A one member WIPO panel has rejected the objection of Dot Tunes Limited, which is Constantine Roussos company, to Amazon’s new gTLD application of .Tunes.
Dot Tunes Limited is an applicant for the new gTLD of .Tunes as well.
Another one of Mr. Roussos company’s DotMusic Limited is an applicant for .music and also filed objections to all other applicants for .music
Here are the relevant facts and findings by the panel:
”The Objector is the registered proprietor of a European Community Trademark .TUNES in classes 35, 42 and 45
The mark was applied for on December 30, 2011.
The specification of the mark cover“domain name reservation, registration, maintenance and management services: domain name searching services:
domain name registry services, namely coordinating the assignment of domain names and address space; Legal research relating to Internet domain names”
The one member panel found thatObjection should be rejected.
The Objector’s trademark .TUNES is phonetically similar to the gTLD .tunes.
The word “tunes” is however, a generic and descriptive mark when used in relation to music, which is the intended use of both the Objector and the Applicant.
The.TUNES trademark as registered includes many other elements,including, colours, a speech bubble and the image of a person wearing headphones.
None of these are similar to the.tunes gTLD.
It is in fact likely that an application for “TUNES” by itself as a trademark without these additional features would have been rejected for registration.
The Objector has produced very little evidence of use of .TUNES in trade or commerce.
More substantial evidence was produced in relation to the use of .MUSIC.
However, no substantive argument was put forward as to why this was relevant to the application for TUNES.
The panel can see no relevance other than that they are related words.
The Panel does not consider than any consumer seeing the gTLD tunes would relate it to the Objector.
Given the generic nature of the gTLD and the very limited use made by the Objector of .TUNES the Panel does not consider the element relevant to deciding this case.
Whether the applicant has marks or other intellectual property rights in the sign corresponding to the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, has been bona fide, and whether the purported or likely use of the gTLD by the applicant is consistent with such acquisition or use.…
