WIPO Denies Another Legal Rights Objection To .Music: Community Trademarks Of Objector “Not Bona Fide”

A WIPO panel has rejected another Legal Rights Objection to the new gTLD .Music .

This objection was to Famous Fours application to operate the .Music registry and was filed by another applicant for .Music, DotMusic Limited/Constantinos Roussos.

The panel basically found that the community trademarks of the Objector were not bona fide:

The Objector filed for registration of its .MUSIC and DOTMUSIC figurative Marks in the European Union on March 5, 2009.

Respondent has brought to the Panel’s attention that prior to the filing of the CTM applications, Mr. Constantinos Roussos had been refused trade mark registration in the United States for “DOTMUSIC”, “MUSIC.US”, and “.MUSIC and Design” filed on December 19, 2007, March 3, 2009, and December 31, 2010, respectively.

“DOTMUSIC” and “MUSIC.US” were refused for being merely descriptive, and the latter was essentially characterized as a domain name rather than a trade mark.
“The mark “.MUSIC and Design” was refused for lack of use in commerce as of the filing date of the application, and also because of the applicant’s failure to comply with the examining attorney’s requirement to disclaim “.MUSIC” apart from the mark as shown, as it was considered that the term “.MUSIC” merely described an ingredient, quality, characteristic, function, feature, purpose or use of the applicant’s services.”

“It bears noting that the very same “.MUSIC and Design” mark having been refused registration in the United States, became the subject of the Objector’s CTM registration No. 008139792.”

“Considering that ICANN’s New gTLD Program had been widely reported by the time the Objector’s representative filed for trade mark registration in the United States; that the CTMs were applied for only after being refused registration in the United States where the Objector’s operations seem to be based; and that the Objector’s CTMs have not been put to use within the European Union after registration, the Panel infers that the Objector acquired trade mark rights in “.MUSIC” for the primary purpose of bolstering its bid with ICANN to operate the .music gTLD.”

Altogether, in this Panel’s opinion these circumstances show that the Objector’s acquisition and use of its CTMs has not been bona fide.”