Blue Cross and Blue Shield Association just lost a Legal Rights Objection to Afilias Limited new gTLD application for .Blue
Here are the relevant findings by the three member WIPO panel:
“”The Applicant has not denied that it was aware of the Objector when it lodged the Application. However, on the evidence which has been produced, the Panel has no reason to doubt the Applicant’s assertion that it applied for the <.blue> gTLD for the purpose of establishing a new registry which would provide domain names to individuals, businesses, and organizations wishing to establish or enhance a presence on the Internet having “an affinity” with the color blue. The Applicant’s intention was to evoke a connection with the color, not with anyone’s “blue” trademark. The fact that the Applicant has applied for four other “[color]” gTLDs is consistent with that assessment.
There is no allegation that the Applicant has engaged in any pattern of conduct whereby it has applied for or operates TLDs, or registrations in TLDs, which are identical or confusingly similar to the marks of others.
The Applicant does not claim to have made any use of a sign corresponding to the <.blue> gTLD in connection with any bona fide offering of goods or services, or bona fide provision of information. However, the Applicant does submit that it has made demonstrable preparations to use the sign corresponding to the <.blue> gTLD in connection with such services.
In the <.express> case, and in at least one other LRO decision,4 expert panels have regarded the respondent’s efforts to establish the technical and administrative infrastructure to operate the new gTLD registry, as forming part of “preparations to use” the applied-for gTLD string.
However it seems to this Panel that factor 5 is concerned less with use of (or demonstrable preparations to use) the particular gTLD itself, and more with use (or demonstrable preparations to use) a sign corresponding to the gTLD separately in some way, whether as a trademark or service mark, or for the bona fide provision of information.
Before its application reaches the Legal Rights Objection stage, every applicant for a new gTLD string will presumably have carried out some work planning and/or creating the technical and administrative structure which will be necessary to operate its proposed new registry.
On that basis, the Panel would say on the evidence before it that the Applicant has not made use of, or made relevant demonstrable preparations to use, a sign corresponding to the <.blue> gTLD in connection with a bona fide offering of goods or services, or bona fide provision of information.…
