he parties to the present proceedings, presumably like the other four applicants which applied for the gTLD string <.gmbh>, intend to use such string to provide a namespace for companies registered under the legal form of a “GmbH” and therefore in a generic way. According to the Applicant’s application, the Applicant intends to “establish a trusted namespace for GmbHs with validated registrants”, while the Objector wishes to “provide a dedicated namespace that is intended to be used by GmbHs”.

The Objector’s trademark is registered in the European Community. Therefore, the rights on which the Objector can rely in these proceedings stem from the CTMR.

The concept of use in connection with the infringement of a Community trademark is set out in Art. 5(1) through (3) CTMR. The European Court of Justice has repeatedly decided that it is necessary that a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods (cf. Judgment of the Court of

November 12, 2002, Case C-206/01 – Arsenal Football Club v. Reed; Judgment of the Court of
June 12, 2008, Case C-533/06 – O2). It is well established under Community trademark law, that the proprietor of a certain trademark may not prohibit the use of a sign identical to the trade mark for goods identical to those for which the mark is registered if that use cannot affect his own interests as proprietor of the mark, having regard to its functions. Thus certain types of use for purely descriptive purposes are excluded from the scope of Article 5(1) CTMR because they do not affect any of the interests that such provision aims to protect, and do not therefore fall within the concept of use within the meaning of that provision (see, with respect to a use for purely descriptive purposes in relation to the characteristics of the product offered, Judgment of the Court of May 14, 2002 – Michael Hölterhoff v. Ulrich Freiesleben,
Case C-2/00 – Hölterhoff).

In the present case, the Applicant intends to provide companies registered under the legal form of “GmbH” with domain names under a TLD corresponding to their legal form. The potential use of the applied-for gTLD by the Applicant appears to be in respect of goods or services which are identical with, or similar to, those for which the Objector’s mark is registered. However, for the Applicant, “GMBH” serves in fact only as an identifier of a common form of companies with limited liability (incorporated in Austria, Germany, Liechtenstein or Switzerland) and aims at designating the envisaged clientele and the purpose of the services offered by the Applicant exclusively to companies registered in the legal form of a “GmbH”. As a result, under Article 5(1) CTMR, the Applicant’s use of the gTLD identifier <.gmbh> will not necessarily be seen as use in a non-descriptive connection with certain goods or services and therefore is not to be regarded as use in a trademark sense within the meaning of that article.

Even if the Applicant’s use of the applied-for string would be regarded as use in a trademark sense within the meaning Article 5(1) CTMR, such use would not result in a trademark infringement.

There is a wide range of second-level domain names that might be used in association with the applied-for gTLD string and that would not give rise to a likelihood of confusion with the Objector’s trademark, i.e. where company names corresponding to their respective owner’s names are registered as second-level domain names under the applied-for gTLD. The Panel is aware that there might be scope for an infringement of the Objector’s trade mark at the second-level with regard to certain services (which might occur under special circumstances e.g. the Applicant’s use of domain names such as <whois.gmbh> in connection with its registry services). However, the extent of such potential abuse is a matter of speculation and the Panel is primarily concerned with the top-level domain in this expert determination.

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Furthermore, a Community trademark owner cannot rely on an exclusive right where a third party, in the course of commercial negotiations, reveals the origin of goods which he has produced himself and uses the sign in question solely to denote the particular characteristics of the goods he is offering for sale so that there can be no question of the trade mark use being perceived as a sign indicative of the undertaking of origin (Judgment of the Court of May 14, 2002 – Michael Hölterhoff v. Ulrich Freiesleben, Case C-2/00 – Hölterhoff; Judgment of the Court of November 12, 2002, Case C-206/01 – Arsenal Football Club v. Reed).
In particular, Article 6(1)(b) of the Directive seeks to ensure that all economic operators have the opportunity to use descriptive indications (Judgment of the Court of April 10, 2008, Case C-102/07 – adidas and adidas Benelux). Such assessment must apply especially in cases where the use of a sign corresponds to a statutory naming requirement.

Having examined the parties’ applications to ICANN for the gTLD <.gmbh> and their planned types of use of the gTLD string, the Panel is satisfied that, to the Internet community at large, the use of the gTLD <.gmbh> will in all likelihood be seen as “an indication concerning the kind, quality, … intended purpose … of rendering of the service, or other characteristics of the … service” (I-REGISTRY Ltd v. Vipspace Enterprises LLC, WIPO Case No. LRO2013-0014 (<.vip>)) and not as such result in an infringement of the Objector’s mark.

As a result of the above considerations, the Panel finds that the Objector has not met its burden of proof in satisfying the Panel that the use of the string composing the applied-for gTLD infringes its trademark rights. The Objection must therefore ultimately fail. The Panel reaches this conclusion against the background of the following analysis of the eight non-exclusive factors listed in Section 3.5.2 of the Guidebook in connection with the applicable LRO standard.