July 25th, 2013

Why WIPO must uphold Legal Rights Objections for DotMusic’s .MUSIC brand

DotMusic’s decision to file Legal Rights Objections (LRO) against .MUSIC applicants was to protect our legitimate interests, our community-based branding efforts and tremendous goodwill built over years of significant investments, marketing outreach, and MCMO partnerships (domain resellers with hundreds of thousands of highly-targeted members with interest in registering .MUSIC’s branded domain) to guarantee .MUSIC is a successfully-launched community-based string protecting the legitimate rights of the music community by offering the most enhanced safeguards of any gTLD applicant.<1> It is abundantly clear that the .MUSIC LRO is unique in comparison to all other LRO cases since they lack the two basic ingredients for their LRO to succeed, both of which DotMusic’s mark .MUSIC posseses: a trademark corresponding to classes pertaining to domain names (i.e the relevant sector and channel of trade associated with top-level domains) and  a mark that is commonly known as the Objector that is well known and famous in the relevant sector(s) and channel of trade.

The only available course of action available by ICANN Applicant Guidebook (AGB) guidelines<2> to protect .MUSIC community-based efforts and brand that has achieved significant recognition and fame over many years in both the relevant channel of trade sectors (domains and music) was filing LROs, especially since our marks were in the relevant channel of trade classes of 35, 42 and 45 pertaining to domain names i.e the .MUSIC products and services were not pertaining to music in the descriptive or generic sense but the channel of trade of domain names. DotMusic has trademarks for “.MUSIC” and “DOTMUSIC” in 27 countries under the goods and services classifications for use with, among several other services,  “domain name reservation, registration, maintenance and management services; domain name searching services; domain name registry services, namely co-ordinating the assignment of domain names and address space; technical and legal research relating to Internet domain names (45),” “Computer services, namely research, reservation, recording and administration of Internet domain names; technical expertise relating to Internet domain names and projects; management of a web based commercial platform of Internet domain names and projects, surveying for Internet domain names and projects, design and development of Internet projects (42)” and “management of databases, management of a database for Internet domain names and projects, also containing Internet domain names and other Internet addresses; administrative services provided in connection with registration and allotment of Internet domain names and other Internet addresses, including renewal and assignment services (35).”

It was clear that the objected-to Applicants – all of whom were aware of all our significant investments, extensive marketing and branding efforts, including community outreach in the relevant channels of trade – would indisputably piggyback and free-load on our efforts and goodwill created. Any potential use of the applied-for .MUSIC gTLD by the Applicants would:

  1. Take unfair advantage of the distinctive character and reputation of DotMusic’s Marks and DotMusic’s business
  2. Unjustifiably impair the distinctive character and reputation of DotMusic’s Marks and DotMusic’s business
  3. Create an impermissible likelihood of confusion between the applied-for gTLD and DotMusic’s Marks and DotMusic’s business

The LRO cases pertaining to our .MUSIC brand are subject to the WIPO Panelist(s) to decide. The Panelist can come up with two possible determinations:

  1. The Objector, DotMusic, wins and the LRO Objections are upheld by WIPO. For this result to be achieved DotMusic has to show that .MUSIC is a well-known brand in its relevant sector with marks in the pertinent class of domain registrations (i.e that DotMusic is offering its relevant consumer and trade channel – registrants, registrars, MCMOs and resellers - a domain product under .MUSIC, a product is not confused with the “music” – the art of sound). DotMusic has to show that it is commonly known as .MUSIC or DOTMUSIC in the relevant sector and channel of trade. It is unquestionable the objected-to Applicants will create impermissible likelihood of confusion in the Objector’s relevant sector and channel of trade given DotMusic’s fame created through significant media mentions (where Objector was referred to as .MUSIC or DOTMUSIC), its branding, marketing and awareness campaigns, and its significant community-based support, MCMO partnerships and business development with the relevant channels of trade.

    It is also clear that the .MUSIC brand has an underlying indisputable brand purpose which is entirely contrary to all objected-to Applicants’ purpose of using the string in a generically open manner without appropriate safeguards in an anti-competitive manner. DotMusic’s famous .MUSIC brand is a community-based effort to serve the music community by offering appropriate enhanced safeguards, all-inclusiveness of legitimate music constituents and a multi-stakeholder governance structure. It is clear that there is a likelihood that both the DotMusic brand and community – including MCMO partners - will be harmed materially if the gTLD is launched as an open gTLD without DotMusic’s enhanced safeguards/policies or if the gTLD is launched in an anti-competitive manner that prevents DotMusic from conducting business under its brand, prevents its partners from conducting business as MCMOs and creates harm to a significant portion of the community from registering a .MUSIC domain. It is clear that an unfair advantage will be leveraged by the objected-to Applicants given the goodwill created by DotMusic in its channel of trade and relevant sector as well as branding built by Objector, including highly-valued MCMO partnerships/resellers and awareness built with leaders in the relevant sectors. If any Applicant is allowed to proceed with launching the string, the Objector’s goodwill, relevant sector awareness and community efforts will be piggybacked and the Applicant will indisputably free-load by leveraging all the valuable MCMO partnerships and branding that the Objector has created to financially gain and use this significant exposure to further its own economic advantage at the expense of DotMusic that will gain nothing from the value it created (emphasis added).

  2. The LRO objection is rejected if it is determined that .MUSIC is not a brand in the relevant classes, channel of trade and sector and as a result is a descriptive term which would not create impermissible confusion, not take unfair advantage of the DotMusic brand’s goodwill (i.e no piggybacking or free-loading) and not harm DotMusic’s reputation i.e DotMusic’s community-based brand and what it stands for will be not be harmed.

Many LRO cases have been made decided thus far by WIPO but no LRO case has the unique characteristics of .MUSIC’s LRO cases. There is a critical difference between .MUSIC and the subjects of other LRO decisions.  The critical distinction is that DotMusic has well-known trademarks in classes related to the relevant sector and channel of trade-- services domain-related services -- and is “commonly known” by the mark .MUSIC or DOTMUSIC (emphasis added).  A mark need not be “famous” in a broad sense.

The recent LRO decision, Right At Home v. Johnson Shareholdings, highlights, among other things, that the use of a mark and the knowledge of that mark “in commercial field different from Objector’s is the paramount consideration emerging from this analysis.” <3>   Essentially, the Right At Home holding, while recognizing the Objector as the owner of a valuable and known trademark, noted the distinction between Respondent’s and Objector’s goods and services, particularly in the context of domain registrations.  It follows that in the instant matter, DotMusic’s, (unlike Right at Home’s), bona fide use of its trademark in the relevant sector of domain-related services is highly relevant, indeed of “paramount importance,” to the instant decision.  Objector’s substantial use and recognition, coupled with Applicant’s prior-knowledge of Objector’s use in the domain name services industry support a finding in favor of Objector. 

Moreover, having a well-known or famous mark in the relevant sector is further supported by the decision in DotTunes Limited v. Amazon EU S.a.r.l.<4>   In DotTunes, while declining to find in favor of protecting the .TUNES trademark, the panelist noted that “Objector filed evidence showing the fame of .MUSIC including the sponsorship of various events, press releases and Internet traffic.”  Therefore, while the Panelist noted that DotTunes was not well known or famous, .MUSIC showed evidence of fame in the relevant sector,<5>   stating in pertinent part that “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.”  Thus, the decision turned on the proof of use and fame of the mark in the relevant sector.

In LRO case Limited Stores, LLC v. Big Fest LLC, “the Panel also notes that Objector’s commercial activity is largely confined to the sale of women’s clothing and accessories at retail stores in the United States and via the Internet.” Even if Objector were to demonstrate a likelihood of confusion here, it would also have to demonstrate an impermissible likelihood of confusion.  This factor weighs in favor of Applicant. “Also Applicant plans to use the String in a largely generic sense, without possessing corresponding intellectual property rights. This factor… favors Objector.”  “Applicant is not commonly known by the String or any sign corresponding thereto. This factor does favor Objector.”<6>

In LRO case Express, LLC v. Sea Sunset, LLC  the Panelist noted that the “Complainant certainly owns rights in the EXPRESS trademark for use in connection with apparel and fashion accessories, and while that trademark is reasonably well known among a relevant segment of consumers in the United States (page 16).. [i]t may be difficult to protect that term outside its channel of trade (page 17). Complainant has argued, and the Panel accepts, that Complainant uses the term EXPRESS in an arbitrary manner to identify apparel and fashion accessories. Both Complainant and Respondent agree that EXPRESS serves a trademark function for Complainant in an arbitrary association with the goods and services provided under the trademark. EXPRESS has no accepted meaning associated with apparel and fashion accessories (page 17). But, as a matter of basic trademark law principles recognized around the world, Complainant’s rights to prevent third-party use are generally limited to the classes of goods and services for which it has established trademark rights. (page 22). The term “express” is a common dictionary or generic term in the English language with a variety of meanings. Complainant uses the term arbitrarily to identify apparel and fashion accessories, and related services. Respondent intends to operate a registry that will permit domain name registrants to register (through registrars) second-level domains (page 23). Complainant has adopted a common dictionary or generic term in the English language at its trademark. The term “express” is not distinctive except in the channel of trade in which Complainant uses it. (emphasis added) By using the term “express” as a gTLD string, Respondent is not unjustifiably impairing the distinctive character or reputation of Complainant’s trademark. It is making available the use of a common term in the English language for Internet user registration in domain names (page 24).<7>

These LRO decisions provide clear guidance that establishing proof that the mark holder is well known in the relevant industry sector (one in which all Applicants are intending to use the applied-for gTLD i.e the domain name sector) is central to finding in favor of an Objector.  DotMusic satisfies these prongs of the newly established LRO case cases and its objections should be upheld. DotMusic is well-known, and its mark is famous in the relevant sectors of domain services and music industry.

.MUSIC Trademark is Famous and Well-Known in the Relevant Sectors/Channel of Trade

DotMusic’s well-known brand in its relevant domain name channel of trade and Music Community Member Organization (MCMO) initiative was articulated in DotMusic’s article on popular music trade magazine Billboard.<8> The objective of mCMOs was to fulfill DotMusic’s efforts relating to:

  1. Meeting ICANN’s Community Priority Evaluation threshold requiring support from a significant portion of the community in a clearly delineated manner relating to music. According to ICANN “Community” is defined as “meaning “fellowship” – while still implying more of cohesion than a mere commonality of interest.”<9> The Independent Objector reiterated this definition “as a group of individuals who have something in common.”<10> That common interest shared by the MCMO community is the “promotion and distribution of legal music”. "Delineation" relates to “clear and straight-forward” “membership of a community.”<11> MCMO eligibility encompasses globally-recognized institutions with core activities and common interest relating to the promotion and distribution of legal music

  2. Increase competition in the domain name space by creating a supplemental revenue source for mCMOs by facilitating mCMOs to offer a complementary product/service that does not exist in the community nor compete with the community because it is not “music” (the art of sound) but a domain name product. The traditional distribution channel of domain names is though ICANN-accredited registrars, such as Godaddy and domain resellers – DotMusic’s relevant sector and primary customers. To benefit from the distribution of the .MUSIC brand DotMusic has adopted its Music Community Member Organization (MCMO) strategy to expand upon its brand and enable partners to resell the .MUSIC brand to millions of registrant customers. Since DotMusic’s .MUSIC product does not compete in the music space since it is a domain product (emphasis added), MCMOs have partnered or signed letters of reseller interest with DotMusic to offer the community-branded .MUSIC domain directly to their members creating an additional complementary revenue stream without the fear of product cannibalization. This significant portion of the community – MCMOs and other supporters – would not have supported the .MUSIC Initiative if DotMusic competed in channel of trade of “music” (emphasis added). This ensures a new complementary revenue source is generated and shared within the community while also stimulating value-added innovation and much-needed competition in the domain space by conducting business in a new channel of trade related to domains – not music. As such, .MUSIC is a recognized brand and there is sufficient evidence that .MUSIC gained reputation for relevant commercial and business activities, as follows:<12>

A) DotMusic has created significant value by building awareness around the .MUSIC brand facilitating DotMusic to receive global music community support representing a significant portion of the community and create lucrative partnerships and expressions of interest in the relevant domain channel of trade. 

Globally-recognized institutions have relied upon Objector’s .MUSIC brand, community-based policies and reputation to support or/and enter upon highly valuable reseller partnerships as Music Community Member Organizations (MCMO) under the Objector’s .MUSIC brand to enter a new channel of trade and offer domain names – not music or music services - to millions of members they represent. DotMusic’s MCMOs correlated with the .MUSIC brand and DotMusic’s community-based application are strongly associated with a substantial portion of the global music community and the applied-for string: (i) the only recognized international federation representing arts councils and governments ministries of culture from over 70 countries (ii)  digital music distributors accounting for over 85% (a majority) of all music distributed on legal music stores globally (iii) country-led music coalitions; (iv) international music export offices (v) the only recognized international association representing music information centers from 37 countries; (vi) distributor associated with the major (non-independent) Universal Music Group (Universal has 32.8% music market); (vii) Distributor associated with the major Sony Music (Sony Music has 29.1% music market share); (viii) leading distributor, with over 500,000,000 sales, distributes more music in one month than all major labels have combined in 100 years (ix) Lyric provider associated with the content licensing of 2,000 music publishers, including all four majors: EMI Music Publishing, Universal Music Publishing, Warner/Chappell Music Publishing, and Sony/ATV Music Publishing; (x) Music social network (with 3m artists) and other large community social networks; (xi) largest online independent music distributor with 300k artists; (xii) Music Coalitions from regions representing a significant portion of music business (France, Australia, Brazil and Canada); and others.<14>

By virtue of this support representing a significant portion of the community the DotMusic mark .MUSIC is famous and well-known in its channel of trade. This DotMusic branding effort assures the string will be a success given its outreach support, policies, safeguards and multi-stakeholder governance. This goodwill will be exploited to its fullest extent in an unfair manner if the objected-to Applicants are allowed to “buy” the applied-for TLD in an auction from ICANN at the expense of DotMusic.

According to WIPO: “Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation<15> i.e in the relevant channel of trade - in this case for domain names – with respect to the .MUSIC community-based brand, significant community support and differentiated policies. Under Article 2 of WIPO Joint Recommendations on the Protection of Well-Known Marks these .MUSIC partner MCMOs fulfill the criteria of “Relevant Sectors” including:

    1. “actual and/or potential consumers of the type of goods and/or services to which the mark applies” (Millions of MCMO members are potential domain registrants. DotMusic’s relevant sector and channel of trade is registering a domain name not buying “music” in the generic, descriptive sense relating to the art of sound i.e the .MUSIC domain name product is related to the Domain Name System not to the art of sound. Listeners/buyers of music are not DotMusic’s target customer and are irrelevant to the LRO since they represent the general public not the target consumers of the .MUSIC domain – the only sector that matters. Music buyers are in a different channel of trade which .MUSIC is not in);

    2. “persons involved in channels of distribution of the type of goods and/or services to which the mark applies” (These MCMO partners constitute a majority portion of all legal music distributors online with direct relationships with potential domain registrant customers: .MUSIC domain registrants. These registrants will not be buying "music” and will unquestionably know they are registering a domain name under the DotMusic community-based brand called “.MUSIC”);

    3. “business circles dealing with the type of goods and/or services to which the mark applies” (The domain channel of trade - registries, registrars, resellers and MCMOs- constitute the only business circles that are relevant pertaining to the goods/services of domains under the .MUSIC brand. Through its branding and marketing initiatives to the domain and ICANN industry, DotMusic efforts alone have added substantial economic value to its well-known brand and associated community-based policies which are recognized in those relevant business circles)

A decision against Objector in favor of the objected-to Applicants will materially harm the Objector and unfairly enrich the objected-to Applicants because they will be able to leverage Objector’s significant branding efforts in its relevant channels of trade and take unfair advantage of .MUSIC domain-related MCMO partnerships for their economic benefit at the expense of DotMusic.

In context, without the Objector’s marketing efforts, its extensive bona fide use in commerce and trade (over many years and millions of dollars expended) and these highly valuable and strategic MCMO partnerships (which almost guarantee the success of the applied-for string), such branding recognition would not have existed otherwise.  It is clear that the Objector’s reputation will suffer material damage since Applicant will be taking “unfair advantage of the distinctive character or repute of the mark with a reputation (free-loading) by obtaining a real economic advantage, such as misappropriation of goodwill. It is unfair in the sense that the Applicant should have paid for it or made its own effort at marketing. There is no need to show detriment.”<16>

B) Under Article 16(2) of the TRIPS Agreement, Members shall take into account the knowledge of the trademark in the relevant sector of the public, including knowledge in the member state concerned, which has been obtained as a result of promotion of the trademark.<17>

Besides the MCMO supporting organizations/ partnerships, Objector’s trademark and brand recognition and global awareness as a famous brand in its associated channel of trade is established through the following:

    1. relevant trade and mainstream media publications in relevant sectors (New York Times, New York Post, Los Angeles Times, Washington Post, Bloomberg BNA, Billboard, Hypebot, Digital Music News, Hollywood Reporter Forbes, DomainIncite, TheDomains, DomainNameWire, CircleID and more) – some even pointing out the “likelihood of confusion” detriment and how DotMusic is recognized and “commonly-known as” .MUSIC or DotMusic.<18>
    2. Search engines, such as Google and Bing, recognized the relevancy and link popularity of .MUSIC sites and ranked them at the top of the search results for related terms. No other Applicant has enjoyed such large-scale recognition from search engines. According to Google, “promoting your site and having quality links could lead to increasing your site’s reputation” and increasing backlinks “increases the value of the site.”<19> The Objector’s brand is recognized by even search engines as an authority site for .MUSIC since “Google ranks relevant results higher”<20>
    3. The Objector’s Facebook, Twitter, Myspace and other social media accounts enjoy significant numbers, reputation and popularity. For example, even the Objector’s smallest social media Facebook Group<21> profile has ongoing, daily engagement by users. Twitter has also recognized one of DotMusic’s .MUSIC account as a “highly sought user” in its “key interest area” (i.e in its relevant sectors of domain-related services and music) and has manually verified the account to avoid confusion and impersonation. Verified Twitter accounts are rare and are reserved for recognized Twitter users selected by Twitter itself. There are only 54,000 verified accounts out of over 550,000,000 active Twitter accounts (i.e only 0.01% of accounts are verified).<22> The Objector’s social media reputation across all profiles is highly valuable. Synacapse values a Facebook like at $174.<23> Others value Twitter followers at $3 per year<24> or $2.38 per month.<25> According to Twitter the Cost Per Follower is between $2.50 and $4.00.<26> Studies have also been made to compare Facebook likes and Twitter followers and the value is significant.<27>
    4. One of the Objector’s related domain businesses - MyTLD<28> - formed by DotMusic<29> and ICANN ex-Director Tina Dam<30> is strongly related and reliant on the brand equity, reputation and recognition of the .MUSIC brand gained over years for the acquisition of clients relating to domain-related services pertaining to the new gTLD Program. Clients include Fortune 500 companies, the world’s second largest media company, the world’s largest talent agency, highly-recognized leading companies in their corresponding industries, governments, start-ups and other gTLD applicants. MyTLD wrote many highly-specialized gTLD applications for famous brands that have passed Initial Evaluation and provided expert consulting pertaining to domain names and community applications to numerous clients. Clients relied on domain registration expertise and reputation of the .MUSIC team, and its brand recognition and fame in regards to domain names. DotMusic developed significant domain-related expertise and reputation gained through its .MUSIC efforts.  Other domain-related services offered and monetized include consulting, offering new gTLD Digital Archery Services,<31> selling TAS accounts<32> and new gTLD applications.<33>

C) Objector is Well Known Within the Music Industry.

.MUSIC is a well-recognized Associate member of the American Association of Independent Music (A2IM), which represents over 32.5% of the music industry’s market share in the United States (and almost 40% of SoundScan digital sales) and 80% of the music industry’s releases. A2IM membership is based on a strict eligibility requirement and only recognized leaders in the music space are eligible. Associate members include Apple iTunes<34> which accounts for 63% of global digital music market.<35> The top two global, best-selling music artists of 2012,<36> Adele and Taylor Swift are represented by A2IM Label Members Beggars Group<37> and Big Machine.<38> DotMusic is also the recognized representative for 11 Community Objections – representing a significant portion of the music community – against open gTLD objected-to Applicants without appropriate enhanced safeguards<39> and objected-to Applicants with exclusionary, anti-competitive policies.<40>

D) Objector is the largest domain registrant pertaining to “music.TLD” domains, registrations which began years before any new gTLD program announcement. The company branded under “MUSIC” since 2003 and then re-branded under “.MUSIC” in 2008.

In 2002 and 2003 the Objector acquired its first exact “music.TLD domains under the brand “MUSIC”: music.fm and music.us. Over the years objector also acquired music.mobi, music.biz, music.co, music.mu, music.pro, music.tm, music.sm and others and re-branded the company in 2008 from “MUSIC” to “.MUSIC.” The “.MUSIC” and “DOTMUSIC” trademarks were also registered the following year.

E) Reports and Surveys Indicate Likelihood of Harm.

It is evident that DotMusic’s .MUSIC mark will be confused with applications by music-themed applicants, a fact that is amplified by reports, surveys, expert assertions and intellectual property specialists that Internet users in general will have a high likelihood of confusion of new gTLDs in general. Fairwinds Study and surveys<41> show that brands will have to combat “inevitable” confusion. Nearly 75% of participants were “entirely unaware of the existence” of new gTLDs, while 44% agreed new gTLDs will “probably or definitely” cause confusion. More importantly, 70% would trust branded gTLDs – such as DotMusic .MUSIC brand - while only about half said they would not trust generic-term gTLDs. This confirms the obvious risk of dilution and commoditization of DotMusic’s .MUSIC brand if it was launched as a risky, open gTLD and used in an open, generic manner without a community-based branded focus with appropriate safeguards. 19% were more likely to consider branded gTLDs to be legitimate, as compared to open, generic-term gTLDs. This is consistent with Sedo’s survey: more than 50% of respondents agree that there will be confusion.<42> This trend will hold true for MCMO members and those in the relevant sectors and channel of trade that DotMusic extensively marketed to and those who have relied on the .MUSIC community-based brand and its policies.

 WIPO agrees with DotMusic that “from an IP perspective, adding more open (emphasis added), i.e., unrestricted and unsponsored/non-community-based gTLDs, is more likely to increase the likelihood of confusion (and the cost for defensive or preemptive measures) than the scope for brand differentiation.”

F) Applicant had Knowledge of Objector’s Reputation and Use of it Trademark at In the Relevant Sectors.

It is clear that the objected-to Applicants – given the Objector’s extensive global outreach campaign at relevant conferences/events, sponsorships, speaking engagements, online and offline presence, support and petition, media mentions and brand recognition in both relevant industries (domain names and music) - had indisputable prior knowledge of the Objector’s Mark, while DotMusic had no knowledge that any objected-to Applicant would apply for the identical mark as a gTLD (except in the case of Far Further which was announced in 2011, a few months before the 2012 submission date).   In fact, Objector only found out about the objected-to Applicants’ intentions after ICANN made all applied-for strings public in 2012 after the Application submission deadline. Since 2009, Applicants never objected to the validity, bona fide use and rights of the .MUSIC Mark relating to the class of domain services despite having full knowledge of its existence and our extensive branding efforts. This leads to the obvious conclusion that the objected-to Applicants are acting in bad faith to obtain a clear and irrefutable economic advantage and create confusion in our community’s marketplace and MCMOs which constitute a significant portion of the relevant community if they are awarded the string based on our branding efforts.

G) The Objected-to Applicants’ Open Strings Without Enhanced Safeguards or Exclusionary .MUSIC Applications Will Cause Material Harm to DotMusic and Community.

It is clear that any sensitive, open music-themed string without appropriate pro-active enhanced safeguards will create material harm to the legitimate interests of the music community and unjustifiably impair the distinctive reputation of the community-based .MUSIC mark created by DotMusic. This reputation, globally-known as DotMusic’s community-based gTLD with appropriate pro-active enhanced safeguards and multi-stakeholder governance to instill consumer trust and copyright protection<43> – was built over years of ongoing significant global outreach and interaction with music community, including marketing efforts within both the relevant industry sectors of music and domains. The .MUSIC reputation is one that the music community and DotMusic’s recognized partners and supporting organizations<44> have relied upon (as DotMusic mentioned in popular music trade magazine Billboard<45> ) focused on .MUSIC’s community-based gTLD offering of providing a safe haven for legal, music consumption and ensuring monies flow to the music community not pirates or rogue advertising networks i.e. it will be used to serve a community-branded purpose and not launched in an irresponsibly open and generic manner.

Any music-themed gTLD that is open or exclusionary will harm the reputation built by DotMusic’s .MUSIC mark by causing significant confusion in the marketplace creating severe dilution of the .MUSIC brand since open gTLDs severely lack safeguards and exclusionary applications severely harm competition. Open, music-themed gTLD applicants purposely applied-for the string to maximize domain registration volumes (i.e profit maximization assisted by piggy-backing DotMusic’s significant marketing efforts), not to protect unaware .MUSIC registrants and consumers relying upon DotMusic’s reputation and associated policies that were marketed globally. DotMusic has built reputation surrounding the community-based gTLD, one that recognized members of the relevant sectors associate with a trusted, community- based .MUSIC with safeguards (e.g. pro-active – not merely reactive – policies, such as eligibility and name selection restrictions, which lack from open gTLD applicants, to prevent cybersquatting and abuse). It is evident that open, music-themed applicants lack the appropriate pro-active enhanced safeguards required for such sensitive strings to prevent highly probable risks, illegal activities and abuses (re-iterated by Government Advisory Committee, U.S Government and many relevant communities, such as the creative sector)<46> which will certainty materially harm the DotMusic brand, its music domain-related partners, supporting music community (a significant portion of the entire music community) and compromise consumer protection. This holds especially true in context of new significant costs that will be imposed on the music community if such open music-themed gTLDs are allowed to pass given the factors of user confusion that will be created by new gTLDs – especially sensitive strings – which will be abused by bad actors especially in light of lack of pro-active safeguards, current rampant music piracy online and the ineffectiveness, loopholes and significant takedown costs of the DMCA to protect copyright holders.

H) The Objector’s trademark/brand pertains to “.MUSIC” and “DOTMUSIC” community-focused brand relating to the class of domains (which the Objector is commonly-known as in its relevant sector), not the generic term “MUSIC” - without the “dot” (.) before the term (emphasis added) - relating to the art of sound. Applicants will gain unfair advantage, create impermissible confusion and impair DotMusic.

In L’Oreal vs. Bellure, it was determined that free riding on a brand’s reputation is unacceptable even without a likelihood of confusion since subtle copycats – such as the objected-to Applicants) will profit from imitation without being prosecuted,<47> especially in context of the ICANN AGB guidelines and loopholes which do not penalize such behavior. “Such subtle copycats can free ride on the equity invested in the leader brand” i.e DotMusic (Leaders in the gTLD space are often referred to as gTLD front-runners). In the case of new gTLDs it is clear that these “subtle copycats can take (unfair) advantage of the leader brand, without brand confusion taking place.”<48>

There are countless examples how ignoring these problems and not ruling in favor of the brand owner in the relevant sector does create unintended consequences, especially when the mark is well known and is in the relevant channel of trade. Google, an objected-to Applicant for .MUSIC, is notoriously famous for allowing the piggybacking of others’ trademarks in relevant sectors for profit. Google determined that it could increase revenue from selling trademarks as keywords in its primary sponsored ad Adwords business. Google estimated that its 2009 policy change would produce increased revenue of “'at least $100 million, and potentially more than a billion dollars . . . .”  Google changed its policy “with full knowledge that ‘the likelihood of confusion remains high.” It is clear that “Google actively encourages its customers to bid on trademarks and to use trademarks in sponsored links.”<49> Other such cases include Interflora vs. Marks & Spencer where the court ruled in favor of flower delivery network Interflora, concluding that retailer Marks & Spencer breached Interflora’s trademark through Google Adwords.
The case of .MUSIC pertains to an arbitrary trademark similar to what the brand Apple is for computers. In DotMusic’s case the “.” (dot) before the word “MUSIC” is significant and signals domain names. A generic trademark would be “Apple” for apples or a descriptive trademark would be “Park ‘N Fly” for airport parking services. Words that name a product are “generic.” If the public comes to understand the trademark to be the name of the product itself as opposed to identifying an exclusive source of the product.<50>

A ground for cancellation – or in the case of LROs the rejection of an objection by a WIPO Panelist - that has stirred recent controversy is genericness based on a trademark that has become the "common descriptive name of an article." The Lanham Act refers to a generic trademark as "the common descriptive name of an article." Id. § 1064(c). The Act, however, does not use the term "generic" in any statutory definitions.<51> A ground for cancellation that has stirred recent controversy is genericness that is, whether a trademark has become the "common descriptive name of an article." In the case of .MUSIC the brand pertains to domain names and does not describe “music,” the art of sound. The Lanham Act refers to a generic trademark as "the common descriptive name of an article." Id. § 1064(c). The Act, however, does not use the term "generic" in any statutory definitions. A trademark deemed generic loses its protected status because it has ceased to perform the functions that justified its protection. In the case of DotMusic’s .MUSIC mark the trademark is legal, valid and not generic in its domain name channel of trade. "Underlying the absence of a legally protectable right to use a generic name is the notion that generic marks distort consumer preferences and depress competition by indirectly restricting the market for the products of competitors who are unable to use the generic name to describe their products."<52>

In determining whether a mark is generic, however, courts have applied inconsistent standards. This sentiment also applies to LRO Panelists as well. Courts and WIPO LRO Panelists confronting the genericness question are faced with conflicting and confusing precedent that allows varying degrees of protection to the trademark holder. Both ICANN and the WIPO Panelists should articulate more clearly the standards for determining genericness and adopt a standard that provides the greatest degree of protection to the trademark holder, as required by the Lanham Act. However ICANN has failed to do so which explains why the LROs favor objected-to Applicants not trademark owners. The guidelines set forth by ICANN that has generated such one-sided decisions could be illegal. Such LRO decisions lead the Objector paying to “buy” its trademark in an auction with ICANN as the main beneficiary of the auction proceeds.

Legally, a term is generic "if the buyer understands the name of the product to mean only the kind of goods sold"<53> rather than the producer of the goods. Courts have found a mark to be generic if the principal significance of the word indicates the nature or class of an article rather than its manufacturer.<54> If a trademark is believed to have become generic, a competitor can request cancellation of the mark, or, as in FTC v. Formica, the government can institute a cancellation action. Courts have determined trademark significance by examining whether a "sub-stantial majority" of the relevant population deemed the mark generic i.e in the channel of trade. In upholding the validity of the trademark POLAROID, the Marks court stated that it would protect the trademark holder"[w]here the possibility of some deception [of the public] remains real and the need of competitors to satisfactorily describe their products is satisfied by the availability of several common nouns or adjectives suitable for that purpose."<55> This standard, like that in Bayer vs. United Drugs, requires a clear showing of genericness, because the party challenging the trademark's validity must show that it means only one kind of good sold and retains no trademark significance.

Courts apply their legal standard of genericness in an examination of a population segment, or universe, that it has deemed relevant i.e only the channel of trade matters not the general public. Courts find words generic to one segment of the population, but hold those same words retain their trademark validity to another segment.  For example, THERMOS retained its trademark significance to those in trade and to its segment of consumers.<56> In the Bayer Co. v. United Drug Co case, the court held the term "aspirin" generic to the general public but granted it protection to those in the trade<57> (emphasis added). In Stix Prods., Inc. v. United Merchants & Mfrs., Inc it was determined that a mark's "meaning to a non-purchasing segment of the population is not of significance; rather, the critical question is what it means to the ultimate consumer"<58> i.e the relevant channel of trade customer for DotMusic: domain registrars, registrants, MCMOs and resellers. This is a critical element that WIPO Panelists should strongly take into consideration to rule in DotMusic’s favor: Only the classes of actual buyers in the channel of trade are relevant. In the case of the genericness of .MUSIC domains it is clear that a registrant will not go to a registrar, such as Godaddy, or through a reseller of MCMO, to buy “music” pertaining to the art of sound. It is indisputable that there is no confusion from the registrant’s point of view that what is registered is a domain name related to the DNS not music related to the art of sound.

It is clear that Panelists can not claim that .MUSIC is descriptive since the product’s functions are related to domains and the DNS which have nothing to do with the art of sound. The domain’s content which is created by the registrant is of no significance since the domain name alone is not “music.” For example, if the Rolling Stones were selling “Rolling Stones” merchandise at their concerts it is clear that their product would be branded under the classes relating to “merchandise” not music. This is akin to domain names. In these cases the word “music” is used in an arbitrary manner with no significance to the mark’s classes pertaining to domains since it is clear the product/service offered relates to the DNS. There is zero possibility that a registrant (the customer) will be confused that the product they are purchasing is music i.e a song. The relevant sector – the crucial factor pertaining to LROs - is domain names. It is clear that music buyers or music listeners will not be able to buy or listen to any “music” if they visited the relevant sector of trade pertaining to domain names and .MUSIC: Registries, registrars and resellers do not offer “music” they offer domains.

If the WIPO LRO Panelist examines only a term's dictionary definition, they would fail to evaluate the term's significance to members of the relevant sector. Such an examination ignores the possibility of different definitions within separate market segments. Dictionaries define words according to use by writers deemed authoritative by the dictionary editors. Although this method may be suitable for determining word meaning in the context of general usage, it is inadequate for assessing the marketplace meaning of a trademark. Moreover, the special meaning associated with a term that a trademark holder creates through its use cannot be measured by its dictionary definition.<59>

Generic use of trademarked products in the same relevant field with respect to intellectual property rights and classes is illegal. Patent intellectual property law – while different to trademark law - can shed light to unintended consequences that could arise from disregarding intellectual property (such as trademarks in LROs) in their relevant sector and channel of trade because they are deemed generic or descriptive. For example patents in the pharmaceutical industry are used to protect copycats from selling generic drugs. Intellectual property, such as patents, would be deemed useless and pointless if any entity in the same channel of trade as the intellectual property owner could use them in a generic sense. In the case of drugs they can be only be produced in a generic manner if (i) the patent has expired, (ii) the generic company certifies the brand company's patents are either invalid, unenforceable or will not be infringed, (iii) the drugs have never held patents, or 4) the patent(s) is/are not in force in specific countries. Pfizer’s $2.15 billion settlement with Teva and Sun Pharmaceutical is an example of a case to showcase the repercussions of exploiting a brand’s intellectual property in the generic sense in the same channel of trade in an attempt to gain an unfair advantage. The $2.15 billion was the compensation Pfizer won for the damages it suffered when Teva and Sun launched “at-risk” generic versions of Pfizer’s Protonix brand drug prior to the Pfizer’s January 2011 patent expiry.<60>  Brand drugs – such as in the case of Protonix - are perceived as more trusted than the generic drug equivalent.

This also holds true in the case of .MUSIC’s community-based TLD brand in comparison to an open or exclusionary .MUSIC TLD. Ignoring intellectual property rights of brands that have created significant goodwill and brand equity in their relevant channels of trade will open the floodgates for abuse, free-loading, give others an unfair advantage as well as create impermissible confusion that could tarnish that brand. The repercussions of LRO decisions for brand holders are huge if a brand holder can not protect its trademark interests in the class they are conducting business in, especially if it is a well-known brand and had created significant goodwill in its relevant sector.

If a WIPO Panelist rejects DotMusic’s LRO then the Panelist must explain why DotMusic did not create any value under the .MUSIC brand and why DotMusic will not be harmed in its channel of trade pertaining to domain names under the .MUSIC mark. Furthermore the Panelist must explain why the objected-to Applicants will not gain from the goodwill created by DotMusic in the relevant channels of trade and why DotMusic and its mark – commonly known as .MUSIC – will not be confused with the applied-for string .MUSIC in the relevant channel of trade of the registered trademark’s classifications pertaining to domain names. If such a harmful decision is made against DotMusic then both the Panelist and ICANN must be held accountable since such decisions defy trademark law, could be deemed illegal and would create loopholes and an unintended precedent in case law that would be abused by bad faith actors. It is clear that if the WIPO LRO Panelist reject DotMusic’s LRO and the applied-for string goes to auction then ICANN will materially benefit financially from the brand equity and goodwill created by DotMusic. Also the winning objected-to Applicant will be unfairly “buying” DotMusic’s goodwill and brand equity at the expense of DotMusic.


Accordingly, in light of new LRO decisions and for the reasons set forth above, and as set forth more fully in its Objection, the Panel should find that Objector’s .MUSIC trademark and brand is well-known in the relevant sectors and Applicant’s applied for string will cause confusion, and result in material harm to Objector. If the .MUSIC gTLD is granted to the objected-to Applicants, it will irreparably harm Objector by rendering Objector’s Trademark rights and years of investment and development of DotMusic Marks useless. Here, the Panel should find that the identical nature of the Objector’s DotMusic Marks and the applied-for gTLD coupled with the fact that Applicant intends to use the gTLD in the same manner, through associated, relevant domain-related channels, and with the same goods and services classes for which Objector currently has its pre-existing Trademark rights in, necessitates a finding in favor of DotMusic. For all of the foregoing reasons, the Panel should deny Applicants’ application to prevent the Applicant from trading on the goodwill of DotMusic’s marks and to prevent the Applicant from impermissibly benefitting from the substantial investment made and brand equity created by DotMusic in relation to the .MUSIC brand.


5 Objector acknowledges that the .SONG, .TUNES, and .ARTIST marks are in a wholly different class from .MUSIC and, it should be noted that Objector did not applied-for strings related to those marks.  They are clearly not globally-recognized to the same significant extent as the .MUSIC Mark, which is famous. Objector only applied as a community-based string under its .MUSIC brand.  The other Marks of .SONG, .TUNES and .ARTIST were registered for defensive purposes to protect the .MUSIC Mark from dilution, and what it believed to be the high likelihood of user confusion in the marketplace if such strings were applied for by 3rd-parties.

6 Limited Stores, LLC v. Big Fest LLC, Case No. LRO2013-0049, http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0049.pdf

7 Express, LLC v. Sea Sunset, LLC, Case No. LRO2013-0022, http://www.wipo.int/export/sites/www/amc/en/domains/lro/docs/lro2013-0022.pdf

12 “Taking unfair advantage" (of the distinctive character or repute of the mark) appear similar to the notion of "misappropriation" and "unjust enrichment," (Frederick Mostert, Famous and Well-Known Marks, 2nd edition,1-115)  and include "instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation" (Advocate General's opinion in Adidas, [2003] E.C.R. I-12537, para. 39, http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:62001CJ0408:EN:PDF, page 15)


18 In its Botox decision (Case C-100/11P, May 10, 2012, http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:62011CJ0100:EN:HTML ) the evidence brought by Allergan, such as press articles published in scientific journals and English daily newspapers showed sufficient proof that its ‘Botox’ trademarks had gained reputation

36 International Federation of the Phonographic Industry, http://www.ifpi.org/content/library/dmr2013.pdf, Page 11

46 Why Open Applications for Sensitive, Music-Themed gTLDs Create Material Harm, http://music.us/open-music-themed-sensitive-gtld-harm-without-safeguards.pdf

47 L'Oreal S.A. vs. Bellure N.V. (2009), Court of Appeal, Rule of Professional Conduct, 125, 196- 242, http://www.udl.co.uk/files/LOreal_v_Bellure_ECJ_Decision.pdf )

48 Femke van Horen and Rik Pieters, When High Similarity Copycats Lose and Moderate Similarity Copycats Gain, http://soco.uni-koeln.de/scc4/documents/JMR_when_high_similarity.pdf, P.23, P.4, 2011

51 Carol A. Melton, Generic Term or Trademark: Confusing Legal Standards and Inadequate Protection, - Am. UL Rev, www.wcl.american.edu/journal/lawrev/29/melton.pdf, 1979

52 Shipley, Generic Trademarks, the FTC and the Lanham Act: Covering the Market with Formica, 20 WM. & MARY L. REv. 1, 3 (1978)

53 Bayer Co. v. United Drug Co. 272 F. 505, 509 (S.D.N.Y. 1921)

54 Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 256 (2d Cir.),cert.denied, 371 U.S. 910 (1962)

55 Marks v. Polaroid Corp., 58, 129 F. Supp. at  270

56 American Thermos Prod. Co. v. Aladdin Indus., Inc., 207 F. Supp. 9 (D. Conn. 1962), aff'd sub noma. King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963)

57 Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921)

58 Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968)

59 Carol A. Melton, Generic Term or Trademark: Confusing Legal Standards and Inadequate Protection, - Am. UL Rev, www.wcl.american.edu/journal/lawrev/29/melton.pdf, 1979, Pg 21 and Julius R. Lunsford, Jr.,Trademarks and Semantics: The Use and Misuse of Trademarks in Dictionaries and Trade Journals, 62 TRADEMARK REP. 520 (1972)






































































































































































































































































































































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