Latin American Telecom, LLC of Pittsburgh, Pennsylvania, represented by ESQwirecom has become the latest Objector to lose a Legal rights Objection.
Latin American Telecom objected to Google’s application for .Tube
C. The Merits
With respect to the applicable standards, Article 20(a) of the Procedure gives the Panel initial guidance: “(a) For each category of Objection identified in Article 2(e) [which includes the ‘Existing Legal Rights Objection’], the Panel shall apply the standards that have been defined by ICANN.” ICANN’s gTLD Applicant Guidebook (“ICANN Guidebook”) in turn states in Section 3.5.2: <
DRSP panel of experts presiding over a legal rights objection will determine whether the potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (‘mark’) . . ., or unjustifiably impairs the distinctive character or the reputation of the objector’s mark . . ., or otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark . . . .”
The Parties disagree as to whether the Objection meets the standards. A basic premise of Section 3.5.2 is that the Objector has trademark rights. The Objector asserts that it holds rights in the TUBE mark; the Applicant insists that “tube” is a generic term for the products or services at issue here, with no trademark significance. If the Applicant is correct, then the Objector has no rights in the TUBE mark,10 and under Section 3.5.2, the Objection cannot be sustained.
In considering whether a contested mark is generic, the Panel must examine
have looked to “purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications.”
The market trend indicates that the term ‘Tube’ is being adopted by webmasters, programmers, companies, investors and consumers around the globe, and is widely associated with websites where content in video format play a central role, where consumers and users with a common/shared interest in mainstream contents create communities or affiliate with such sites.”
Undaunted, the Objector avers that it has trademark rights in TUBE, and relies heavily on the registration of its mark with the U.S. Patent and Trademark Office. The Objector warns that “a trademark registered with a national authority is sufficient evidence of trademark rights. Presentation of a federally registered trademark and/or service mark is sufficient to confer rights to Objector.”19 The Applicant counters, correctly, that, at least in the U.S.…
