absence of evidence of registered trademark rights, it is necessary for Pinterest toestablish that, through use, PIN, P and PIN IT have come to identify Pinterest and its goods or services, such as to entitle Pinterest to exercise the right at common law to prevent passing off.
“To establish common law rights in a mark, a complainant must show that its mark has acquired secondary meaning, i.e., that the public associates the asserted mark with the complainant’s goods and services.”
“The word PIN is a common descriptive English word , used as a noun or as a verb(as are the nouns PINNER and PINBOARD, in which Pinterest is not here claiming trademark rights).
“On the material presented by Pinterest in support of its Objection, the Panel is not satisfied that the word PIN has been used , either by Pinterest itself or by the very large number of Internet users, retailers and media commentators since Pinterest started in 2010
“Because Pinterest and others use this dictionary term for its dictionary meaning and not as a trademark, the Panel is not satisfied that PIN functions as a mark to identify Pinterest or its goods or services.”