The second Legal Right Objection been upheld by a three member WIPO panel this time by The DirecTV Group Inc. against its competitor Dish DBS The applied-for gTLD string .Direct.
Directv did not apply for the new gTLD .Direct, but its main competitor Dish Network did and Directv filed this objection.
The only other new gTLD application for .direct was filed by Half Trail, LLC a Donuts company.
The WIPO Panel Decision can be best summarized by this paragraph in the ruling:
“The Panel rejects Respondent’s professed bona fide motives for applying for the String. Rather, the Panel views Respondent’s effort as part of a battle for satellite television market share. Accordingly, under the standards set forth in the Procedure, the Panel concludes that the potential use of the applied-for gTLD by Respondent takes unfair advantage of the distinctive character or the reputation of Objector’s registered marks, and unjustifiably impairs the distinctive character or the reputation of Objector’s mark, and otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and Objector’s mark.”
“The Panel concludes that there is something untoward in Respondent’s motives here, and that an intolerable state of affairs would obtain if Respondent’s application for the String were allowed to stand.”
Back to the decision here are the details of the opinion:
The Guidebook sets forth eight non-exclusive factors which should be considered by the Panel when applying the Section 3.5.2 standards to the facts of this case. The Panel will address them below in order.
i. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or meaning, to Objector’s existing mark.
According to Objector, it is “indisputable that the gTLD string ‘.DIRECT’ is nearly identical to DIRECTV’s core intellectual property, including its name, and its family of DIRECTV and DIRECT-formative trademarks, and its primary domain name <directv.com>.
According to Respondent:
“The applied-for gTLD <.direct> is not identical or substantially similar to any of Objector’s marks.
While Objector submitted a roster of many trademark registrations in the U.S. and internationally using the term ‘DIRECTV’ ‘direct+{suffix}’, none of these registrations is for ‘direct’ by itself. That is, Objector has not established that it owns any trademark rights, anywhere in the world, in ‘DIRECT’ in and by itself. Instead, each of Objector’s trademark registrations is for ‘direct’ in combination with another term, such as ‘tv’, ‘hindi’, ‘mandarin’, ‘pinoy’, ‘world’, ‘view’, etc., as is shown by the registrations set forth in Objector’s Attachments B and C. In view of the inherent generic and descriptive nature of the word ‘direct,’ it is highly unlikely that Objector – or anyone else – could own exclusive trademark rights in ‘direct’ – especially when used for television or other services offered directly to consumers.
The Panel concludes that the String is similar to the DIRECTV mark inasmuch as it differs by only one letter, and is similar to the other DIRECT-formative marks of Objector. The Panel is well aware of the fact that Objector’s main mark is a contraction of the terms DIRECT and TV, with the T serving a dual role. Even sothe String and the marks are similar. It bears noting that confusing similarity is not required under this fact.
As respects the “survey evidence” alluded to by Respondent under this head, the Panel will address it later in this opinion.
The Panel finds that this factor weighs in favor of Objector.
ii. Whether Objector’s acquisition and use of rights in the mark has been bona fide.
There is no serious dispute that Objector’s acquisition and use of rights in its various DIRECT-formative marks is bona fide.
Accordingly, the Panel finds that this factor favors Objector.
iii. 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 Objector, of Respondent or of a third party.
According to Respondent:
“Objector failed to show that the public recognizes ‘DIRECT’ as its mark. Indeed, the facts show that ‘Direct” is not associated with Objector.
Dr. Maronick’s survey shows that less than 6% of persons responding to his survey made any connection between .direct and Objector. Maronick
As Dr. Maronick states: ‘In this survey, respondents were asked ‘If you were to see a domain name ending with ‘.direct’ would you associate it with any particular company or organization?’ Those who said yes were asked ‘what company or organization?’ Less than 6% of respondents (11 persons out of 216 responding) mentioned DirecTV as that company.
Most respondents (159 out of 216) did not name any company at all.’. That result is far less than the 15-20% minimum that would be needed to show any association or confusion. That result is not surprising. Thousands of trademark registrations use the word ‘direct.’ Most of those use other words or symbols with ‘direct’ – again because no one entity can have exclusive rights to such a generic word. Thus, a search of live trademark applications and registrations at the U.S. Patent and Trademark Office alone revealed over 3,000 results incorporating ‘direct’ in a mark. The Panel is not convinced that the Maronick survey supports Respondent’s case here. First, the context of the survey is not provided. That is to say, the precise circumstances under which the survey was conducted are not laid out by Respondent or its expert, Dr. Maronick. Rather, a bare summary of the methodology and the salient findings is provided. As such, the Panel finds the survey to be of little probative value.
The Panel also questions certain aspects of the methodology, at least as far as it understands it. For instance, it is arguable that survey respondents who do not know the major players in the transmission of entertainment via satellite should not even be counted in the survey.
Further, the Panel notes, assuming the validity of the survey (and the Respondent’s clarifications as to survey responses in its Rejoinder), that nine out of 46 survey respondents who did associate the hypothetical domain name <television.direct> with a particular company identified Objector. This outcome, albeit with a very small sample, confirms that more than 19% of the survey participants who identified some company identified Objector.
Respondent asserted in its Rejoinder that, while not bearing on the main point of the conclusions it makes from its survey, some members of the public associate the <.direct> gTLD with DISH. As respects third- party uses, the Panel accepts that numerous parties have made use of the term “direct” as part of their trademark or service mark. These facts and assertions, however, are of little moment here. In the Panel’s opinion, the essential fact in this proceeding is that Respondent, a purveyor of satellite television services, is seeking to use the word “direct,” which is the dominant part of the family of marks owned and used by its chief competitor in the satellite television business, Objector.
The Panel finds that this factor weighs in favor of Objector.
iv. Respondent’s intent in applying for the gTLD, including whether Respondent, at the time of application for the gTLD, had knowledge of Objector’s mark, or could not have reasonably been unaware of that mark, and including whether Respondent 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.
This factor, in the Panel’s view, is of paramount importance in this case. There is no doubt that Respondent is well aware of Objector and its DIRECTV and other DIRECT-formative marks. Objector is Respondent’s main competitor, and vice-versa, in the major market of satellite television services in the United States.
Respondent has never used the term “direct” as a trademark or service mark, and with good reason. If it tried to do so, it would likely be enjoined by a court of law at Objector’s behest. Respondent’s claim that it has applied for the <.direct> string because it provides services (in the generic sense) directly to consumers is viewed by the Panel as a contrivance.
Rather, the Panel concludes, based on the record before it, that Respondent has applied for the String as part of an ongoing battle for market share, at Objector’s expense.
Respondent essentially admits as much in its application, wherein it states that it applied for the String to “unify the full breadth of products and services offered by Applicant and its affiliated entities under one brand umbrella.” The String, therefore, would serve as the “one brand umbrella” under which the “full breadth” of Respondent’s products and services would be unified. The Panel finds this admission in the application as far more reliable than the statements, quoted above, by Respondent’s vice president, who disavows Respondent’s brand-centered motivation in applying for the String.
The Panel concludes that this factor favors Objector.
v. Whether and to what extent Respondent has used, or has made demonstrable preparations to use, the sign corresponding to the gTLD in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise by Objector of its mark rights.
The discussion under factor 4 applies with equal force here. The Panel concludes that this factor favors Objector.
vi. Whether Respondent 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 Respondent is consistent with such acquisition or use.
Respondent has no marks or other intellectual property rights that correspond to the word “direct.” The Panel finds that this factor favors Objector.
vii. Whether and to what extent Respondent has been commonly known by the sign corresponding to the gTLD, and if so, whether any purported or likely use of the gTLD by Respondent is consistent therewith and bona fide.
The Panel finds that Respondent has not been commonly known by the word “direct.” By contrast, Objector has long been associated with the word “direct” (albeit with the term “TV” or a geographical or other descriptive indicator) in the entertainment sector. The Panel finds that this factor favo Objector.
viii. Whether Respondent’s intended use of the gTLD would create a likelihood of confusion with Objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
As noted above, Respondent stated in its application that it intended to use the String to “unify the full breadth of products and services offered by Applicant and its affiliated entities under one brand umbrella.”
Notwithstanding Respondent’s subsequent, and unconvincing, efforts to disavow this stated motive, the Panel believes that consumer confusion would be likely if this application were allowed to stand. It appears very likely, based on Respondent’s survey alone, that some Internet users seeking Objector’s satellite television services would be confused to land at a website accessible at, for example, the domain name television.direct.
The parties are in direct competition for the satellite television market, and the dominant word in Objector’s family of marks is the word “direct.” Under these circumstances, the Panel concludes that consumer confusion would be the likely result if Respondent were allowed to keep and use the .direct string.
The Panel concludes that this factor favors Objector.
7. Decision
For the foregoing reasons, the Objection is upheld