Welcome to <.yellowpages>!
You might have seen some articles recently about developments in the general top-level domain (gTLD) space (we previously posted about ICANN’s new gTLD program here and here). Last week, the World Intellectual Property Organisation (WIPO) Panel handed down its decision in response to a Legal Rights Objection, which will allow Telstra Corporation Limited (Telstra) to operate the gTLD <.yellowpages>. We acted for Telstra.
All internet users are now accustomed to seeing a range of existing gTLDs, including “.com”, “.net”, “.org” and “.info”. In 2008, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced guidelines, which would allow entrepreneurs, businesses, governments and communities around the world to apply for the right to operate a TLD of their own choosing, perhaps their own “.brand”, or a broader non-specific gTLD such as “.food”, “.sport”, “.fashion” etc. Whilst the gTLD regime is relatively straightforward for global brands, particularly those with invented names (ie Sony, BMW, Ferrero), it raises interesting issues where multiple players are involved. For example, contrast a gTLD which operates globally, to registered trade marks which work on a country by country basis. In the case of trade marks, both X and Y might register precisely the same word as a trade mark in the US and UK respectively, for precisely the same goods or services. Who then gets the gTLD? As with second-level domain names, the answer is ‘first in, best dressed’.
The priority-based Application system opened on 12 January 2012, and ICANN received 1,930 applications for new gTLDs (we posted about reveal day here). Telstra was the only entity to apply for the gTLD <.yellowpages> or anything similar. After the gTLDs were revealed, hibu (UK) Ltd (Hibu) filed a Legal Rights Objection (LRO) to <.yellowpages>. It may have hurt Hibu that ultimately, it was the only party to do so. Hibu had also not applied for the gTLD itself, but sought to use the LRO system to remove Telstra as operator.
Hold on a tic, what do Hibu have to do with it? Hibu (the company formerly known as Yell Group), is the operator of the Yell.com online directory and publisher of the Yellow Pages directories in the United Kingdom. Hibu moved away from using its UK registered trade mark “YELLOW PAGES” at all in relation to its online presence many years ago (in favour of “Yell”), and its 2012 rebrand to Hibu away from “Yell” has been highly criticised. Hibu has recently ceased trading on the London Stock Exchange in a debt-for-equity swap, following announcement of a £2 billion pre-tax loss.
In its LRO, Hibu made the interesting argument that due to its jurisdictional rights in the term “YELLOW PAGES” in the UK (and the presence of other “YELLOW PAGES” rights holders in other jurisdictions), the gTLD should be available to no one. Telstra’s Response took issue with this on the basis that:
- a gTLD is not in itself a brand, and there are many ways Telstra could use the gTLD which would not amount to a “commercial effect” in any country other than Australia, nor infringe third party rights;
- the gTLD regime is a priority-based system, and while Hibu could have applied to operate <.yellowpages> it did not; and
- the gTLD regime in itself assumes that where there are multiple rights holders across different jurisdictions or goods and services, some level of confusion, or impairment of the distinctive character or reputation of trade marks may occur. However, for an Objection to succeed, that likelihood must be “impermissible” or the impairment “unjustifiable”.
In its determination, the WIPO Panel agreed with these and other contentions in Telstra’s Response, noting that:
- no third party rights holders in other jurisdictions had filed an Objection;
- any likelihood of confusion was further reduced because Hibu no longer uses the term “YELLOW PAGES” at all in relation to its online presence; and
- denying the approval of <.yellowpages> would not be appropriate given the co-existence of “YELLOW PAGES” second-level domain registrations within existing TLDs which do not contain geographical identifiers (ie <yellowpages.com>, <.yellowpages.net>, <yellowpages.info>, none of which resolve to Hibu’s site).
Other points of interest
As with any proceeding before WIPO, the Response had to comply with prescriptive requirements as to form, observe a strict 5,000 word limit for the main section of the Response addressing ICANN’s eight non-exclusive consideration factors, and be structured as a “point by point discussion of the Objection”. Even the Panel noted in its determination that “this format creates a challenging organizational paradigm for analysing the consideration factors”.
The Center has currently determined 29 LROs, and rejected all of them. Perhaps this is not surprising given that ICANN’s Applicant Guidebook created a high bar for establishing that a gTLD should be rejected, and placed the burden of proof firmly on the Objector. ICANN never intended that its LRO process be used as an alternative to applying for a gTLD in order to protect your brand, and WIPO’s determinations seem to support this.
What now for trade mark owners?
If you are a trade mark owner who didn’t apply for a gTLD, but still want to protect your rights, there will be a number of Rights Protection Mechanisms available to you once gTLDs become operational, including:
- registering your trade mark with a Trademark Clearinghouse (a centralized location for storage and authentication of trademark information contracted by ICANN, which all gTLD registries would need to consult prior to registering a domain name), to utilize sunrise registration periods and trademark claims services;
- filing an application to suspend an infringing domain name through the Uniform Rapid Suspension System (a faster and less expensive process for resolving clear-cut cases of infringement than the existing Uniform Domain Name Dispute Resolution Policy (UDRP));
- filing a complaint against a gTLD operator for infringing behaviour under the trade mark post delegation dispute resolution procedure; and/or
- filing a complaint pursuant to the existing UDRP.
More information about each of these Rights Protection Mechanisms is available on the WIPO website here.