Company that trademarked .GMBH loses legal rights objection to competing applicant.
TLDDOT GmbH, an applicant for the .gmbh domain name that has tried to “frontrun” the new TLD process with trademarks, has lost a legal rights objection against competing applicant InterNetWire Web-Development GmbH.
TLDDOT’s objection was quite amazing, really. The company basically told the panel that it had filed trademarks and starting marketing .gmbh early on, so it should be able to block others from applying for the domain.
Many TLD operators use the textual string of their (not yet accredited) TLD spaces as trademarks and have registered those marks with relevant national trademark offices or through the Office of Harmonization for the Internal Market [OHIM]…
…The Objector claims to have taken significant steps to build its .GMBH brand bona fide by developing its concept of use since 2006 and advertising its services under this brand since 2009, by
building customer relationships, and by securing protection through the filing of the Mark in July 2009 (first use having occurred in 2008), all well ahead ofICANN’s New gTLD launch.
TLDDOT relied on a trademark granted OHIM, which InterNetWire is trying to get canceled. InterNetWire argued that TLDDOT applied for an OHIM trademark instead of one in Germany because it knew it wouldn’t be successful in Germany.
World Intellectual Property Organization Panelist Brigitte Joppich determined that InterNetWire did not provide enough evidence that to show that TLDDOT’s acquisition and use of rights in the mark occurred in bad faith. But she found that the eight factors of a legal rights objection mostly favored InterNetWire, and denied TLDDOT’s objection.
TLDDOT also has a pending trademark application with the U.S. Patent and Trademark Office. That application doesn’t have a dot in it (it’s just for GMBH), and it somehow slipped through the USPTO to publication. However, shortly after Domain Name Wire wrote about it in June, the USPTO changed its status to show that it was being re-examined. Today, the USPTO sent a non-final office action refusing the registration.
There are currently five applicants for the .gmbh top level domain name. TLDDOT did not file objections against applications from Donuts, Nu Dot Co (Straat), or Google.