Vertical Axis Holds on to ParkRoyal.com after complainant is denied in UDRP

In a 3 panelist ruling Vertical Axis holds on to ParkRoyal.com but there is no finding of Reverse Domain Name Hijacking.

1. The Parties

1.1 The Complainants are Grupo Costamex, S.A. de C.V. (“Costamex”) of Mexico City, Mexico and Operación y Supervisión de Hoteles, S.A. de C.V. (“Opyssa”) of Cancun, Mexico, represented internally.

1.2 The Respondent is Vertical Axis Inc. of Barbados, represented by ESQwire.com PC, United States of America.

Factual Background

4.1 The Complainants are part of the same group of companies and conduct business in the tourism sector. One of the Complainants, Costamex, is the parent company in this group. The Complainants’ business began in Mexico in 1984.

4.2 The Complainants’ revenues in 2010 were USD 222 million and they have 30 sales offices around the world. Their customer base comes from a large number of countries but is primarily from the North American continent.

4.3 The Complainants’ business first used the “Park Royal” brand in relation to its hotels in 1989. “Park Royal” hotels have subsequently been opened in various places in Mexico and Puerto Rico. The Complainants’ group of companies has been part of the RCI affiliation program since 1999, which has resulted in its Park Royal hotels being promoted among the RCI’s 3.7 million members around the world.

4.4 The Complainants also promote their business from a website operating from the url “www.royal-holiday.com”.

4.5 One of the Complainants, Costamex, is the owner of various trade marks that comprise of or incorporate the term “Park Royal” in one form or another in Mexico, the United States and Puerto Rico. Those marks include:

(i) Mexican registered trade mark no. 669695 for the word mark PARKROYAL in class 42 with a filing date of May 6, 1998. This is the earliest registered trade mark relied upon.

(ii) United States registered trade mark no. 3146797 for the word mark PARK ROYAL in class 39.

4.6 The Respondent is a well-known dealer and speculator in domain names. A company with the name Vertical Axis Inc. was incorporated in the British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland in January 2002, but this would appear to be the predecessor in business to the Respondent, which is incorporated in Barbados with company no. 24264. Although it is registered in Barbados and two of its directors give addresses in Barbados, its third director, Mr. Ham, has an address in Vancouver, Canada. It would appear that Mr. Ham has some association with Reinvent.com, a business responsible for the Hitfarm pay-per-click (“PPC”) advertising platform. A webpage appearing on the Reinvent.com website in April 2012 asserts that:

“By 2007, through the vision and drive of our CEO, [Mr.] Ham we were recognized as undisputed leaders in the domaining industry”

4.7 The Respondent has been involved in a large number of disputes under the UDRP. It has lost at least 25 cases under the UDRP. However, it has also been successful in an even larger number of cases.

4.8 The history of the registration and use of the Domain Name until late 2008 would appear to be as follows:

(i) The Domain Name was first registered on June 10, 1997.

(ii) As at May 10, 2000 the Domain Name was used to display a webpage that contained the text “Welcome to the CES Marketing Group Website – We specialize in the development and marketing of valuable Domain Names”.

(iii) As at March 22, 2003 the Domain Name was registered in the name of CES Marketing Group Inc., with contact details in Vancouver, Canada.

(iv) As at July 27, 2004 the Domain Name was being used in connection with a PPC webpage that displayed hotel-related PPC links only. That hotel-related use appears to have continued until at least February 2005.

(v) As at March 27, 2006 the Domain Name was registered in the name of DomainWorks Inc, with contact details in Vancouver, Canada. Although the telephone number and physical address provided was different from that used by CES Marketing Group, only the last two digits of the telephone number were different.

(vi) As at February 7, 2008, the Domain Name was registered in the name of the “WhoIs Identity Shield”. Clearly, this was the name of a “privacy” shield or service. Once again the contact details for the Domain Name provided an address in Vancouver, Canada.

4.9 On November 13, 2008 UDRP proceedings (Hotel Plaza Limited, Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., WIPO Case No. D2008-1760) were commenced by Hotel Plaza Limited and Parkroyal Hospitality Management Pte Ltd. in relation to the Domain Name. Hotel Plaza Limited and Parkroyal Hospitality Management Pte Ltd are unrelated to the Complainants. Although at that time the Domain Name remained registered in the name of “WhoIs Identity Shield”, the then registrar of the Domain Name disclosed to the Center that the Respondent was the entity behind the privacy shield that actually controlled the Domain Name.

4.10 The Respondent took an active part in those initial proceedings, being represented by the same law firm that represents it in the current proceedings. The three person panel in the initial proceedings rejected the complaint. In so doing, it would appear that the panel relied upon what was being displayed on a PPC webpage operating from the Domain Name at about that time. In particular, the panel stated as follows:

“The majority of the current content on the site at the disputed domain name relates to camping and park activities, primarily confined to the United States.“

4.11 Thereafter the Domain Name was registered in the name of various “privacy” shields, although there appears to be no dispute that in reality at all times the Respondent controlled the Domain Name. Indeed, for a short period in 2011 the Respondent was openly recorded as the registrant of the Domain Name in the publically available WhoIs database.

4.12 There also appears to be no dispute that the Domain Name continued to be used to display a PPC page, although the exact form of the links displayed on that webpage from November 2008 and March 2012 is unclear. From March 2012 the webpage appearing from the Domain Name, contained a large number of different links under 12 different category headings. One of those headings was “Travel”, but the other links included, “Insurance”, “Education”, “Business” and “Entertainment”.

5. Parties’ Contentions

A. Complainants

5.1 In their Complaint, the Complainants refer to, and rely upon, the various PARK ROYAL registered trade marks described in the Factual Background section of this decision.

5.2 They refer to the history of the registration of the Domain Name, from which the Complainants conclude and assert that the Domain Name was acquired by the Respondent in February 2008.

5.3 The Complainants contend that the Domain Name is identical to the PARK ROYAL mark.

5.4 The Complainants assert that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply so far as the Domain Name is concerned. They anticipate an argument of the Respondent that it has a legitimate interest in the Domain Name based upon the fact that Park Royal is the name of an area in London, and contend that (a) Park Royal is an “area so insignificant in size and importance that the geographical meaning of its name is obscure and remote to the vast majority of Internet users worldwide”; and (b) the Domain Name has never been used by the Respondent in connection with this geographical meaning.

5.5 So far as actual use is concerned, the Complainants complain that the PPC links appearing on the webpage operating from the Domain Name include a number of links related to travel and that:

“By following these links, the Internet user can quickly gain access to hotels and services competing with those offered by the Complainant[s]”

5.6 The Complainants also assert that the Domain Name is parked with Hitfarm, a business associated with one of the Respondent’s directors, with the aim of monetising traffic reaching the PPC page because of the Domain Name’s incorporation of the Complainants’ trade mark. Such use, it is claimed, provides no right or legitimate interest.

5.7 So far as the bad faith registration is concerned, the Complainants contend, referring to paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), that the transfer of the Domain Name to the Respondent in February 2008 was a fresh registration for the purposes of the Policy.

5.8 The Complainants assert that, by that date, the trade mark had “been in continuous use in commerce in Mexico for over 18 years” and that the Complainants had registered trade marks in Mexico, the United States and Puerto Rico, and, therefore, that “the Respondent ought to have known” about the Complainants’ mark. Further, the Complainants claim that “a quick search on Google.COM would have revealed” that “Park Royal” was the brand name of the Complainants’ hotel chain, although no evidence of such search results as of the date of registration is offered in this respect.

5.9 Further, the Complainants contend that, in registering the Domain Name, the Respondent was in breach of the representation and warranty provided to the registrar of the Domain Name by means of paragraph 2 of the Policy. The Complainants maintain (citing a number of UDRP cases including, Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448) that professional domainers such as the Respondent bear a heavier burden to fulfil and discharge their Policy commitments in this respect.

5.10 So far as the bad faith use is concerned, the Complainants refer once again to the travel-related PPC links appearing on the webpage operating from the Domain Name and the fact that if the term “Discount Travel” is clicked upon, various hotel related sponsored links appear, including one which makes direct reference to one of the Complainants’ hotels in Cancun and which links to a business that offers an online booking system for both that hotel and other competing hotels in that area. Such use is said to be use in bad faith.

5.11 Reference is also made to the fact that the webpage operating from the Domain Name at one point displayed only hotel-related PPC links and that “the current configuration of the website has been in place since 2012 at least”.

5.12 Further, in support of the allegations of bad faith the Complainants rely upon the fact that the Respondent has been (a) found “guilty of cybersquatting on numerous occasions”; (b) has offered the Domain Name for sale for the “exorbitant figure” of USD 1,080,000; and (c) that the Respondent has a history of concealing its identity behind a privacy shield.

5.13 The Complainants also put forward various additional arguments in supplemental submissions covering both the issue of recusal of various panelists and the substance of the dispute. The issue of recusal is dealt with in detail later on in this decision. Further, for reasons that are also explained later on in this decision, it is not necessary to set out the Complainants’ further arguments as to the substance of the dispute.

B. Respondent

5.14 The Respondent claims that it has a legitimate interest in the Domain Name because the term “Park Royal” is said to be a well-known geographical area in London. It claims to have acquired the Domain Name as part of a large portfolio of descriptive term domain names it purchased from CES Marketing in late 2007 without knowledge of the Complainants or the Complainants’ business.

5.15 The Respondent contends that in a case where there is registration “of geographic common word domain”, it is for the complainant to show that the registration was to profit from the complaint’s mark and that this is not been shown in this case.

5.16 The Respondent also complains about the fact that the Complainants waited 6 years in bringing this Complaint.

5.17 In support of these contentions the Respondent provides a declaration from its director of finance of Ms. Wilfred-Boyce. In that declaration Ms. Wilfred-Boyce confirms that the date of purchase of the Domain Name was December 12, 2007 and that this was part of a purchase of a large domain portfolio without knowledge of the Complainants. The statement goes on to make a number of general statements in relation to the Respondent’s business, but virtually none of them address or evidence the specific circumstances surrounding the registration of the Domain Name or the other domain names acquired at that time. For example, the declaration records that the Respondent owns a large number of geographic term domain names and also a large number of domain names that incorporate the terms “Park” or “Royal”. Many of these are listed. However, it is not suggested that the Domain Name was one of a number of domain names of this sort purchased from CES Marketing in December 2007. Further, there is no evidence that the Respondent actually focused on the existence of the Domain Name as part of the purchase or that the Respondent did any particular due diligence at that time with respect to the Domain Name specifically.

5.18 Ms. Wilfred-Boyce accepts that the Domain Name has been hosted with Hitfarm and has been used for pay-per-click advertising. However, she contends that the links themselves are auto-generated by Google and that these are “constantly changing based on solely Google’s algorithm, keyword advertising inventory and user search behaviour”.

5.19 Turning to the requirements of the Policy, the Respondent contends so far as the requirement of trade marks is concerned, that “it cannot be argued that Respondent targeted Complainant or that Complainant has exclusive rights to” what it describes as a “common English word combination that is subject to tremendous third party use”.

5.20 So far as rights or legitimate interests are concerned, the Respondent contends that it has such an interest because “it registered the [Domain Name] because it is the name of an area in London”.

5.21 On the issue of bad faith, it once again asserts that the Complainants have failed to prove that the Complainants’ mark was the reason the Domain Name was registered. Further, it maintains that there can be no constructive knowledge given that the Complainants are based in Mexico and that knowledge of a foreign trade mark is not to be imputed under the UDRP.

5.22 The Respondent denies it has engaged in a bad faith pattern of registering domain names. Although it does not deny that it has lost UDRP proceedings on numerous occasions, it points to 37 decisions in its favour, which are said to support the proposition that the Respondent’s practices have been held to be legitimate and proper. In any event, it contends that each case must be decided on its merits.

5.23 The Respondent denies that the offer to sell the Domain Name was in bad faith given that an offer to sell a domain name for a significant profit is not of itself improper.

5.24 So far as the more recent PPC links are concerned, it contends that the Complainants have “concocted” a search that leads to themselves and their competitors. In particular, the Complainants are said to have “created the search either by inserting the terms into the search box or by clicking on a link for ‘travel’”. It also contends that the creation of “generic links are not evidence of bad faith”.

5.25 The Respondent also claims that the fact that the Complainants waited 15 years from the date of original registration of the Domain Name and 6 years after the Respondent’s purchase of the Domain Name means that the doctrine of “laches” applies.

5.26 Finally, the Respondent seeks a finding of reverse domain name hijacking on the grounds that at the time the Complaint was filed the Complainants knew that they could not prove bad faith registration.

5.27 The Respondent has also put forward various additional arguments in supplemental submission covering both the issue of recusal of various panelists and the substance of the dispute. Once again it is not necessary to address these in this part of the Panel’s decision.

G. Reverse domain name hijacking

6.43 As has been described, the Panel in this case proceeded on the assumption that the Respondent did not to any significant degree turn its mind to the issue of third party rights at the time of registration of the Domain Name. Further, the Respondent admits to seeking financial gain by burying its head in the sand as to the content displayed on a website operated from the Domain Name and attempting to shift all responsibility to Google.

6.44 So far as the UDRP is concerned, this is an approach that carries with it significant risk. Although the Panel agrees with the Respondent’s contention that each UDRP case should be decided on its own facts and merits, if the Respondent’s modus operandi in previous UDRP cases was similar, it is perhaps unsurprising that the Respondent’s record of success in those proceedings has been so mixed.

6.45 Admittedly, the Respondent’s assertions as to reverse domain name hijacking focus primarily on the issue of registration in bad faith, and it is precisely on this issue that the Complainants’ Complaint has foundered. Nevertheless, it does not follow that the Complainants knew or should have known at the time that they filed the Complaint that they could not prove that element. In the circumstances, it would be inappropriate for the Panel to reach a finding of reverse domain name hijacking.

7. Decision

7.1 For the foregoing reasons, the Complaint is denied.

12 Year Old Dictionary Word, Domain Name, Parlance.com Saved In UDRP

Parlance Corporation lost a UDRP against  Dynamo.com on the domain name parlance.com

Of course the domain name is also a dictionary word and the panel found  “the Complaint fails to establish either bad-faith registration or bad-faith use” so the panel should have found Reverse Domain Name Hijacking but didn’t even discuss the issue.

Here are the relevant findings by the one member panel:

The Complainant alleged that it owns A registered trademark PARLANCE and has used it since at least 1996 for its business, which is the provision of telephone operator services using speech recognition technology.

The mark was registered in June 1999.

The domain name was registered in August 2001, some 12 years ago but the panel also did not discuss the delay in bringing the proceeding either.

I think it was a lazy decision but a no brainier for the domain holder

“The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith because it is in the business of buying and selling domain names. 

“The Respondent owns over 5000 domain names and it replied to an email from Complainant with an offer to acquire the disputed domain name, stating that the Complainant is not eligible to acquire or purchase the domain name (apparently the Respondent only sells domain names to entities that acquired a related mark after the domain name was registered)

“The Respondent states that it registered the disputed domain name for its own business use immediately upon abandonment by the prior registrant. 

The Respondent executes name conception, logos and brand graphics, trademark research, and promotional copy for new start-ups and for corporations. 

Founded in Silicon Valley and based there until 2005, the Respondent holds, and manages for clients, generic and coined domains from and for use in its business. 

There are hundreds of companies in the US alone which offer the service of coining and locating names which are viable for a new mark use. Ideally the name proffered has an obtainable intuitive dotcom. The service is neither novel nor obscure, with demand over the past 20 years increasing alongside the growth of the internet.

“As the Respondent correctly points out, there is case law under the Policy to the effect that a business dealing in generic domain names is prima facie legitimate.

“As a result, it does have a legitimate interest in the domain name.

Since “parlance” is a word in the English language, and the Respondent is in the business of registering domain names composed of common words, the Panel holds that the Complainant has failed to satisfy its burden of proving that the Respondent lacks rights or legitimate interests.

“And this in particular because the disputed domain name is not strongly associated in the minds of the general public with a single, particular trademark owner: while the Complainant has a trademark registration, it has not shown that its mark is famous or even particularly well known; on the contrary, the Respondent has presented evidence to the effect that many other companies use marks or business names that are similar to the disputed domain name.”

The Panel holds that the Complaint fails to establish either bad-faith registration or bad-faith use.  As noted above, while the mark is indeed registered, it has not been shown to be so famous as to make it reasonable to assume that the Respondent was aware of it and deliberately targeted the Complainant or sought to trade on its goodwill when registering the domain name.  There is no evidence that, in the two-year period between the Complainant’s registration of the mark and the Respondent’s registration of the domain name, the Respondent became (or had reason to become) aware of it.

Further, while passive holding of a domain name may be sufficient to indicate bad faith, those are typically cases in which the complainant’s mark is sufficiently well known that it would be implausible to assume that the respondent was not aware of it.  That is not the case here.

In addition, being in the business of selling domain names is not, per se, indicative of bad faith in the sense of the Policy. “

Russian Registrar Regtime Ltd. Lose Two Legal Rights Objections To PIR’s .OPR & .Verisign’s .KOM

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.

Donuts Beats Back Academy Sports Legal Rights Objection To new gTLD .Academy

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.

7. Decision

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.

Biotechnology Industry Organization Loses WIPO Legal Rights Objection On New gTLD .Bio

Biotechnology Industry Organization of Washington, lost its Legal Rights Objection filed against Starting Dot applied for new gTLD .bio.

Here are the relevance findings by the one member WIPO panel:

A fundamental issue in this proceeding is the appropriate recognition of the word “bio” by different sectors of the public, founded on differences in the basic meaning of the word, and on differences in uses in different parts of the world.

From the Objector’s perspective, the word “bio” has become recognized as a powerful brand, signifying the services of its industry association and related activities.

From the Respondent’s perspective, the word “bio” itself is not perceived as a trade-mark, but as a word in common currency (in France and Germany in particular) which denotes organic characteristics in food or farming, and a variety of other meanings.

Respondent has gathered evidence showing that the word “bio” is widely used in third party trade-marks and domain names.

It also appears that Objector has tolerated widespread use of the term for many purposes (which even includes some examples of conferences in the field of biology).

No examples of enforcement against bio-formative domain names under the Uniform Domain Name Dispute Resolution Policy were identified. In the Panel’s view, this tends to show co-existence among many users of “bio” related signs, supporting Respondent’s contention that “bio” has many meanings and functions as a multi-facetted generic descriptor.

This factor favours the Respondent.

No specific conduct on the part of Respondent which could constitute evidence of an intention to trade on Objector’s reputation or the core elements of its business has been identified. On the evidence, the Panel therefore finds that Respondent intends to use the <.bio> string for the legitimate purposes described in its application.

In terms of awareness of Objector’s trade-mark rights, it appears likely that Respondent might have had at least some awareness, given the Internet presence of Objector’s business and its international registrations of the BIO marks. However, in this Panel’s view, this factor does not carry significant weight when there is otherwise no evidence that Respondent is attempting to trade on those rights.

In this matter, there has also been no suggestion that Respondent has engaged in a serial pattern of acquiring questionable gTLD strings.

Respondent’s application sets out the most reliable evidence of its plans for the <.bio> string. In this Panel’s view those stated plans indicate a bona fide offering of services related primarily to the operation of a platform for the sale and distribution of properly certified organic wares. At this point, there is no tangible use of the <.bio> gTLD by Respondent which would allow the Panel to truly test how and what it will offer. In the present circumstances, the Panel must deal with the evidence as it exists, and is led to the conclusion that the Respondent’s preparations to use the <.BIO> sign are bona fide.

Finally, the Panel must evaluate Respondent’s plans to determine if the intended services will be provided in a way that does not interfere with the legitimate exercise of Objector’s rights in the BIO mark. In this regard, Objector apprehends that the public will be deceived into thinking that registrants using domain names under the <.bio> gTLD are somehow endorsed, sponsored or associated with the Objector’s business, but has not filed convincing evidence to support this assertion. In any event the Panel finds it is equally plausible that members of the public encountering <.bio> domain names will view the gTLD string as evoking one of the other meanings of the word, such as biography, biology or organic.’

Given the generic nature of the word “bio” and its manifold and diverse meanings not only in English but in other languages, proof of the likelihood of confusion is very difficult to establish. Objector has not satisfied the Panel on this point. If situations arise in the future, where second-level domain name registrants use the <.bio> gTLD string in a manner or combination which infringes Objector’s rights in its field, Objector will certainly be at liberty to enforce those rights as circumstances may demand. Nothing in this decision is intended to limit the Objector’s enforcement rights in such future situations.

The Panel concludes that the Objector has failed to make out its case under the first criteria of Section 3.5.2 of the Guidebook. The evidence does not establish that the Respondent’s use of the <.bio> string will take unfair advantage of the distinctive character or reputation of the Objector’s BIO trade-marks. Objector has not proven, on the balance of probabilities that is unfair for Respondent to adopt as an identifier a descriptive term which is directly related to the organics industry which Respondent’s enterprise intends to serve.

With respect to the second criteria of Section 3.5.2 of the Guidebook, the evidence has failed to show how the Respondent’s use of the <.bio> string will unjustifiably impair the distinctive character or reputation of Objector’s BIO marks. In fact, the evidence tends to show that Objector has chosen as its mark a word that bears multi-facetted meanings in many different languages. As a consequence, there are many other users who have adopted “bio” -formative identifiers. In this context, it is difficult to see how any unjustifiable impairment can occur, so long as Respondent actually holds fast to its planned use of the <.bio> string as described in its application.

With respect to the third criteria of Section 3.5.2 of the Guidebook, the evidence does not establish that the Respondent’s planned use for the applied-for gTLD will otherwise create an impermissible likelihood of confusion with Objector’s BIO mark.