Earlier today we wrote about two Legal Right Objections (LRO) that were denied at WIPO one for .GMBH and the 5th objection filed be Defender against an applicant for .Home

Since then three more decisions came out all against the objectors on the strings .Song; .YellowPages and .Cam

The objection to .Song was brought by DotMusic Limited of Lemesos, Cyprus, which is owned by Mr. Constantine Roussous who is an applicant for .Music.

Like DotMusic Limited’s objection to Amazon’s application for .Tunes, the objection to Amazon’s application to .Song was thrown out as well as this panel cited the panel’s finding in the .Tunes case but like in the .Tunes case the panel made it clear that in making this this ruling on throwing out the LRO to .Song  “it is not making findings in relation to the distinctiveness of .MUSIC. That gTLD is the subject of other LRO proceedings.”

“The Panel finds that the Objection should be rejected. Having considered the merits of the case before it, this Panel does not see any reason to depart from the conclusive reasoning in the entirely comparable case, and indeed here incorporates significant elements of that determination’s wording.”

“The Objector’s trademark .SONG is identical to the gTLD . ”

“The word “song” is, however, a generic and descriptive mark when used in relation to music, which is the intended use of both the Objector and the Applicant. The .SONG trademark as registered includes many other elements, including colors, a speech bubble and the image of a person wearing headphones. None of these are similar to the gTLD.

It is in fact likely that an application for “SONG” by itself as a trademark without these additional features would have been rejected for registration in the context of music.

The Objector has produced very little evidence of use of .SONG in trade or commerce. What evidence has been produced relates to the use of .MUSIC. However, no substantive argument was put forward as to why this was relevant to the application for .SONG.

The panel can see no relevance other than that they are related words. The Panel does not consider that any consumer seeing the gTLD would relate it to the Objector.

In the throwing out the LRO of Hibu (UK) Limited of Berkshire, United Kingdom against The Applicant Telstra Corporation Limited of Melbourne, Victoria, Australia, on the string .YellowPages the panel acknwledge that the Objector had concern that the new gTLD could cuase confusion with existing legal rights:

“The Panel finds that it is inherent in the nature of the gTLD regime that the prospect of coincidence of brand names and a likelihood of confusion will exist.”

“The Panel agrees with the Applicant’s proposition that to an extent a prospect of confusion can be managed by an operator of a site. Second-level registrations operating on may clearly identify in their content that the site is applicable to a particular jurisdiction.”

“The Panel further agrees with the Applicant’s proposition that an entity in any jurisdiction may register a Yellow Pages second-level registration without any geographical identifier in an existing TLD (i.e., , , or ). Where a domain name has no geographical identifier, Internet users are accustomed to quickly determining whether a particular site is directed to their jurisdiction or not.”

“For example, already (i.e., even without the existence of the Applied-for gTLD) there is a prospect that an Internet user in the UK may visit and think it is the website of the Objector. It is then the user’s responsibility to determine whether or not the site content applies to him. If the user tries to search for businesses in his local region and realizes that it is not listed on the site, the user will understand that it is not the Objector’s site.”

“The Panel finds that the likelihood that users would be confused into thinking that originated from was affiliated to or authorized or endorsed by the Objector is further reduced because the Objector no longer uses the term “YELLOW PAGES” at all in relation to its online presence.”

It is inherent in the nature of the gTLD regime that those applicants who are granted gTLDs will have first- level power extending throughout the Internet and across jurisdictions. :

“The prospect of coincidence of brand names and a likelihood of confusion exists.”

“The Objector has accrued significant goodwill and reputation in the UK YELLOW PAGES directories and the YELLOW PAGES Mark. Its primary base of operations is the UK.”

“The Applicant has generated strong brand recognition in the term YELLOW PAGES as being the mark of the Applicant in Australia and among its international clients.”

“The gTLD application process is a priority system in which any applicant with standing can file an application.”

” The Applicant has applied for in the gTLD first and paid the significant application fee.”

“The Objector has followed the prescribed procedure for objecting to issuance of the gTLD.”

“The critical issue in this LRO proceeding is whether the Objector’s territorial rights in the term “YELLOW PAGES” (and the prospect of other non-objecting third parties’ territorial right) means that the applicant (or anyone else for that matter) should not be entitled to the Applied-for gTLD.”

“Having reviewed the eight (8) non-exclusive consideration factors set forth in the Applicant Guidebook section 3.2.5, the Panel finds that the Objector has failed to establish, as it alleges, that the potential use of the Applied-for gTLD by the applicant …unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’s mark.” [Emphasis added.] The Panel also finds no indications that such use takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark. In reaching this conclusion, the Panel notes in particular the following:”

“1. The Applicant has not acquired nor used its YELLOW PAGES mark in bad faith, and has declared its intent to continue to respect third party intellectual property rights while providing business directory services under the YELLOW PAGES brand.”

“2. The Applicant has expended considerable resources in demonstrating its technical and financial capability to operate the gTLD, notably including demonstrating compliance with policies and practices”

“3. The Applicant has declared its intent to use the Applied-for gTLD in ways which will not amount to a “commercial effect” in the UK, and would not infringe any rights of the Objector, who presumably would be monitoring for any such infringements impacting in its jurisdiction.

“4. The Applicant will maintain control in the registration and use of domain names and will ensure that the gTLD will only be used for purposes authorized by it, including respect of third- party rights such as the Objector’s.”

“5. In addition to any appropriate legal action, there are actions which the Objector and potential third parties can take to diminish the confusion which might arise from the approval of the gTLD, such as second-level registrations operating on the gTLD or other TLDs such as , , or , clearly identifing in their domain name or content that the site is applicable to a particular jurisdiction.”

“6. Denying the approval of the gTLD would not necessarily be an appropriate response to the co- existence of Yellow Pages second-level registrations in existing TLDs for many years, and the lack of objections from others who might be similarly concerned.”

As far as .Cam is concerned DomainNameWire.com covered that ruling earlier today.