Del Monte v. Del Monte: first new TLD objection to be upheld

Objector wins .delmonte Legal Rights Objection.

If you look at the list of filed Legal Rights Objections for new top level domains, only a few stand out as plausible cases. One of those was Del Monte Corporation v. Del Monte International GmbH for .delmonte.

Now that we have the details, it’s not surprising that this was a close case.

Del Monte International GmbH is a licensee of Del Monte Corporation’s trademarks for Del Monte. Yet the former applied for .delmonte, which obviously upset the latter.

The Respondent is the assignee of three licence agreements dated December 5, 1989, May 4, 1990 and May 9, 1990 entered into by the Objector permitting use of the TradeMark on certain processed food products in Europe, the Middle East and Africa, and on fresh produce and certain other specified products on a worldwide basis…

The licensee/new TLD applicant made some interesting arguments as to why the objection should be rejected.

First, it noted that there’s nothing in the license agreements that say it needs permission to apply for a top level domain. As the majority of the panel rightly noted, it’s impossible that this could have been foreseen 20 years ago (it’s possible, back then, that the agreement was also fairly quiet about second level domain registrations.)

Second, it argued that in UDRP cases licensee disputes are outside of scope, so panels usually don’t made a determination. Although many applicants and objectors have drawn connections to UDRP, this seems like a completely different matter for Legal Rights Objection.

A three person panel decided the case. The majority of the panel ruled that the .delmonte string created “an impermissible likelihood of confusion between the applied-for gTLD string and the Trade Mark”.

The majority also viewed the applicant getting trademarks in some jurisdictions as evidence of some bad faith in its licensing agreement:

The Panel majority finds that there is something untoward about the Respondent’s behaviour in this case. As previously indicated, the Respondent arguably violated the terms of its Licence Agreements with the Objector by acquiring trademark registrations that under the circumstances might have been acquired to bolster the Respondent’s eventual gTLD application.

The third panelist, Robert Badgley, disagreed with the majority and said he would have denied the objection. He said the licensee’s trademarks make this a tough issue, and that he would narrowly side with the applicant.