Earlier today we wrote about two Legal Right Objections (LRO) that were denied at WIPO one for .GMBH and the 5th objection filed be Defender against an applicant for .Home
Since then three more decisions came out all against the objectors on the strings .Song; .YellowPages and .Cam
The objection to .Song was brought by DotMusic Limited of Lemesos, Cyprus, which is owned by Mr. Constantine Roussous who is an applicant for .Music.
Like DotMusic Limited’s objection to Amazon’s application for .Tunes, the objection to Amazon’s application to .Song was thrown out as well as this panel cited the panel’s finding in the .Tunes case but like in the .Tunes case the panel made it clear that in making this this ruling on throwing out the LRO to .Song “it is not making findings in relation to the distinctiveness of .MUSIC. That gTLD is the subject of other LRO proceedings.”
“The Panel finds that the Objection should be rejected. Having considered the merits of the case before it, this Panel does not see any reason to depart from the conclusive reasoning in the entirely comparable case, and indeed here incorporates significant elements of that determination’s wording.”
“The Objector’s trademark .SONG is identical to the gTLD . ”
“The word “song” is, however, a generic and descriptive mark when used in relation to music, which is the intended use of both the Objector and the Applicant. The .SONG trademark as registered includes many other elements, including colors, a speech bubble and the image of a person wearing headphones. None of these are similar to the gTLD.
It is in fact likely that an application for “SONG” by itself as a trademark without these additional features would have been rejected for registration in the context of music.
The Objector has produced very little evidence of use of .SONG in trade or commerce. What evidence has been produced relates to the use of .MUSIC. However, no substantive argument was put forward as to why this was relevant to the application for .SONG.
The panel can see no relevance other than that they are related words. The Panel does not consider that any consumer seeing the gTLD would relate it to the Objector.
In the throwing out the LRO of Hibu (UK) Limited of Berkshire, United Kingdom against The Applicant Telstra Corporation Limited of Melbourne, Victoria, Australia, on the string .YellowPages the panel acknwledge that the Objector had concern that the new gTLD could cuase confusion with existing legal rights:
“The Panel finds that it is inherent in the nature of the gTLD regime that the prospect of coincidence of brand names and a likelihood of confusion will exist.”
“The Panel agrees with the Applicant’s proposition that to an extent a prospect of confusion can be managed by an operator of a site.…
