Latin American Telecom, LLC of Pittsburgh, Pennsylvania, represented by ESQwirecom has become the latest Objector to lose a Legal rights Objection.
Latin American Telecom objected to Google’s application for .Tube
C. The Merits
With respect to the applicable standards, Article 20(a) of the Procedure gives the Panel initial guidance: “(a) For each category of Objection identified in Article 2(e) [which includes the ‘Existing Legal Rights Objection’], the Panel shall apply the standards that have been defined by ICANN.” ICANN’s gTLD Applicant Guidebook (“ICANN Guidebook”) in turn states in Section 3.5.2: <
DRSP panel of experts presiding over a legal rights objection will determine whether the potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (‘mark’) . . ., or unjustifiably impairs the distinctive character or the reputation of the objector’s mark . . ., or otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark . . . .”
The Parties disagree as to whether the Objection meets the standards. A basic premise of Section 3.5.2 is that the Objector has trademark rights. The Objector asserts that it holds rights in the TUBE mark; the Applicant insists that “tube” is a generic term for the products or services at issue here, with no trademark significance. If the Applicant is correct, then the Objector has no rights in the TUBE mark,10 and under Section 3.5.2, the Objection cannot be sustained.
In considering whether a contested mark is generic, the Panel must examine
have looked to “purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications.”
The market trend indicates that the term ‘Tube’ is being adopted by webmasters, programmers, companies, investors and consumers around the globe, and is widely associated with websites where content in video format play a central role, where consumers and users with a common/shared interest in mainstream contents create communities or affiliate with such sites.”
Undaunted, the Objector avers that it has trademark rights in TUBE, and relies heavily on the registration of its mark with the U.S. Patent and Trademark Office. The Objector warns that “a trademark registered with a national authority is sufficient evidence of trademark rights. Presentation of a federally registered trademark and/or service mark is sufficient to confer rights to Objector.”19 The Applicant counters, correctly, that, at least in the U.S. jurisdiction, it is not registration that confers rights in a trademark (instead, it is use), and that registrations issued by the U.S. trademark office are still subject to cancellation if deemed to be generic.
The Panel acknowledges the Applicant’s case alleging the generic nature of TUBE. The Panel must also note the U.S. Patent and Trademark Office’s registration, which includes the notation of “first use” and “in commerce” of the mark, in February 2012 (for Class 35), August 2008 (Classes 38 and 41), February 2009 (Class 42), and May 2010 (Class 44).
The Panel notes that it serves upon appointment by the Dispute Resolution Service Provider (here, the WIPO Center), and that the Panel’s authority is governed principally by the Procedure. The Panel is not a court of law; its “jurisdiction” is limited. With registration of the TUBE mark confirmed by the U.S. Patent and
Trademark Office, and with no evidence offered to contest the registration’s validity or existence, there is a presumption of validity.
Acknowledging the Objector’s colorable rights in the mark TUBE then, Section 3.5.2 of the ICANN Guidebook instructs, “where the objection is based on trademark rights, the panel will consider the following non-exclusive factors”, which the Panel will address in turn.
Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or meaning, to the objector’s existing mark.”
The Panel concludes that the Objector’s acquisition and use of rights in its mark, TUBE, is bona fide. There is no evidence to suggest the contrary. The trademark registration materials indicate that the Objector began use of the mark in August 2008, and filed its application for registration that same month. This factor also favors the Objector.
3. “Whether and to what extent there is recognition in the relevant sector of the public of the sign corresponding to the gTLD, as the mark of the objector, of the applicant or of a third party.”
The Objector states that since 2008, it “has owned and/or developed at least 1878 ***TUBE.com domain names.”20 The Objector also emphasizes its substantial efforts to advertise and promote its domain channels. Yet it is unclear to the Panel whether the consuming public associates the Objector with the TUBE mark, or instead, with the hundreds of domain names that merely contain the “tube” phrasing, preceded by another term. The record simply does not reveal evidence to indicate public recognition of the gTLD as the mark of the Objector, or for that matter, as that of any party. According to the Applicant, this is because of the generic nature of the term. This factor leans to the Applicant.
“Applicant’s intent in applying for the gTLD, including whether the applicant, at the time of application for the gTLD, had knowledge of the objector’s mark, or could not have reasonably been unaware of that mark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.”
The Objector contends that “it is more likely than not that the Applicant was aware of Objector’s Trademark rights when Applicant applied for the .TUBE gTLD string.”21 The Applicant emphasizes again the generic nature of the term, and states that its “actual or constructive knowledge of Objector’s Marks” is “irrelevant to this analysis.”22 Moreover, this is not a situation, the Applicant argues, where the applicant has applied for or operates TLDs that are identical or confusingly similar to the marks of others.23
Of the above factors highlighted in the case law: similarity of the marks (in the context of this Objection, the similarity of the Objector’s mark to the applied-for gTLD) favors, as noted above, the Objector; strength of the mark, as discussed further herein, favors the Applicant; as there is no evidence of actual confusion, this factor favors the Applicant; the relevance of the defendant’s intent in using the mark (here, the Applicant’s intent in applying for the gTLD string) is uncertain, as discussed above; given the close proximity of the Parties’ products and services, this factor favors the Objector.
The Panel acknowledges that the task of determining likelihood of confusion “must give appropriate weight to the factors that are particularly important based on the facts of each case.”
In the Panel’s view, in the present Objection, the strength of the Objector’s mark deserves significant attention.
There is indeed a spectrum, or hierarchy, of categories of terms that trigger trademark protection. In ascending order, the four classes are: (i) generic; (ii) descriptive; (iii) suggestive; and (iv) arbitrary and fanciful.46 Suggestive and arbitrary and fanciful marks are inherently distinctive, and thus, are accorded the highest level of protection. Descriptive marks may receive protection, but only with a showing of secondary meaning, that is, the consuming public’s association of the mark with the source. Generic terms have no trademark protection. The Panel concludes that when used for online video sites, the “tube” term is not particularly distinctive; it is descriptive at best. Moreover, there is no evidence in the record to indicate that the consuming public’s recognition of TUBE is strong.
As the Applicant notes, the Objector’s primary use of TUBE is with an additional term preceding it. The Objector itself states that it has created “the largest network of ‘.com’ TLD websites with domain names that contain the word ‘tube.’ Each domain name is comprised of the word ‘tube’ preceded by a generic or descriptive word to create a ‘***TUBE.com’ domain name system.”47 The Panel is inclined to agree with the Applicant’s statement that to the extent there is public association of TUBE with the Objector, it is primarily “with specific TUBE domains preceded by an additional term, and not by TUBE alone.”
The Panel concludes that the string comprising the applied-for <.tube> gTLD does not infringe the Objector’s existing legal rights that are recognized or enforceable under generally and internationally recognized principles of law. More specifically, in consideration of the ICANN Guidebook’s multiple factors, including and especially the likelihood of confusion analysis, the Panel is of the view that the potential use of the <.tube> gTLD by the Applicant does not: take unfair advantage of the distinctive character or the reputation of the Objector’s mark; or unjustifiably impair the distinctive character or the reputation of the Objector’s mark; or otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s mark.
The burden is on the Objector, to “prov[e] that its Objection should be sustained in accordance with the applicable standards”.51 The Objector has not met this burden.