Constantinos Roussos Of DotMusic Limited has responded to our post about the 1st WIPO decision denying the Legal Rights Objections filed against an applicant for .Music
It should be noted as of time of publication of the 25 objections filed with WIPO all 25 have been denied.
Here is Mr. Roussos statement:
“”We are certainly very disappointed with this decision. ”
“There are some serious inaccuracies in the decision which we obviously have issues with. For example the Panelist claims:
“The LRO Trademarks are registered in the name of “Constantinos Roussos”, and not the name of the Objector.” All the panelist had to do is go to: http://oami.europa.eu/CTMOnline/RequestManager/en_SearchBasic then under “Trade mark name” select “is” in the drop-down and enter “.music” –
Clearly says DotMusic Limited is Owner hence the objector.
Just the mere fact that he failed to do simple research to determine who the Owner is I think speaks volumes.
Also we provided Panelists ample evidence and he fully ignored our press, outreach and significant branding efforts that we are commonly known as both .MUSIC and DotMusic.
He determined that .MUSIC as ” likely to be referred to by consumers and Internet users as “dotmusic.””
This is quite a stretch since our music community and supporters and MCMO partners know the brand and product is “.MUSIC.” Registrants and the channel of trade refer to the brand as .MUSIC and obviously registrants – those consuming the .MUSIC community-based brand – will be calling it .MUSIC.
The press and all media calls it .MUSIC. Seems the Panelist has ignored everything we have said.
Do registrants of .COM refer to .COM as “.COM” or “dotcom”?
I think it is pretty clear that adding the dot (.) is of significance here and of course this panelist conveniently made this argument that potential registrants and our channel of trade calls our product and brand “dotmusic”.
All he had to do is read all the publications and press we sent them and most importantly our support.
The obviously know it is .MUSIC and when they talk to others they obviously call it .MUSIC in order to signify to others that it is a domain name. This ruling makes no sense. Do you believe a registrant will go to register a .MUSIC and think they will be registering “dotmusic” which is not a domain name?
We put a whole article explaining our views before this decision was made on this at: http://music.us/why_WIPO_must_uphold_Legal_Rights_Objections_LRO_for_DotMusic_brand.htm
Everyone is entitled to their opinion but the bottom line is all our branding over the years and support is seen as worthless by this Panel.
Interestingly enough this was the ONLY panelist who did not accept our additional submission.
Speaks volumes again.
My bet is Cairns (the WIPO Panelist) made his decision without even reading the case and rationalized it starting with the conclusion: Objection rejected. The issue of descriptiveness and branding we argue in the article above.
Seems the entire WIPO LRO process was set-up to fail by ICANN with the guidelines they gave the Panelists.
Many of the Panelists did not dive into the issues and repercussions. Panelist Cairns saying that risk of confusion as “temporary” is a slap in our face. Of course it is temporary we pretty much just gave all our .MUSIC branding efforts, partners and work to Google to leverage and “free-load.” Even better yet, ICANN can auction all our work to the highest bidder.
Here is an excerpt fro our article:
According to WIPO: “Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation”(http://www.wipo.int/sme/en/ip_business/marks/well_known_marks.htm) i.e in the relevant channel of trade – in this case for domain names – with respect to the .MUSIC community-based brand, significant community support and differentiated policies. Under Article 2 of WIPO Joint Recommendations on the Protection of Well-Known Marks these .MUSIC partner MCMOs fulfill the criteria of “Relevant Sectors” including:
“actual and/or potential consumers of the type of goods and/or services to which the mark applies” (Millions of MCMO members are potential domain registrants. DotMusic’s relevant sector and channel of trade is registering a domain name not buying “music” in the generic, descriptive sense relating to the art of sound i.e the .MUSIC domain name product is related to the Domain Name System not to the art of sound. Listeners/buyers of music are not DotMusic’s target customer and are irrelevant to the LRO since they represent the general public not the target consumers of the .MUSIC domain – the only sector that matters. Music buyers are in a different channel of trade which .MUSIC is not in);
“persons involved in channels of distribution of the type of goods and/or services to which the mark applies” (These MCMO partners constitute a majority portion of all legal music distributors online with direct relationships with potential domain registrant customers: .MUSIC domain registrants. These registrants will not be buying “music” and will unquestionably know they are registering a domain name under the DotMusic community-based brand called “.MUSIC”);
“business circles dealing with the type of goods and/or services to which the mark applies” (The domain channel of trade – registries, registrars, resellers and MCMOs- constitute the only business circles that are relevant pertaining to the goods/services of domains under the .MUSIC brand. Through its branding and marketing initiatives to the domain and ICANN industry, DotMusic efforts alone have added substantial economic value to its well-known brand and associated community-based policies which are recognized in those relevant business circles)”
Unlike most LROs our trademark is in the class of domain names. Makes a huge difference.
Courts apply their legal standard of genericness in an examination of a population segment, or universe, that it has deemed relevant i.e only the channel of trade matters not the general public. Courts find words generic to one segment of the population, but hold those same words retain their trademark validity to another segment. For example, THERMOS retained its trademark significance to those in trade and to its segment of consumers. In the Bayer Co. v. United Drug Co case, the court held the term “aspirin” generic to the general public but granted it protection to those in the trade (Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (emphasis added). In Stix Prods., Inc. v. United Merchants & Mfrs., Inc it was determined that a mark’s “meaning to a non-purchasing segment of the population is not of significance; rather, the critical question is what it means to the ultimate consumer”(58 Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479,
488 (S.D.N.Y. 1968))i.e the relevant channel of trade customer for DotMusic: domain registrars, registrants, MCMOs and resellers.
This is a critical element that WIPO Panelists should strongly take into consideration to rule in DotMusic’s favor: Only the classes of actual buyers in the channel of trade are relevant. In the case of the genericness of .MUSIC domains it is clear that a registrant will not go to a registrar, such as Godaddy, or through a reseller of MCMO, to buy “music” pertaining to the art of sound. It is indisputable that there is no confusion from the registrant’s point of view that what is registered is a domain name related to the DNS not music related to the art of sound. Also the registrant is NOT buying “dotmusic.” The rgistrant is buying “.MUSIC”
It is clear that Panelists can not claim that .MUSIC is descriptive since the product’s functions are related to domains and the DNS which have nothing to do with the art of sound. The domain’s content which is created by the registrant is of no significance since the domain name alone is not “music.” For example, if the Rolling Stones were selling “Rolling Stones” merchandise at their concerts it is clear that their product would be branded under the classes relating to “merchandise” not music. This is akin to domain names. In these cases the word “music” is used in an arbitrary manner with no significance to the mark’s classes pertaining to domains since it is clear the product/service offered relates to the DNS. There is zero possibility that a registrant (the customer) will be confused that the product they are purchasing is music i.e a song. The relevant sector – the crucial factor pertaining to LROs – is domain names. It is clear that music buyers or music listeners will not be able to buy or listen to any “music” if they visited the relevant sector of trade pertaining to domain names and .MUSIC: Registries, registrars and resellers do not offer “music” they offer domains.
If the WIPO LRO Panelist examines only a term’s dictionary definition, they would fail to evaluate the term’s significance to members of the relevant sector. Such an examination ignores the possibility of different definitions within separate market segments. Dictionaries define words according to use by writers deemed authoritative by the dictionary editors. Although this method may be suitable for determining word meaning in the context of general usage, it is inadequate for assessing the marketplace meaning of a trademark. Moreover, the special meaning associated with a term that a trademark holder creates through its use cannot be measured by its dictionary definition (Carol A. Melton, Generic Term or Trademark: Confusing Legal Standards and Inadequate Protection, – Am. UL Rev, www.wcl.american.edu/journal/lawrev/29/melton.pdf, 1979, Pg 21 and Julius R. Lunsford, Jr.,Trademarks and Semantics: The Use and Misuse of Trademarks in Dictionaries and Trade Journals, 62 TRADEMARK REP. 520 (1972))
Generic use of trademarked products in the same relevant field with respect to intellectual property rights and classes is illegal. Unless you think a domain name is somehow related to the art of sound not the DNS. This is what the real issue is here.
Would .MUSIC consumers think they are buying “music” or a domain name that is plainly called “.MUSIC”?
Since domains are not in the class of music, this case is obvious since the critical element that the channel of trade is domains NOT music.
Question now is which Panelist will figure this out.
Our mark classes and channel of trade is domains. How is this so difficult to figure out? Last time I checked “Apple” was not for apples. Why can’t this apply for .MUSIC as well? I think we have shown recognition without doubt. Time for Panelists to take some accountability and responsibility and realize the unintended consequences here.