Regtime Ltd. and Legato Ltd of the Russian Federation  just lost two separate Legal Rights Objections at WIPO on the new gTLD strings .OPR and .KOM

In The .OPR case the company objected to the Public Interest Registry (PIR) application of .OPR.

PIR operates the .Org registry.

The second objection was to Verisign’s new gTLD application for .Kom which is the more interesting decision in my opinion.

Regtime has functioned as an ICANN-accredited registrar since 2007. Regtime was the original owner of the word trademark КОМ, registered in the Russian Federation on August 4, 2009 with registration number 385,701 КОМ trademark”).

In the .KOM case Regtime says that in 2000, only ASCII domain names were available for registration in the Russian Federation.

Regtime recognized that VeriSign, Inc.’s solution, which required Internet users to switch character sets in order to type in a single IDN, did not fully meet the needs of Russian speaking Internet users, who wanted fully Cyrillic domain names.

Regtime licensed i-dns.net’s technology in order to provide a privately offered fully Cyrillic product with both the second level and the top-level sections in Cyrillic, described by the Objectors as the “КОМ Cyrillic IDN Product”. Because Regtime was not an ICANN- accredited registry operator like VeriSign, Inc., it could not create a Cyrillic version of an existing TLD, so its product would not be in the ICANN root and would only resolve if the Internet user downloaded a browser plug-in (known as “i-client”) that enabled the browser to resolve Regtime’s КОМ Cyrillic product, or the Internet user’s ISP applied a patch to its system which would enable the Internet user’s browser to resolve Regtime’s products. VeriSign, Inc. was an investor in i-dns.net, so it was fully aware of Regtime’s activities with regard to its КОМ Cyrillic product.
According to the Objectors, Regtime launched its КОМ Cyrillic product in March 2001 and issued press releases announcing the availability of its fully Cyrillic products through a number of channels including PRNewswire, Yahoo, and Techweb. On May 22, 2001, Regtime commenced a large public relations campaign to publicize its КОМ Cyrillic product in partnership with Interfax, the leading Russian International Information Group, which included a press conference with the leading Russian IT journalists and major television stations, as well as television ads on the major Russian National channels. The total expenditure by Regtime for this campaign was approximately USD 60,000. As a result, Regtime’s КОМ Cyrillic product received significant subsequent media attention, including by the BBC.
The Objectors state that Regtime continued to advertise and sell its КОМ Cyrillic product directly through its Regtime.net and Webname.ru websites and through a large reseller network in all major cities of the Russian Federation.

Regtime has since 2001 sold its КОМ Cyrillic products to approximately 30,000 unique customers, including many prominent companies inside and outside of the Russian Federation, such as Amazon.com.

Verisign for its part said that <.ком> gTLD is a Cyrillic transliteration of the gTLD. A <.ком> registry will create important benefits potentially for millions of registrants and other Internet users throughout the world. Potential registrants will be able to register their domain names in their own language in a TLD that is in the ICANN authoritative root server, and Internet users throughout the world will be able to access those websites and communicate over the Internet in their own language.

Furthermore Verisign said that “Regtime’s Cyrillic product by approximately 30,000 unique customers is de minimis compared to the number of potential users and benefits of true Cyrillic domain name registrations. Russian is the native or second language of more than 230,000,000 people and at present, there are approximately 60,000,000 Russian-speaking Internet users. By contrast to Regtime’s Cyrillic product, the Respondent’s <.ком> registry would offer all Cyrillic language-speaking Internet users an official and sanctioned <.ком> TLD. The public, from anywhere in the world, could register or access websites with <.ком> domain names without having to acquire plug-in software or ISP patches, as is true with all authorized TLDs comprising the authoritative DNS”

The panel found that:

1. The КОМ trademark, to the extent it may be deemed to cover domain name registration services, would have been descriptive and non-distinctive for such services. As such, it forms a rather weak basis to support the present Objection

2. The Panel is inclined to accept that the conduct of Regtime actually shows an attempt to secure for itself exclusive rights in relation to domain name registration services to the Cyrillic transliteration of the gTLD, the popularity of which domain has been established by others without the contribution of Regtime. In the Panel’s view, such use of rights would not be legitimate.

3. The Objectors have not submitted evidence that the КОМ trademark has become popular among consumers in relation to domain name registration services and that consumers recognize this trademark in the <.ком> gTLD. Given the widespread use of the gTLD around the world for many years, it can be accepted to be known to and popular among Internet users. Therefore, the Panel is not convinced that the average consumer using the Cyrillic alphabet would recognize the Objectors’ КОМ trademark in the <.ком> gTLD. Rather, it is much more likely that consumers would understand it as the Cyrillic transliteration of the gTLD.

4. Whether the operation of the <.ком> gTLD would actually interfere with the operation by the Objector Regtime of its services is a technical issue that is beyond the scope of the present proceeding and for which the Objectors have submitted no evidence. Nevertheless, given that Regtime has adopted a business model that is alleged to deviate from the standards and policies of ICANN for a uniform root and has chosen not to apply for the <.ком> gTLD itself, the Panel does not find that the operation by the Respondent of the <.ком> gTLD in compliance with the standards of ICANN could represent an activity that could be regarded as illegitimate vis-à-vis Regtime.

5. The Panel takes into account that gTLD has been operated in good faith by the Respondent’s affiliate Verisign, Inc. for many years, and the Respondent has provided evidence that it is a party to RRAs with numerous parties in respect of this gTLD. In view of this, the Panel is of the opinion that the Respondent’s affiliate Verisign, Inc. has become commonly known as a service provider for the gTLD, and that the Respondent has certain rights and legitimate interests in respect of the gTLD. At the same time, “.com” is a sign that is very similar to and corresponds to “.ком”, as the only difference between them is that they are written in different alphabets and the latter is likely to be regarded as the Cyrillic transliteration of , as more fully discussed above.

In view of the above, the Panel is satisfied that the Respondent has been commonly known, as an affiliate of Verisign, Inc., by a sign corresponding to the <.ком> gTLD and that the purported use of the .ком gTLD is consistent therewith and bona fide.

6. That the Cyrillic products ending in “.ком” were purchased from Regtime does not evidence that domain name registrants associate КОМ with Regtime. It is far more likely that registrants associate the КОМ designation in their domain name with their own registered domain name.

As discussed under item 1 above, even if domain name registration services had been within the scope of protection of the trademark, the Panel is of the opinion that the trademark would have been descriptive and non-distinctive in relation to them. Moreover, as previously observed, the consumer is likely to understand the Objectors’ КОМ trademark as the Cyrillic transliteration of the gTLD, an understanding for which the Objectors may need to bear the consequences.