Competing application loses objection over .mls top level domain name.
The Canadian Real Estate Association (CREA) has lost its Legal Rights Objection against Afilias’ application to run the .mls domain name.
CREA is a competing applicant for the .mls string. It filed two applications for the string, one of which seeks community designation.
Afilias tried to challenge CREA’s standing to bring the case since it was relying on a “certification mark”, not a trademark or service mark, for its case. In a lengthy analysis, the panelist determined CREA had standing to bring the case.
Although there have only been a half dozen other decided Legal Rights Objection cases, panelist Sir Ian Barker referred to the earlier case for .rightathome in coming to his decision. In other words, there’s already a bit of “precedent” playing a role in these objections.
Barker ruled in favor of Afilias, arguing that the term MLS is generic in most jurisdictions:
The basic question here is whether the Applicant is entitled to register a new gTLD in respect of a generic term which happens to be the subject of a certification trademark in one English-speaking jurisdiction, namely Canada. The Panel is satisfied that the expression “MLS” is a generic term for “multiple listing services” and is used as such in English – speaking countries.
…The Panel cannot see the justification for refusing to allow the Applicant to operate in every country because the Objector has a certification mark for a generic term in Canada. Had the Objector’s certification been other than a generic term, its case might have been stronger but MLS it is a generic term used in English-speaking jurisdictions
Barker did note that, even if Afilias gets the TLD, CREA still can still pursue its trademark rights in Canadian courts.
Given that CREA is trying every angle to get the domain, including filing two applications for it, I think we’ll be hearing more about this in the future.
(Also of note, it was revealed in the decision that Afilias aims for 50,100 registrations of .mls domains after three years of operation.)