Another day another losing Legal Rights Objection (LRO) but the first case to be decided on the new gTLD .Now
The Objector/Complainant Starbucks (HK) Limited of Hong Kong, China, lost the first of five objections it filed against all other applicants for .Now
This case involved the applicant One.com A/S of Copenhagen, Denmark
“In the Panel’s view “existing legal rights” means rights that exist at the time that the application for the gTLD under objection is filed. In this case that means those legal rights that the Objector had at the time of the Respondent’s application for <.NOW> was filed with ICANN. ”
“The Panel notes that ICANN does not publish the filing date but rather shows a prioritization number for new gTLD applications.
“The Panel thus concludes that the earliest date on which the Respondent could have filed its application for the <.NOW> gTLD was 20 January 2012, and proposes to use that date as the date at which the Objector’s “existing legal rights” are to be judged.”
The Panel is satisfied that, even if the Objector only owned those registered trademarks that prominently feature the word NOW, albeit in stylized form surrounding by additional graphical matter, the Objector is a “rightsholder” within the meaning of Section 3.2.2.2 of Module 3.”
“That merely gives the Objector standing to bring this proceeding, and says nothing about the extent to which those rights are impacted by the Respondent’s application for the NOW gTLD. ”
Unlike the Uniform Domain Name Dispute Resolution Policy (“UDRP”) first limb reference to a mark “in which the [complainant] has rights”, much narrower “ownership” by the Objector appears at first blush to be required by the Standards. But, in the Panel’s view this interpretation would be inconsistent with the grant of standing to “Rightsholders” and the Panel concludes that this factor should be interpreted as if requiring no more than that the relied-upon mark is one “in which the Objector has rights”. This interpretation would achieve consistency with the UDRP’s (and derivatives’) approach to second-level domain names under existing gTLDs and to third-level domain names under ccTLDs. It would also be consistent with the reference in factor (ii) to the Objector’s rights in the subject mark.
Accordingly, the Panel determines that the applied-for gTLD <.NOW> is both visually and phonetically similar to the NOW Mark in which the Objector had rights as at January 20, 2012, being the earliest date that the Respondent could have applied to ICANN for that gTLD string.…
