A one member WIPO panel has rejected the objection of Dot Tunes Limited, which is Constantine Roussos company, to Amazon’s new gTLD application of .Tunes.
Another one of Mr. Roussos company’s DotMusic Limited is an applicant for .music and also filed objections to all other applicants for .music
Here are the relevant facts and findings by the panel:
“The Objector is the registered proprietor of a European Community Trademark .TUNES in classes 35, 42 and 45
The mark was applied for on December 30, 2011.
The specification of the mark cover“domain name reservation, registration, maintenance and management services: domain name searching services:
domain name registry services, namely coordinating the assignment of domain names and address space; Legal research relating to Internet domain names”
The one member panel found that Objection should be rejected.
The Objector’s trademark .TUNES is phonetically similar to the gTLD .tunes.
The word “tunes” is however, a generic and descriptive mark when used in relation to music, which is the intended use of both the Objector and the Applicant.
The.TUNES trademark as registered includes many other elements,including, colours, a speech bubble and the image of a person wearing headphones.
None of these are similar to the.tunes gTLD.
It is in fact likely that an application for “TUNES” by itself as a trademark without these additional features would have been rejected for registration.
The Objector has produced very little evidence of use of .TUNES in trade or commerce.
More substantial evidence was produced in relation to the use of .MUSIC.
However, no substantive argument was put forward as to why this was relevant to the application for TUNES.
The panel can see no relevance other than that they are related words.
The Panel does not consider than any consumer seeing the gTLD tunes would relate it to the Objector.
Given the generic nature of the gTLD and the very limited use made by the Objector of .TUNES the Panel does not consider the element relevant to deciding this case.
Whether the applicant has marks or other intellectual property rights in the sign corresponding to the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, has been bona fide, and whether the purported or likely use of the gTLD by the applicant is consistent with such acquisition or use.
The Applicant bases its case on the argument that the gTLD is generic and descriptive. It therefore has not sought to prove any intellectual property rights.
Whether and to what extent the applicant has been commonly known by the sign corresponding to the gTLD, and if so, whether any purported or likely use of the gTLD by the applicant is consistent there with and bonafide.
The Applicant has not been commonly known by the sign.tunes or TUNES.
It intends to build a business using the gTLD..
Given the generic nature of the sign and the limited use of the Objector’s mark, the Panel finds that there is little or no likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the gTLD.
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 (“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.
I reached out to Mr. Roussos for comment who had this to say:
Mike, thanks for mentioning us in your article. Just for the record we wanted to clearly mention that we did not apply for this string and the objection was clearly a defensive registration because having multiple music-themed synonyms would dilute our community-based .MUSIC brand and certainly create confusion in the marketplace akin to the issue with plurals and singulars, which we publicly disagree with. We do believe allowing plurals and singulars or confusing synonyms is not at all useful to the Internet community and we believe it will create a strong likelihood of confusion on the Internet, which will be abused by bad actors – especially in non-community-based sensitive strings without appropriate pro-active safeguards.
These are the quotes we thought were the most notable by WIPO panelist which have a great weight for our community-based and branded .MUSIC:
“Objector filed evidence showing the fame of .MUSIC including the sponsorship of various events, press releases and Internet traffic.” (page 3)
“The Objector has produced very little evidence of use of .TUNES in trade or commerce. More substantial evidence was produced in relation to the use of .MUSIC.” (page 4)
We agree with WIPO that “When one trademark owner registers its trademark in one such gTLD and another owner registers an identical or similar mark in another gTLD, the public will not be able to clearly attribute each domain name to a specific trademark owner . This is likely to cause confusion. Moreover, to the extent Internet users are unable (or become unaccustomed) to associate one mark with a specific business origin, the distinctive character of a trademark will be diluted.” (http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ Section 20).”
Also it is also noteworthy to mention about in our cases against applicants with open, sensitive music-themed strings without appropriate safeguards that WIPO agrees that “from an IP perspective, adding more open (emphasis added), i.e., unrestricted and unsponsored/non-community-based gTLDs, is more likely to increase the likelihood of confusion (and the cost for defensive or preemptive measures) than the scope for brand differentiation.” (http://www.wipo.int/amc/en/domains/reports/newgtld-ip/ Section 21).