A WIPO panel has just upheld its first Legal Rights Objection (LRO) after rejecting the first 29 cases it decided.
A three member WIPO panel upheld the objection of the Del Monte Corporation of San Francisco to the new gTLD application for .Delmonte
The case was decided by a majority with a dissenting opinion filed
Here is the discussion of the panel:
In order to prevail, the Objector must establish (under Section 3.5.2 of the Guidebook) that the potential use of the applied-for gTLD by the Respondent:
- takes unfair advantage of the distinctive character or the reputation of the Objector’s registered or unregistered trademark or service mark (“mark”); and/or
- unjustifiably impairs the distinctive character or the reputation of the Objector’s mark; and/or
- otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s mark.
In addition to the above broad criteria, Section 3.5.2 of the Guidebook lists eight non-exclusive factors to be taken into consideration by the Panel in deciding a Legal Rights Objection based on trade mark rights, each of which will be addressed below.
1. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or meaning, to the Objector’s existing mark.
There can be no doubt that the applied-for gTLD string is identical to the Trade Mark.
2. Whether the Objector’s acquisition and use of rights in the mark has been bona fide.
The Objector has submitted compelling evidence to suggest that it has been the owner of rights in the Trade Mark continuously since 1891. With the apparent exception of certain registrations in South Africa and the Philippines, the evidence suggests the Objector continues to be the registered owner of the Trade Mark in not less than 177 countries worldwide. Furthermore, notwithstanding the Objector’s licensing of the Trade Mark to the Respondent and to the other licensees in territories outside the United States and South America since 1989, the Objector has taken steps to ensure its ownership of and preserve its rights in the Trade Mark in all such territories4, in particular by including the usual standard wording in the Licence Agreements to that effect.
As a matter of trademarks law, and by virtue of its registrations for the Trade Mark and the terms of the Licence Agreements, the Objector has continued to be the owner of the Trade Mark in all such territories, notwithstanding the use of the Trade Mark by the licensees (including the Respondent) under license from the Objector since 1989.
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