WIPO Rejects 13th & 14th Legal Rights Objections To New gTLD’s on .GMBH & Another The 5th On .Home

WIPO today released two more Legal Rights Objections (LRO) decisions today and for the 13th and 14th time ruled against the Objector.

Objectors are now 0-14 at WIPO on Legal Rights Objections

A WIPO panel ruled against Defender Security Company for the new gTLD .home for the 5th time.  Defender filed 9 LRO to the other applicants for .Home.

In the other WIPO decision today  TLDDOT GmbH, Germany, lost its objection to .GMBH filed against:

InterNetWire Web-Development Gmbh

The objector who is also an applicant for the new gTLD .Home, was relying on a Community trademark No . 008416778 .GMBH (the “Mark”) , applied for on July 9, 2009 and registered on June 18, 2010 to give them exclusive rights.

Here is a relevant part of the WIPO Panel rulings:

The Objection was filed on the basis of Section 3.2.2.2 of the Guidebook. Being one of four rights protection mechanisms enabling third parties to formally object to the assignment of an applied-for gTLD, the LRO enables trademark owners to object to the assignment of an applied-for gTLD based on identical or similar trademark rights. Under Article 2(e)(ii) of the Procedure, an objector must establish that, on the balance of probabilities, the string composing the applied-for gTLD infringes such rights.

Under Section 3.5.2 of the Guidebook, the panel of experts presiding over a legal rights objection will thus determine whether the potential use of the applied-for gTLD by the applicant:

1. (i)  takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark (“mark”), or
2. (ii)  unjustifiably impairs the distinctive character or the reputation of the objector’s mark, or
3. (iii)  otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.

The Guidebook then goes on to provide that where the objection is based on trade mark rights, the panel will consider eight listed non-exclusive factors.

he parties to the present proceedings, presumably like the other four applicants which applied for the gTLD string <.gmbh>, intend to use such string to provide a namespace for companies registered under the legal form of a “GmbH” and therefore in a generic way. According to the Applicant’s application, the Applicant intends to “establish a trusted namespace for GmbHs with validated registrants”, while the Objector wishes to “provide a dedicated namespace that is intended to be used by GmbHs”.

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