Another day another losing Legal Rights Objection (LRO) but the first case to be decided on the new gTLD .Now

The Objector/Complainant Starbucks (HK) Limited of Hong Kong, China, lost the first of five objections it filed against all other applicants for .Now

This case involved the applicant One.com A/S of Copenhagen, Denmark

“In the Panel’s view “existing legal rights” means rights that exist at the time that the application for the gTLD under objection is filed. In this case that means those legal rights that the Objector had at the time of the Respondent’s application for <.NOW> was filed with ICANN. ”

“The Panel notes that ICANN does not publish the filing date but rather shows a prioritization number for new gTLD applications.

“The Panel thus concludes that the earliest date on which the Respondent could have filed its application for the <.NOW> gTLD was 20 January 2012, and proposes to use that date as the date at which the Objector’s “existing legal rights” are to be judged.”
The Panel is satisfied that, even if the Objector only owned those registered trademarks that prominently feature the word NOW, albeit in stylized form surrounding by additional graphical matter, the Objector is a “rightsholder” within the meaning of Section 3.2.2.2 of Module 3.”

“That merely gives the Objector standing to bring this proceeding, and says nothing about the extent to which those rights are impacted by the Respondent’s application for the NOW gTLD. ”

Unlike the Uniform Domain Name Dispute Resolution Policy (“UDRP”) first limb reference to a mark “in which the [complainant] has rights”, much narrower “ownership” by the Objector appears at first blush to be required by the Standards. But, in the Panel’s view this interpretation would be inconsistent with the grant of standing to “Rightsholders” and the Panel concludes that this factor should be interpreted as if requiring no more than that the relied-upon mark is one “in which the Objector has rights”. This interpretation would achieve consistency with the UDRP’s (and derivatives’) approach to second-level domain names under existing gTLDs and to third-level domain names under ccTLDs. It would also be consistent with the reference in factor (ii) to the Objector’s rights in the subject mark.
Accordingly, the Panel determines that the applied-for gTLD <.NOW> is both visually and phonetically similar to the NOW Mark in which the Objector had rights as at January 20, 2012, being the earliest date that the Respondent could have applied to ICANN for that gTLD string.

The Respondent has drawn attention to at least one judicial decision which it says cancelled the Objector’s registered CTMs for NOW and criticizes the Objector for failing to disclose that in its Objection. The Panel agrees that the Objector should have disclosed any such decision, especially given that the cancelled marks are those that apply in the geographic region in which the Respondent operates its business.

However upon reviewing the judgment the Panel was unable to discern the findings of invalidity reported by the Respondent.

To the extent to which the Panel has to assess whether the Respondent is likely to infringe the Objector’s legal rights, any failure of an Objector to disclose a cancellation of the marks on which it relies, or a finding of invalidity, could be critical to the Panel’s determination.

The evidence adduced by the Objector shows that the NOW Mark is well known to its large IPTV customer base in Hong Kong, as well as in surrounding areas and on international airlines. However, that is not sufficient for the purposes of the Standards. Without more the Panel cannot conclude that the NOW Mark is well known in the broader sense – that is to say, well known by all of those who are likely to come across the <.NOW> gTLD.

As the Respondent has argued, it is difficult to see how there could be any association made by a stranger to both of them between the NOW Mark and the <.NOW> gTLD.

Without a person having both in mind at about the same time, there is no conflict to resolve and the Respondent’s application could proceed. The Panel finds that the number and geographic spread of people who might believe there to be any association between the <.NOW> gTLD and the NOW Mark is sufficiently geographically confined to preclude a finding that there is a global likelihood of confusion between them. That being so the Panel cannot accord any great weight to this factor in its assessment of the impact of the delegation on the Objector’s rights.

Unlike the Objector, the Respondent had not taken any steps to register NOW as a trademark prior to lodging its application with ICANN.

That is not surprising given its assertion that it intends only to use the string in a generic sense. For that reason this factor also has little weight.

Similarly, there is nothing to suggest that the Respondent has been commonly known as NOW and the Respondent has not suggested otherwise. It effectively concedes that its plan to use NOW for the online version of some services formerly delivered under the “One.com” label remains fledgling. That begs the question of whether the use of the <.NOW> string as a gTLD is a trademark usage. T

he Panel is not here to determine whether the Respondent’s broader business activities would infringe the Objector’s legal rights in the NOW Mark – only whether the delegation of the applied-for string would be likely to have that consequence and, if so, whether that consequence would be unfair, unjustifiable or impermissible.

In the Panel’s view, the word NOW is not inherently adapted to distinguish services offered by the Objector from those of others, including the Respondent.

The Panel does not regard NOW as capable of becoming distinctive in any geographically broad English-speaking market.

Certainly as at January 20 2012 it could not have been distinctive of the Objector except in the narrow geographical territory in which NOW TV operated. In the Panel’s view for a gTLD to unfairly or unjustifiably dilute or impinge on the distinctiveness of a brand, that brand would have to be known in a large number of countries and by a significant portion of the world’s Internet users. Were those qualifiers not present, a corner store with a registered trademark in an obscure geographical location could successfully block the delegation of a plain English word as a new gTLD.

The Panel is satisfied that, to date, there is little likelihood of confusion between the <.NOW> string as a gTLD and the NOW Mark.

If PCCW and the Objector continue to confine their use of the NOW Mark to their IPTV and closely related commercial activities, even on an expanded geographical basis, the Panel could see that unlikelihood continuing.

Accordingly, the Panel is confident that for so long as the Respondent continued to use the <.NOW> string as a gTLD positioned in the way foreshadowed in its application to ICANN then, assuming its application were to be successful, there would be little likelihood of confusion between the <.NOW> gTLD and the NOW Mark.

In particular, it is the Panel’s determination that mere use of the <.NOW> string by the Respondent as a gTLD would be neutral in terms of suggesting any sponsorship endorsement or affiliation by the Objector of the gTLD or the Respondent’s business. Having said that, as the Respondent is “now” on notice of the Objector’s and PCCW’s interests in relation to the NOW Mark it may elect to exclude from the range of second-level domains otherwise available those whose juxtaposition with the <.NOW> gTLD might convey some association between the registrant and the Objector. That approach might well have been an appropriate outcome had the parties engaged in the mediation envisaged by Article 16 of the Procedure.

An additional factor in the Panel’s view is the fact that six separate organizations have made an application to ICANN for a delegation of <.NOW> as a gTLD. Whilst the Panel is not conversant with the basis of each of the other four applications, it seems plausible that they are intending to position their second-level domain offerings to take advantage of the role that the .now suffix has as an ordinary English word.

Having regard to the foregoing, and to any other principles the Panel regards as relevant, the Panel has to determine whether the Objector’s trademark rights would be infringed by a delegation of the <.NOW> gTLD to the Respondent.

Of fundamental importance to that question is whether the operation of a business which grants second-level domain names under the <.NOW> gTLD is using the NOW string as a trademark.

It is difficult for the Objector to make good an argument that any use by the Respondent of NOW as a gTLD, or even in connection with the operation of a gTLD registry and related business activities, is necessarily use of that string as a trademark. Use of a string in any generic or descriptive sense is often described as a ‘defense’ to a trademark infringement action but, in truth, there is no need for a defense unless the string is used as a trademark in the first place.

As noted above, the record shows that the Respondent’s sole motivation in choosing the <.NOW> string was what that term connotes to the majority of the English- speaking world. Independently of that, the Panel takes the view that the gTLD use of the <.NOW> string being proposed by the Respondent is not the use of NOW in any trademark sense. Even associating that gTLD with supporting commercial activity does not detract from the proposition that the NOW Mark would most unlikely be infringed simply by its use as a gTLD. This is especially the case with a gTLD that is to be promoted for its ordinary English meaning and positioned vis à vis prospective registrants as enabling them to attract consumers by conveying the meaning of that word by suffixing it to their second level domain. Obviously one can envisage combinations of second level domains with the <.NOW> gTLD that might infringe the Objector’s rights but the Objector needs to show that those infringements are more likely than not to occur, and that it has failed to do.

Whilst many of the Respondent’s additional arguments are sound, it is not necessary to consider them given that the Panel’s findings are already sufficient to ground a determination in favor of the Respondent.

The Panel has determined with a high degree of confidence that the Response is valid and should be upheld because the potential use of the applied-for gTLD <.NOW> by the Respondent does not:

(i) take unfair advantage of the distinctive character or the reputation of the NOW Mark; nor
(ii)  unjustifiably impair the character or reputation of the NOW Mark; nor
(iii)  create an impermissible likelihood of confusion between the applied-for gTLD and the NOW Mark.