Constantinos Roussos Of DotMusic Limited has responded to our post about the 1st WIPO decision denying the Legal Rights Objections filed against an applicant for .Music
It should be noted as of time of publication of the 25 objections filed with WIPO all 25 have been denied.
0-25
Here is Mr. Roussos statement:
“”We are certainly very disappointed with this decision. ”
“There are some serious inaccuracies in the decision which we obviously have issues with. For example the Panelist claims:
“The LRO Trademarks are registered in the name of “Constantinos Roussos”, and not the name of the Objector.” All the panelist had to do is go to: http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic then under “Trade mark name” select “is” in the drop-down and enter “.music” –
Clearly says DotMusic Limited is Owner hence the objector.
Just the mere fact that he failed to do simple research to determine who the Owner is I think speaks volumes.
Also we provided Panelists ample evidence and he fully ignored our press, outreach and significant branding efforts that we are commonly known as both .MUSIC and DotMusic.
He determined that .MUSIC as ” likely to be referred to by consumers and Internet users as “dotmusic.””
This is quite a stretch since our music community and supporters and MCMO partners know the brand and product is “.MUSIC.” Registrants and the channel of trade refer to the brand as .MUSIC and obviously registrants – those consuming the .MUSIC community-based brand – will be calling it .MUSIC.
The press and all media calls it .MUSIC. Seems the Panelist has ignored everything we have said.
Simple question.
Do registrants of .COM refer to .COM as “.COM” or “dotcom”?
I think it is pretty clear that adding the dot (.) is of significance here and of course this panelist conveniently made this argument that potential registrants and our channel of trade calls our product and brand “dotmusic”.
All he had to do is read all the publications and press we sent them and most importantly our support.
The obviously know it is .MUSIC and when they talk to others they obviously call it .MUSIC in order to signify to others that it is a domain name. This ruling makes no sense. Do you believe a registrant will go to register a .MUSIC and think they will be registering “dotmusic” which is not a domain name?
Zero chance.
We put a whole article explaining our views before this decision was made on this at: http://music.us/why_WIPO_must_uphold_Legal_Rights_Objections_LRO_for_DotMusic_brand.htm
Everyone is entitled to their opinion but the bottom line is all our branding over the years and support is seen as worthless by this Panel.
Interestingly enough this was the ONLY panelist who did not accept our additional submission.
Speaks volumes again.
My bet is Cairns (the WIPO Panelist) made his decision without even reading the case and rationalized it starting with the conclusion: Objection rejected. The issue of descriptiveness and branding we argue in the article above.
Seems the entire WIPO LRO process was set-up to fail by ICANN with the guidelines they gave the Panelists.
Many of the Panelists did not dive into the issues and repercussions. Panelist Cairns saying that risk of confusion as “temporary” is a slap in our face. Of course it is temporary we pretty much just gave all our .MUSIC branding efforts, partners and work to Google to leverage and “free-load.” Even better yet, ICANN can auction all our work to the highest bidder.
Here is an excerpt fro our article:
According to WIPO: “Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation”(http://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm) i.e in the relevant channel of trade – in this case for domain names – with respect to the .MUSIC community-based brand, significant community support and differentiated policies. Under Article 2 of WIPO Joint Recommendations on the Protection of Well-Known Marks these .MUSIC partner MCMOs fulfill the criteria of “Relevant Sectors” including:
“actual and/or potential consumers of the type of goods and/or services to which the mark applies” (Millions of MCMO members are potential domain registrants. DotMusic’s relevant sector and channel of trade is registering a domain name not buying “music” in the generic, descriptive sense relating to the art of sound i.e the .MUSIC domain name product is related to the Domain Name System not to the art of sound. Listeners/buyers of music are not DotMusic’s target customer and are irrelevant to the LRO since they represent the general public not the target consumers of the .MUSIC domain – the only sector that matters. Music buyers are in a different channel of trade which .MUSIC is not in);
“persons involved in channels of distribution of the type of goods and/or services to which the mark applies” (These MCMO partners constitute a majority portion of all legal music distributors online with direct relationships with potential domain registrant customers: .MUSIC domain registrants. These registrants will not be buying “music” and will unquestionably know they are registering a domain name under the DotMusic community-based brand called “.MUSIC”);
“business circles dealing with the type of goods and/or services to which the mark applies” (The domain channel of trade – registries, registrars, resellers and MCMOs- constitute the only business circles that are relevant pertaining to the goods/services of domains under the .MUSIC brand. Through its branding and marketing initiatives to the domain and ICANN industry, DotMusic efforts alone have added substantial economic value to its well-known brand and associated community-based policies which are recognized in those relevant business circles)”
Unlike most LROs our trademark is in the class of domain names. Makes a huge difference.
Courts apply their legal standard of genericness in an examination of a population segment, or universe, that it has deemed relevant i.e only the channel of trade matters not the general public. Courts find words generic to one segment of the population, but hold those same words retain their trademark validity to another segment. For example, THERMOS retained its trademark significance to those in trade and to its segment of consumers. In the Bayer Co. v. United Drug Co case, the court held the term “aspirin” generic to the general public but granted it protection to those in the trade (Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (emphasis added). In Stix Prods., Inc. v. United Merchants & Mfrs., Inc it was determined that a mark’s “meaning to a non-purchasing segment of the population is not of significance; rather, the critical question is what it means to the ultimate consumer”(58 Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479,
488 (S.D.N.Y. 1968))i.e the relevant channel of trade customer for DotMusic: domain registrars, registrants, MCMOs and resellers.
This is a critical element that WIPO Panelists should strongly take into consideration to rule in DotMusic’s favor: Only the classes of actual buyers in the channel of trade are relevant. In the case of the genericness of .MUSIC domains it is clear that a registrant will not go to a registrar, such as Godaddy, or through a reseller of MCMO, to buy “music” pertaining to the art of sound. It is indisputable that there is no confusion from the registrant’s point of view that what is registered is a domain name related to the DNS not music related to the art of sound. Also the registrant is NOT buying “dotmusic.” The rgistrant is buying “.MUSIC”
It is clear that Panelists can not claim that .MUSIC is descriptive since the product’s functions are related to domains and the DNS which have nothing to do with the art of sound. The domain’s content which is created by the registrant is of no significance since the domain name alone is not “music.” For example, if the Rolling Stones were selling “Rolling Stones” merchandise at their concerts it is clear that their product would be branded under the classes relating to “merchandise” not music. This is akin to domain names. In these cases the word “music” is used in an arbitrary manner with no significance to the mark’s classes pertaining to domains since it is clear the product/service offered relates to the DNS. There is zero possibility that a registrant (the customer) will be confused that the product they are purchasing is music i.e a song. The relevant sector – the crucial factor pertaining to LROs – is domain names. It is clear that music buyers or music listeners will not be able to buy or listen to any “music” if they visited the relevant sector of trade pertaining to domain names and .MUSIC: Registries, registrars and resellers do not offer “music” they offer domains.
If the WIPO LRO Panelist examines only a term’s dictionary definition, they would fail to evaluate the term’s significance to members of the relevant sector. Such an examination ignores the possibility of different definitions within separate market segments. Dictionaries define words according to use by writers deemed authoritative by the dictionary editors. Although this method may be suitable for determining word meaning in the context of general usage, it is inadequate for assessing the marketplace meaning of a trademark. Moreover, the special meaning associated with a term that a trademark holder creates through its use cannot be measured by its dictionary definition (Carol A. Melton, Generic Term or Trademark: Confusing Legal Standards and Inadequate Protection, – Am. UL Rev, www.wcl.american.edu/journal/lawrev/29/melton.pdf, 1979, Pg 21 and Julius R. Lunsford, Jr.,Trademarks and Semantics: The Use and Misuse of Trademarks in Dictionaries and Trade Journals, 62 TRADEMARK REP. 520 (1972))
Generic use of trademarked products in the same relevant field with respect to intellectual property rights and classes is illegal. Unless you think a domain name is somehow related to the art of sound not the DNS. This is what the real issue is here.
Would .MUSIC consumers think they are buying “music” or a domain name that is plainly called “.MUSIC”?
Since domains are not in the class of music, this case is obvious since the critical element that the channel of trade is domains NOT music.
Question now is which Panelist will figure this out.
Our mark classes and channel of trade is domains. How is this so difficult to figure out? Last time I checked “Apple” was not for apples. Why can’t this apply for .MUSIC as well? I think we have shown recognition without doubt. Time for Panelists to take some accountability and responsibility and realize the unintended consequences here.
Constantine
.MUSIC
All objections are going to fail.
It is very simple. Noone needs to have a corresponding trademark to run a new gtld and noone needs a permission or can be denied of running a new gtld for a common generic dictionary word (like music).
If you were crazy enough to file for a new gtld for .google or .microsoft without being google or microsoft then you would have the WIPO dismiss your application.
But don’t expect any more than this.
I don’t understand why people are wasting their money to these objections instead of keeping the money for the new gtld auctions.
Well, wipo and the panelists have got to make a living too…
Glad to see Constantine Roussos being passionate about his business and vision. ICANN is making it very difficult for the David of domaining to fight Goliath. Panelists assigned by ICANN for the purpose of blocking or allowing applications are clearly under-qualified for the task. The gTLD process has an astounding number of fail points, one of which is described in this decision. Hopefully Roussos will take this up to the courts.
As DomainIncite has illustrated “The case, DotMusic v Charleston Road Registry (Google) was actually thrown out on a technicality — DotMusic didn’t present any evidence to show that it was the owner of the trademarks in question.”
We are looking into this “technicality.” This to us is a bias and unacceptable reasoning and is false. I really do not understand this decision and “technicality.”
Perhaps you can do this research as well and tell me whether DotMusic Limited owns .MUSIC mark. You will see it does.
Go to:
http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic
Under “Trade mark name” select “is” in the drop-down
Enter “.music”
Clearly says DotMusic Limited is Owner hence the objector.
Big cheap shot by the WIPO Panelist to benefit Google. Unacceptable in my opinion since it materially guided his decision to come up with any excuse to reject our Objection. Was the first time a panelist even spoke about the trademark being “graphics.” Again he is false. Other LRO decisions found this type of mark acceptable. If you search like I asked above you will see: DotMusic Limited is the owner of .MUSIC trademark. This bogus technicality never existed.
However I will copy and paste what the OHIM trademark office says (and you can verify):
Trade mark name : .Music
Trade mark No : 008139792
Trade mark basis: CTM
Nice Classification: 35
List of goods and services Advertising; business management; business administration; office functions; management of databases, management of a database for Internet domain names and projects, also containing Internet domain names and other Internet addresses; administrative services provided in connection with registration and allotment of Internet domain names and other Internet addresses, including renewal and assignment services.
Nice Classification: 42
List of goods and services Design, installation, maintenance, updating and rental of computer software; technical assistance services in the fields of telecommunications and IT; Computer services, namely research, reservation, recording and administration of Internet domain names; design, creation, hosting, maintenance and promotion of Internet web sites for others; Design of computer and telecommunications systems; engineering services for applications on large and medium-sized computer systems; computer management services, namely computer facilities management; technical support in the operation of computer, telecommunications and data transmission networks; technical appraisals relating to the installation of telecommunications terminals; technical expertise relating to Internet domain names and projects; engineering and administration (programming) of telecommunications networks; consultancy relating to electronic security and information system security; surveying relating to the installation of telecommunications terminals, national or international database servers, centres providing access to a computer network; computer rental; among other for worldwide (Internet) or private access (Intranet) telecommunications networks; computer programming; research and development of new products; scientific research for medical purposes; updating of databases and software; software maintenance services; creation of virtual and interactive images; encryption and coding of computer language; indexing of Internet sites; research and monitoring of Internet sites; computer load relief; conversion of data documents from physical to electronic media; management of a web based commercial platform of Internet domain names and projects, surveying for Internet domain names and projects, design and development of Internet projects; consultancy and appraisals relating to computer security; monitoring of data, signals and information processed by computers or by telecommunications apparatus and instruments.
Nice Classification: 45
List of goods and services Domain name reservation, registration, maintenance and management services; domain name searching services; domain name registry services, namely co-ordinating the assignment of domain names and address space; technical and legal research relating to Internet domain names.
Owner Name: DotMusic Limited
ID No: 515250
Natural or legal person: Legal entity
Address: Arch. Makariou III, 229 Meliza Court, 4th Floor
Post code: 3105
Town: Limassol
Country: CYPRUS
Correspondence address: DotMusic Limited Arch. Makariou III, 229 Meliza Court, 4th Floor CY-3105 Limassol CHIPRE
What kind of research do this Panelist conduct (if any at all except take Google’s words) and make decisions on a materially bogus and false claim?
The “technicality” was false. Obviously the Panelist screwed up big time. We certainly feel screwed over this decision.
Can WIPO explain why ICANN dodges basic trademark law which dictates that you can own a generic word trademark in a different channel of trade (which also includes the significant “.” before the word). We do not deal with music or are a music store. We are a DOMAIN company. It is a legitimate trademark.
If you are commonly-known as that name (in this case .MUSIC in the class of domains) in your channel of trade you are very well-known and recognized by nearly all the channels of trade (registries, registrars, resellers plus registrants through our MCMO partners) and also mentioned by all trade publications as .MUSIC (or Dotmusic) and also sponsored events as .MUSIC (not DotMusic) in all relevant channels of trade then what does one need to do to win an LRO?
I really do not get it. What are the unintended consequences of such a decision?
Throwing our case over a technicality that is false is unacceptable. Very saddened by this decision. Might as well just have ICANN auction everything we have built to the highest bidder. According to this panelist there is no unfairness or confusion even though nearly the entire relevant domain industry knows us and we have significant support from the music community. How can a Panelist argue that they have not given Google (or others) an unfair advantage they can exploit that we built?
Also these WIPO and ICC objections are not cheap. We worked our butts off to build a brand in a bona fide manner but it seems Google (and others) have figured out the loopholes to gain this unfair advantage aided by Panel decision. I do not get it how this Panelist can look himself in the mirror and really believe he made the best decision which has no unintended consequences. He did not even explain how we are not harmed and how the brand we built is worthless.
Dodging the real questions is truly saddening. Making a decision on a fake and untrue technicality is a cheap shot and just makes this entire process look like a joke and an attempt for all contested strings to go to auction. An auction gives the entire space to the big corporations and monies from those proceeds go to ICANN. How there isn’t there a conflict of interest in these proceedings is beyond me. ICANN gives the rules to WIPO panelists with the result of an Objection rejection benefits ICANN since it leads to an auction.
I fear for the second round. Companies like Staples or Target (or Universal) and many fortune 500 companies with generic terms as their trademarks are in a lot of trouble if they do not apply for their brands since LROs have shown zero credibility. Even if they do apply there is a likelihood they will have to buy back their brand in a private auction or perhaps pay ICANN in an auction to buy their brand back. I think there is a term many of us in the domain space use for this behavior. You can fill in the blanks.
Constantine
.MUSIC
Constantine
“The case, DotMusic v Charleston Road Registry (Google) was actually thrown out on a technicality — DotMusic didn’t present any evidence to show that it was the owner of the trademarks in question.”
When you file a Legal Rights Objection based on a trademark, failing to prove the existence of the trademark isn’t a technicality its the guts of the claim that you failed on.
so the whole point of coming up with the “.music” name long before a TLD even existed was so you could claim it and say you’ve been using it when the time comes.
seems kinda transparent..
there is no TLD called .music yet so why was your company called .music… a make believe TLD… this all seems sorta obvious to a rational thinking person
Mike,
We did provide the certificate from 2009. This was the basis of the decision and it was a complete excuse and technicality which was entirely false. If it was this material all the Panelist had to do is check OHIM to verify. We just paid him money and he could not be bothered to do a basic trademark check when this issue was this material?
Any competent WIPO attorney would take a few seconds of their time to do this if they felt there was an issue.
There is no “technicality” and obviously there was clear bias and pure laziness. It was obvious David J.A Cairns was digging for info to refuse our objection.
As far as I am concerned we paid David J.A Cairns thousands of dollars and he was lazy with his research and findings. WIPO should never hire him again and these types of decisions are a slap in the face of the process.
If you want proof that DotMusic Limited is the owner of .MUSIC here is the screen shot: http://www.music.us/lro/dotmusic-limited-trademark-owner-008139792.jpg
Is this the best David J.A Cairns could come up with? Plainly unacceptable. A panelist should give a decision based on the merits of the case not an easily-verifiable technicality that was false.
Constantine
.MUSIC
@ontheinterweb You are correct to assume that if there is no brand created the trademark should not stand a chance. Problem we had was we put in years of resources, community outreach and built a real brand with all the channels of trade and have put together valuable reseller deals to offer the extension. Our only protection from other piggybacking or freeloading on what we created was the trademark. However the LRO seems not to care about anything related to legal rights even if it is in the same channel of trade, you are recognized in that relevant sector and all your activities and brand building was bona fide and in good faith. I do agree though that just having a trademark on a TLD that is not well recognized, not have any significant brand equity built and not i the same class would not have any weight. The way that the LRO’s are set up now noone can win that has a generic trademark.
Constantine
.MUSIC
Constantine
I don’t see how your trademark is any different from any other front running generic word trademark.
.Music doesn’t exist as we sit here today and certainly didn’t exist in 2009.
It was an anticipatory mark not something that was in use.
You certain have rights to trademark Music.us or Music.co but that would not give you rights to .music.
WIPO has struck down ALL objection based on a front running trademark application
well, .music has existed the same way .amazon has always existed..
just look up at your address bar.. i mean it says .amazon right there and they’ve been using it since the mid 90’s… (okay, it actually says http://www.amazon... but close enough right?)
but props for being interested in this thing long before a lot of people saw it as viable and it must be frustrating watching other people say “yea, that is a good idea” and jump on board.
“We did provide the certificate from 2009.”
Which shows the registrant as “Constantine Roussos”.
What you DIDN’T provide was evidence that the registration was assigned later to another entity.
The panelist ruled on the evidence you provided. It is not his fault that you or your counsel made a basic error in failing to provide documentation of the ownership of the registration.
It is not the job of an adjudicator to go off and look for what you left out of your evidence. But your persecution complex blinds you from accepting responsibility for your own actions.