November 26, 2013

DotTunes Ltd v Amazon EU Sarl, WIPO Case No LRO2013-0065, 14 July 2013

In one of the first expert determinations on Legal Rights Objections (LROs) to applications for the Internet Corporation for Assigned Names and Numbers’ (ICANN’s)new generic top-level domains (gTLDs), WIPO dismissed the objection brought by DotTunes against Amazon’s application for the gTLD ‘.tunes’. The panel found that the word ‘tunes’ was generic and descriptive and that DotTunes’ registered Community trade mark (CTM) for ‘.TUNES’ was likely to have achieved registration primarily due to the figurative nature of the mark. Further, there was insufficient evidence of use for DotTunes to establish that consumers would recognise their CTM and therefore mistakenly believe Amazon’s gTLD to be associated with it.

Legal context

On 12 January 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for new generic top-level domains (gTLDs), such as ‘Pepsi’ and ‘London’, as an alternative to traditional suffixes, such as ‘.com’ and ‘.org’. The alternatives comprised words from many different languages, including those with non-Latin characters, such as Cyrillic, Chinese and Arabic. Legal Rights Objections (LROs) permitted third parties with existing rights, such as registered trade mark owners, to file a formal objection to any gTLD application on or before 13 March 2013. An independent WIPO panel would then consider the objection under the new gTLD Dispute Resolution Procedure and the ICANN Applicant Guidebook. The Procedure requires consideration of whether use of the applied-for gTLD (i) takes unfair advantage of the distinctive character or reputation of the objector’s registered or unregistered trade mark; (ii) unjustifiably impairs the distinctive character or reputation of the objector’s mark; or (iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.

Facts

Amazon applied for ‘.tunes’ as a single-entity registry with the intention of allowing affiliated businesses to make use of the gTLD. New gTLD applicants are responsible for granting and managing second-level domains (the middle section of a domain string) which use the applied-for gTLD at the end of the string, ie Amazon would be operating all domain name usage of the ‘.tunes’ gTLD. DotTunes, a company involved in internet sales of a large range of products and services under music-themed domain names, including ‘.music’, ‘.song’ and ‘.tunes’ filed an objection on 13 March 2013. This was based on its figurative Community trade mark (CTM) for ‘.TUNES’. The CTM is registered in classes 35, 42 and 45 covering, amongst other things, ‘domain name reservation, registration, maintenance and management services; domain name registry services’ (class 45); ‘computer services; technical expertise relating to internet domain names and projects’ (class 42); and ‘management of a database for internet domain names and projects’ (class 35).

Decision

The WIPO panel found that, when used in relation to music (which was the intended use of both DotTunes and

Amazon), the word ‘tunes’ was generic and descriptive. Further, as the ‘.TUNES’ CTM included differentiators including colours, a speech bubble and the image of a person wearing headphones, it was not similar to the ‘tunes’ gTLD. The panel said it was likely that a trade mark application for ‘TUNES’ alone (without those additional features) would have been rejected for registration. DotTunes had produced very little evidence of its use of ‘TUNES’ in trade or commerce. A substantial amount of evidence was produced in relation to its use of ‘.MUSIC’; however, no substantive argument was offered in respect of why this was relevant to the application for ‘.tunes’. The panel said that it could see ‘no relevance other than that they are related words’. Given the lack of evidence, the panel did not consider that any consumer seeing the gTLD ‘.tunes’ would relate it to DotTunes.

The Procedure and the Guidebook require the panel to consider eight non-exhaustive factors when considering

an objection based on trade mark rights, including, among others, similarities in appearance, phonetic sound or

meaning, and whether there was a likelihood of confusion to the public. While the ‘.tunes’ gTLD is similar to the objector’s CTM phonetically, there were considerable differences between them including, for instance, that ‘tunes’ would be used as part of a domain string (unlike the ‘.TUNES’ CTM). Further, given the generic nature of the gTLD and the limited use of the CTM, the panel found that there was little or no likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the gTLD. As such, the panel concluded that the potential use of the applied for gTLD did not (i) take advantage of the distinctive character or the reputation of the ‘.TUNES’ CTM; (ii) unjustifiably impair the distinctive character or the reputation of the CTM; or (iii) otherwise create an impermissible likelihood of confusion with the CTM.

Analysis

This decision could be useful over the coming months and years as businesses get used to this new system, illustrating WIPO’s approach to the application and interpretation of LRO rules in practice. On 13 June 2013, ICANN published a list of the new gTLD applications it had received. Numerous applications were for words which might be considered generic or descriptive, such as ‘tech’, ‘lifestyle’ and ‘investments’. As in this case, such terms are unlikely to achieve registration as trade marks without including figurative or other inherently distinctive elements, causing difficulty for objectors attempting to establish sufficient rights to defeat these gTLD applications, leaving them to rely on the rather unpredictable action of passing-off. Many applications,

however, have also been made for less common terms such as ‘digikey’ and ‘lipsy’. Trade mark holders filing objections to these applications may well have a better case than DotTunes did here.

Practical significance

Notwithstanding this decision, ICANN’s gTLD expansion process, with its built-in protections for trade mark owners, such as the ability of rights holders to file LROs, has resulted in an enhanced level of importance being placed on the registration of trade marks and efficient management of intellectual property.