Friday, February 15, 2019

Before you submit your new gTLD application...

...don't forget to tread this :-)

.YELLOWPAGES new gTLD
This is the expert determination legal rights objection dated July 25, 2013:
...having reviewed the eight non-exclusive consideration factors set forth in the Applicant Guidebook section 3.2.5, the Panel finds that the Objector has failed to establish, as it alleges, that the potential use of the Applied-for gTLD by the applicant …unjustifiably impairs the distinctive character or the reputation of the objector’s mark… or creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’s mark.” The Panel also finds no indications that such use takes unfair advantage of the distinctive character or the reputation of the objector’s registered or unregistered trademark or service mark.
In simple words
There was one applicant for the .YELLOWPAGEs new gTLD and an objector:
  1. The Objector’s mark is “YELLOW PAGES” (the “Objector’s Mark” or the “YELLOW PAGES Mark”);
  2. The Applicant (for the ".yellowpages" new gTLD) is internationally renowned as Australia’s leading telecommunications and information services company.
In this proceeding, the Objector has made a Legal Rights Objection (LRO) which refers to an objection that the string comprising the Applied-for gTLD infringes the existing legal rights of others that are recognized and enforceable under generally accepted and internationally recognized principles of law.

The Objector cited the Procedure, Article 8 and the Applicant Guidebook Section 3.5.2 (ii) and (iii) as the bases for the LRO. The Objector acknowledged that the Applicant may be the genuine proprietor of YELLOW PAGES in Australia. However, given this territorial limitation and the number of other genuine YELLOW PAGES directory providers internationally who are not connected with the Applicant, the Objector objected to an application to secure monopoly rights in the Applied-for gTLD.

The Applicant argued that the Objector made three basic points:
  1. the Objector (or a third party) holds territorial rights in the name “YELLOW PAGES”;
  2. in some jurisdictions the name “YELLOW PAGES” is generic;
  3. the name “YELLOW PAGES” is identical to the Applied-for gTLD.
The Applicant countered the arguments made by the Objector under sections 3.5.2(ii) and (iii) of the Applicant Guidebook. The Panel reviewed each of the consideration factors discussed and concluded that the nature of the gTLD regime that those applicants who were granted gTLDs would have first level power extending throughout the Internet and across jurisdictions. The prospect of coincidence of brand names and a likelihood of confusion exists.

Conclusion
There are several Yellow Pages websites around the world in numerous countries, but one of them, whatever the kid of protection it had, could not secure the only available domain name extension.

"First-level power"
Whatever the kind of extension it is: a .BRAND, a generic, a community or a geographic one, one chair is available only. This title defines exactly what a new gTLD can be: a possibility to grab a generic term, a keyword, and sit on top of a pyramid to watch competition look up at you. I like to use the work "Monopoly" for new gTLDs: isn't it what they are?

Read the full LRO here and learn why the objection was rejected.

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