Objection against Google’s .music bid rejected

First of seven objections filed by DotMusic Limited fails.

DotMusic Limited’s legal rights objection to Google’s application for the .music top level domain name has been rejected.

Officially, panelist David J.A. Cairns ruled that DotMusic Limited didn’t have standing to bring the case because it was unclear if it (or other entities) owned the marks asserted in the case.

Nevertheless, Cairns went ahead and considered whether the objection would be approved even if the objector had standing.

For those that haven’t been following Constantine Roussos’s quest to run the .music top level domain, it goes something like this: Roussos has spent years and lots of money marketing the .music domain name. He’s done a great job, too. The only problem is that no one controls the .music domain yet.

So Roussos has been trying to find ways to get a leg up on the competition. He has applied for and received some trademarks (not in the U.S., of course) related to .music. He has said he will use them to try to block competing applicants for .music, as evidenced by his legal rights objections. Roussos also asked the ICANN board what it would do to help people like him, who have been involved in the process since early on, to give their applications a leg up in the process.

The idea of the new TLD process was that the community would come together to design the guidebook, and then the new TLD opportunity would be pitched to the world at large. People who are involved early on aren’t given special preferences. After all, it’s possible that many applicants didn’t learn about the new TLD opportunity until the ICANN’s global awareness program kicked off after the guidebook was approved. That was the point of the marketing effort, after all.

Here’s how Ruossos explained to ICANN’s board how this would put him at a disadvantage since he was early to the table:

I would like to discuss the outreach campaign, the communication campaign. I know I have been running with my initiative for years now. And in the DAG, there is no protection for someone like me. To Michael Palage’s point, I do have a trademark in dot music. And we’ve been working on this for years now and trying to communicate what we’re doing to the whole world, and that’s what we’ve been doing.

However, the DAG does not ensure myself and any other applicant that has been around and working on it any fairness, I might say.

I will give you an example. Let’s say the applications start. Some other dot music applicant comes in and says, “Hey, pay me $400,000 to work. We’ll do auction or we’ll do that.” These are real-life scenarios. So there’s a few things that need to be considered.

So if outreach and communication is important, maybe in the DAG you guys can add a point somewhere that says, Hey, if in your community application you’ve done sufficient outreach,” let’s say a year, “then
you get an extra point,” or something that gives a good job for doing something and reaching out.”

Roussos presented this idea, that it’s not fair that someone decided to apply (or make its intentions public) for the domain name after he had spent years marketing it, to the panel:

“[u]doubtedly millions of targeted consumers in the relevant markets have already identified with the .MUSIC gTLD as a result of [the Objector’s] brand recognition marketing and outreach efforts with the
[Objector’s trademarks] including the .MUSIC and DOTMUSIC registered trademarks offering domain-related services. On the contrary, there is absolutely no indication that the Applicant has any prior actual use of t
he “.MUSIC” or “DOTMUSIC” formative in the sale of any products or services. As such, allowing the Applicant’s request to be granted for the .MUSIC gTLD will result in material harm and abrogation of [the Objector’s] existing legal rights and the applicant will receive an unjustifiable advantage of piggybacking [the Objector
’s] brand equity and substantial goodwill created in the relevant public sectors. The rejection of the Applicant will not harm any prior legal rights it may have in the sign corresponding to the gTLD” (emphasis original).

In his decision, the panelist explained the apparent circular reference of Roussos trademarks:

On the one hand, the Panel recognizes that there has been a real investment by the Objector and associated parties in the trademark registrations, domain name registrations, sponsorship and branding to create consumer recognition and goodwill entitled to protection. On the other hand, there is a circularity in the Objector’s position in that the rights upon which the Objector relies to defeat the application are to a certain extent conditional on the defeat of the Applicant and the Objector’s success in obtaining the .music gTLD string.

Here’s a good summary of Google’s position as detailed in the decision:

The Applicant concludes that the Objector is clearly attempting to reserve trademark rights in the applied-for gTLD in order to subvert the new gTLD application process so that it does not have to proceed to auction with other applicants.

…The Applicant asserts that the Objector’s alleged business and marketing activities merely amount to lobbying ICANN to accept its proposal for a .music gTLD and pre-reservation of second-level domain names.

Roussos applied for nearly two dozen trademarks for new TLDs. He sold the .home one to an applicant for .home, which has summarily been beaten up by panelists for trying to “frontrun” the new TLD process.

DotMusic Limited’s filed its .music application seeking community status, arguing that it represented the music community.