WIPO's Arbitration and Mediation Centre has issued a number of rulings which demonstrate the circumstances in which WIPO is or is not likely to uphold an objection to a gTLD application where ownership of a brand is split across territories.
In both the ".yellowpages" and ".merck and .emerck" cases, WIPO rejected oppositions to the gTLD applications in situations where both the applicant and opponent owned rights to the corresponding marks and the gTLDs in question had been legitimately applied for.
The facts of the".yellowpages" case were as follows: Telstra, who publishes the Australian version of the Yellow Pages, applied for the gTLD .yellowpages. The objector, Hibu, owns a portfolio of registered and unregistered rights in the YELLOW PAGES mark in the UK. It did not seek the gTLD ".yellowpages" for itself, but said that that no party should be entitled to register it, due to the potential for confusion arising from the mark being owned by different parties in different countries. Telstra contended that it had not acquired nor used its mark in bad faith, would continue to respect third party intellectual property rights, and would use the gTLD in ways which would not amount to "commercial effect" in the UK. The panel found that Hibu had failed to establish that the potential use of .yellowpages by Telstra "unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the objector’s mark." Notably, the panel stated that multiple “YELLOW PAGES” rights holders in different jurisdictions had been able to co-exist in the second-level registration space for many years, and noted the lack of objections in this regard. The gTLD space should be no different. Rejecting the application on the basis of Hibu’s territorial rights would effectively extend Hibu’s rights far beyond the limited territory in which its rights operate and would have the effect of a “global injunction.”
Similarly, in the .merck and .emerck cases, both the applicant and objector were deemed to be bone fide users of the MERCK mark in different territories. The panel again decided that ownership of rights in some, but not all, countries, should not be enough to prevent a mark owner from obtaining a gTLD. A further factor in this decision was a series of co-existence agreements governing how the parties would use the MERCK mark around the world. These had been entered into before the Internet existed and did not address the parties’ use of their respective MERCK marks on the Internet, in social media or in any other global marketplace. The Panel said that it was not for them to interpret those agreements and declared that, should the application of a new gTLD allegedly violate any such agreement, the parties would have to settle the dispute by means of the dispute resolution provisions of the contracts or under applicable law. As in the .yellowpages case, the panel took into account the applicant's statement that it would take all necessary measures, including geo-targeting, to prevent access to the Disputed gTLD string by Internet users in the territories in which the objector owned the trade marks rights to the marks.
By contrast, in its first decision upholding a gTLD objection, the panel (with one dissenting opinion) opposed the registration of the ".delmonte" gTLD . Although, as in the above cases, the parties both owned trade marks for the DEL MONTE mark in different jurisdictions, the particular facts of this case were that the applicant owned four South African trade mark registrations for .delmonte but was also the assignee of three licence agreements from the objector, which stipulated that the applicant would not challenge the objector's trade mark ownership or register the trade mark. The licence agreements were silent as to the issue of applications for gTLDs. The Panel concluded, on the evidence, that the trade mark continued to function as an indicator of the commercial origin of the objector and its goods (whether direct or licensed), and that the applicant's use of the gTLD was likely to create an impermissible likelihood of confusion. A key factor in the Panel's decision to uphold the objection was the "untoward" behaviour of the applicant in obtaining trade mark registrations in South Africa, arguably in breach of its licence agreements, which it considered might have been acquired specifically in order to bolster the applicant’s eventual gTLD application.
These decisions give a strong indication that objections to gTLD applications are unlikely to be successful where ownership of a brand is already split across territories and the parties have to date co-existed peacefully outside of the gTLD sphere. Although in these cases, confusion cannot be ruled out, it is not considered sufficient to prevent the acquisition of a gTLD. However, the conduct of parties has been shown to be relevant and any indication of a breach of licencing terms, even where these do not specifically apply to gTLDs, is highly likely to be taken into account. Nonetheless, the delmonte case serves as a pertinent reminder that any agreements as to the use of trade mark rights should now expressly deal with what parties are and are not permitted to do with respect to gTLDs.