The second Legal Right Objection been upheld by a three member WIPO panel this time by The DirecTV Group Inc. against its competitor Dish DBS The applied-for gTLD string .Direct.
Directv did not apply for the new gTLD .Direct, but its main competitor Dish Network did and Directv filed this objection.
The only other new gTLD application for .direct was filed by Half Trail, LLC a Donuts company.
The WIPO Panel Decision can be best summarized by this paragraph in the ruling:
“The Panel rejects Respondent’s professed bona fide motives for applying for the String. Rather, the Panel views Respondent’s effort as part of a battle for satellite television market share. Accordingly, under the standards set forth in the Procedure, the Panel concludes that the potential use of the applied-for gTLD by Respondent takes unfair advantage of the distinctive character or the reputation of Objector’s registered marks, and unjustifiably impairs the distinctive character or the reputation of Objector’s mark, and otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and Objector’s mark.”
“The Panel concludes that there is something untoward in Respondent’s motives here, and that an intolerable state of affairs would obtain if Respondent’s application for the String were allowed to stand.”
Back to the decision here are the details of the opinion:
The Guidebook sets forth eight non-exclusive factors which should be considered by the Panel when applying the Section 3.5.2 standards to the facts of this case. The Panel will address them below in order.
i. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or meaning, to Objector’s existing mark.
According to Objector, it is “indisputable that the gTLD string ‘.DIRECT’ is nearly identical to DIRECTV’s core intellectual property, including its name, and its family of DIRECTV and DIRECT-formative trademarks, and its primary domain name <directv.com>.
According to Respondent:
“The applied-for gTLD <.direct> is not identical or substantially similar to any of Objector’s marks.
While Objector submitted a roster of many trademark registrations in the U.S. and internationally using the term ‘DIRECTV’ ‘direct+{suffix}’, none of these registrations is for ‘direct’ by itself. That is, Objector has not established that it owns any trademark rights, anywhere in the world, in ‘DIRECT’ in and by itself. Instead, each of Objector’s trademark registrations is for ‘direct’ in combination with another term, such as ‘tv’, ‘hindi’, ‘mandarin’, ‘pinoy’, ‘world’, ‘view’, etc., as is shown by the registrations set forth in Objector’s Attachments B and C.…
