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>.
In 2002, a UDRP panel dismissed the complaint brought by a United Kingdom company claiming rights in the unregistered mark DIY, remarking, “it is in practice impossible to run a business in do-it-yourself products without using the letters DIY in a wholly generic, descriptive way.” The Respondent has applied for more than a hundred new gTLD strings, most if not all of which appear to be comprised of dictionary words and common acronyms or abbreviations. There is no evidence in the record, or from a perusal of this list of applications, that the Respondent has engaged in a pattern of seeking to operate gTLDs that are identical or confusingly similar to the marks of others.
The Respondent has not used a sign corresponding to the new gTLD string <.diy> as a mark for goods or services and denies any intention of doing so. The Respondent has described, in its application for the new gTLD string <.diy> and the Response, a plausible plan to use the string in its generic sense for an open new gTLD available for the construction of websites associated with second-level domains that could be operated by “DIY” vendors, consumers, and information providers.
The Panel concludes on the available record that confusion in the marketplace is not likely, for these reasons:
– It is not evident, on the present record, to find that the DIY mark alone is widely recognized as relating to the Objector’s programming or website or that a significant segment of the public associates the “DIY” acronym, standing alone, with the Objector.
– “DIY” is a common, generic, dictionary term, referring to an industry and a range of activities beyond the television programming and related website operated by the Objector.
– Many third parties – including retailers, manufacturers, analysts, reporters, and consumers – use the “DIY” acronym in connection with an array of products, services, crafts, hobbies, music, and domain names that have nothing to do with the Objector.
The abundance of generic uses of “DIY” suggests that the acronym alone is not distinctive to the Objector. The Objector has not demonstrated otherwise. The Objection does not include evidence showing that consumers associate the “DIY” acronym distinctly with the Objector. The Objector’s evidence concerning website visitors and social media contacts relates to sites on which the DIY NETWORK mark is used, or other marks adding words to the acronym.
The Respondent’s planned use of the new gTLD string <.diy> is concerned with “DIY” in its generic sense and not focused on the products and services of a single company or the interests of a particular “DIY” community. It is possible that the second-level domains registered under this new gTLD might compete with the Objector as “DIY” content providers but without the inclusion in the applied-for string of distinguishing elements traditionally used in the Objector’s brands, such as “network”, the Panel finds it unlikely that the new gTLD string <.diy> itself would mislead Internet users as to source or affiliation.
