Coach, Inc. lost its objection to Donuts’ .coach application.
New TLD applicant Donuts has now successfully defended itself against three fashion brands in Legal Rights Objections over top level domain applications.
Coach, Inc., a $15 billion (market cap) company known for its purses, is the only other applicant for .coach. By filing a Legal Rights Objection, it hoped to win the string without going to an auction.
The company stated that it believes Donuts applied for a number of strings that match trademarks, including .express and .limited, in order to get paid off.
It is not unlikely that the Respondent intends to negotiate with the respective trademark owners for financial remuneration for such string.
That ended up working against Coach since both of these cases have been found in Donuts’ favor. Coach mentioned a third string, .direct, but the matching trademark holder (presumably DirecTV) did not file a dispute against Donuts.
Coach made another rather interesting argument, suggesting that Donuts didn’t have bona fide plans for many of its domain names:
There is no evidence that the Respondent has made any preparations for a bona fide offering of goods or services in connection with the opposed string that would not infringe upon the Objector’s trademark. There is no reference to the opposed string on the Respondent’s website and, having applied for more than 300 gTLD strings, it is doubtful that the Respondent could have made bona fide plans for many of them.
Is it suggesting that Donuts spent a couple hundred thousand for some of its strings that it doesn’t plan to use?
At issue is that Coach, in addition to being a brand, is also a common word. Donuts wants to sell domains such as baseball.coach and career.coach but Coach, Inc. is worried it will be used to sell counterfeit Coach products. Coach is quite active filing lawsuits against counterfeiters.
But the panel determined that Coach, Inc. doesn’t own exclusive rights to the word “coach”. There are a number of mechanisms at its disposal, including TM PDDRP, should Donuts actually have nefarious plans for .coach.
Thus, it ruled in Donuts favor.