WIPO upholds legal rights objection against .direct gTLD | Practical Law

WIPO upholds legal rights objection against .direct gTLD | Practical Law

WIPO has upheld a legal rights objection against registration of the string .direct as a new generic top-level domain.

WIPO upholds legal rights objection against .direct gTLD

Practical Law UK Legal Update 6-537-3746 (Approx. 3 pages)

WIPO upholds legal rights objection against .direct gTLD

by Practical Law Media & Telecoms
Published on 12 Aug 2013International
WIPO has upheld a legal rights objection against registration of the string .direct as a new generic top-level domain.
A panel of the World Intellectual Property Organisation Arbitration and Mediation Centre has upheld a legal rights objection against an application to register .direct as a generic top-level domain (gTLD). The objection was based on the objector's family of DIRECTV and DIRECT trade marks registered in relation to digital and satellite television services. The panel held that the applicant, also a satellite television service provider, was seeking to use the word "direct", which was the dominant part of the family of marks owned and used by its chief competitor in the satellite television business, the objector. Further, there was no doubt that the applicant was well aware of the objector and its trade marks. The panel considered the applicant's argument that it had applied for the .direct string because it provided services in the generic sense directly to consumers to be contrived. Rather, the applicant had applied for the string as part of an ongoing battle for market share at the objector's expense. Its likely intention in applying to register the string was to target the trade mark of a direct competitor. The case illustrates circumstances in which registration of an ostensibly generic string as a gTLD will be denied.