Academy, LTD., d/b/a Academy Sports + Outdoors lost is Legal Rights Objection filed against Half Oaks, LLC (a Donuts compny) application for the new gTLD .Academy finding that “the common generic use of the term “academy”, as well as the lack of clear evidence showing widespread public recognition of the Objector’s ACADEMY marks, standing alone, weigh heavily in the Applicant’s favor. In this case, the Panel finds that such considerations must result in rejection of the Objector’s Objection.”
The three member WIPO panel went on to note:
The Panel’s Determinations on the Three Standards
1. Taking unfair advantage of the distinctive character or the reputation of an Objector’s mark
The Objector argued that allowing the Application to proceed would create the opportunity for the Applicant to unfairly take advantage of the public’s misperception that the Objector operates or is otherwise associated with the <.academy> gTLD. The Panel finds this argument unpersuasive. The mere delegation of a <.academy> gTLD is unlikely to create any public confusion of the kind alleged, particularly given the generic and common nature and widespread use of the word “academy”.
If a second level domain was to be registered in such a way as to infringe on the Objector’s trademark rights, the Objector could rely on the UDRP and/or the URS, and, depending on the circumstances, might also be entitled to redress in an appropriate Court.
Furthermore, any advantage from a second level domain registration would accrue primarily to the second level registrant, not to the Applicant. It is therefore hard to understand how the Applicant is taking advantage by its use of the <.academy> gTLD.
2. Unjustifiably impairing the distinctive character or the reputation of the Objector’s mark
The Panel is not persuaded by the evidence presented that the mere existence of the proposed <.academy> gTLD could impair the distinctive character or the reputation of any of the Objector’s ACADEMY marks, let alone do so “unjustifiably”. Given the widespread usage of the term “academy” in daily speech and in other unrelated trademarks, the <.academy> gTLD cannot be seen as impairing the distinctive character of Objector’s marks.
3. Otherwise creating an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s mark
Any confusion which could arise between the <.academy> gTLD string, standing alone, and the Objector’s ACADEMY marks (or with any of the Objector’s “family” of ACADEMY marks) may be insignificant.
The complication comes from the potential for confusion at the second level. However, as other decisions have recently noted, the Process standard requires this Panel to compare only the Objector’s ACADEMY mark and the <.academy> gTLD string at the top level. The Panel, therefore, cannot police the issue of potential future confusion at the second level.
However, as noted in the <.blue> case (supra), even if second-level confusion is to be considered, the additional factors referred to in Section 6D of this decision, considered with the availability of the RPMs at the second level and the possibility of recourse to the courts in appropriate cases, mitigates the risk of second level confusion to a level which the Panel would regard as “permissible”.
The Panel explicitly notes that the Applicant has committed to work with rights holders to avoid the kind of second level confusion which the Objector fears may arise and has developed its own internal standards by which domain name applicants will be judged. The Panel expects the Applicant to follow through on its intent to allow only “qualified” users to register domain names.
The Panel concludes that it has not been shown that the potential use of the applied-for <.academy> gTLD by the Applicant creates an impermissible likelihood of confusion between the <.academy> gTLD and any of the Objector’s ACADEMY marks.
The Panel finds that the potential use of the applied-for gTLD by the Applicant does not:
(i) take unfair advantage of the distinctive character or the reputation of the Objector’s registered or unregistered trademark or service mark; or
(ii) unjustifiably impair the distinctive character or the reputation of the Objector’s mark; or
(iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s mark.