A World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre panel has upheld a legal rights objection (LRO) to an application to register .delmonte as a generic top-level domain (gTLD). The objector owned the well-known trade mark, DEL MONTE, registered for various goods, including fresh and canned vegetables and fruits. The respondent owned four registrations in South Africa for DEL MONTE, and was the assignee of three licence agreements entered into by the objector permitting use of the trade mark on certain food products in certain territories. The agreements provided that the respondent would not challenge the objector's trade mark ownership or register the trade mark. The panel (one panellist dissenting) found that from the average consumer's perspective, notwithstanding the coexistence of the parties in certain territories, the trade mark had continued to function as an indicator of commercial origin for the objector and its goods. The respondent's intended use of the gTLD, to the exclusion of the objector and the objector's other licensees, was likely to create a likelihood of confusion with the objector's trade mark as to the source, sponsorship, affiliation or endorsement of the gTLD. The majority of the panel found that the likelihood of confusion would be impermissible, so that the LRO should be sustained. It noted that several LRO panels had considered that the respondent's behaviour could be relevant to whether the likelihood of confusion was impermissible. It found that there was something untoward about the respondent's behaviour, in particular that the respondent had arguably violated the terms of its licence agreements by acquiring trade mark registrations that, in the circumstances, might have been acquired to bolster its gTLD application. This is the first time that an LRO has been upheld.

Case: Del Monte Corporation v. Del Monte International GmbH Case No. LRO2013-0001, 29 July 2013.