Here are the relevant findings from the one member panel:
The Objector holds United States Registration No. 2457989 (registered June 5, 2001) for DIY.
The mark is registered in International Class 042 as a standard-character service mark for “providing a website of information about television programming; news and weather; gardening and landscaping; crafts and hobbies; sewing and quilting; furniture and antiques; interior design and decorating; home building, improvement, repairs and renovation; and similar projects and topics.”
The Objector also holds numerous other trademark registrations in the United States and some 32 other jurisdictions for word or design marks incorporating DYI with other relevant words, such as DIY NETWORK, DIY DOMINATOR, DIY DO IT, DIY DO IT YOURSELF, DIY KIDS, DIY ON DEMAND, DIY TO THE RESCUE, ASK DIY, DISASTER DIY, and DIY DO IT YOURSELF NETWORK.
The Panel concludes that these registered marks give the Objector standing to pursue a Legal Rights Objection against the Respondent’s application for the new gTLD string .diy
C. Potential Infringement of the Existing Legal Rights of the Objector
The applied-for string <.diy> is identical to the letters comprising the Objector’s registered DIY mark.
The record amply demonstrates, however, that “DIY” is a commonly used, generic acronym for the phrase “do it yourself”, as found in dictionaries, online and print media, Internet domain names, retail industry market reports, and Internet search engine results.
The Objector concludes that the new gTLD string <.diy> could not be used by the Respondent without infringing its existing legal rights.
The Panel does not agree with this conclusion.
The acronym “DIY” has generic meanings that are not exclusively associated with the Objector’s television programming and associated website content. The Objector’s DIY trademark, as described in the United States registration, is for use in connection with “a website”. As such, the Objector cannot displace all other uses of the generic term. Where a mark consists of a dictionary word or acronym, as it does here, the scope of trademark protection must necessarily be construed narrowly to avoid giving a company exclusive rights to use a term in its generic sense.
The operation of a gTLD registry is not the same business as the operation of a commercial website.…
