Feeds

The man from Del Monte, he says... NO! .delmonte gTLD bid crushed, juiced

Squabble over 'untoward' bid to buy new dot-word

3 Big data security analytics techniques

A trade mark owner has won the right to stop its mark being adopted as a new generic top-level domain (gTLD) by a rival company.

Del Monte International (DMI) of Monaco had applied to register '.delmonte' as a new gTLD under an expanded system of domains being set up by ICANN (Internet Corporation for Assigned Names and Numbers), the body that oversees the identification of websites.

However, Del Monte Corporation of California (DMC) challenged DMI's right to do so and asserted its right to the 'del monte' trade mark it owns for a range of fresh and canned food. (DMC, better known as Del Monte Foods, coined the phrase "The Man from Del Monte he says YES" in its 1980s advertising campaign.)

A panel at the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Centre upheld DMC's objection, ruling that DMC held legitimate rights to the mark and that DMI's claimed rights to a South African-registered trade mark for 'del monte' were at the very least in question. The legal rights objection process is the safeguard for brand owners to protect their marks being incorporated into and registered as a gTLD.

In a majority decision, the panel said that enabling DMI to register '.delmonte' as a new gTLD would be likely to confuse the public [13-page/ 212KB PDF] into thinking DMC either owned, sponsored, was in some way affiliated to or endorsed the proposed new domain. Such a likelihood of confusion would be "impermissible", the panel ruled.

"The panel majority finds that there is something untoward about [DMI's] behaviour in this case," according to the ruling. "[DMI] arguably violated the terms of its Licence Agreements with [DMC] by acquiring trade mark registrations that under the circumstances might have been acquired to bolster [DMI's] eventual gTLD application. In light of all the attendant circumstances, and considering such untoward behaviour, the Panel majority believes the gTLD creates an impermissible likelihood of confusion between the gTLD and [DMC's] mark."

The fact DMC's trade mark rights have existed for more than a century outweighed DMI's "first rights" claim to register the '.delmonte' gTLD, the panel majority said. It could be harmful or detrimental to DMC or its trade mark licensees to allow DMI the exclusive right to register and use the '.delmonte' gTLD, it concluded.

"The panel majority considers the long history of the Trade Mark, the complicated nature of the global licensing arrangements of the Trade Mark, and the 24 year history of coexistence in the global marketplace of food products manufactured, marketed, sold and distributed under the Trade Mark by [DMC], [DMI] and the other licensees, are all relevant factors in support of the panel majority’s conclusion that the Objection should be upheld," the panel ruled.

A number of the world's biggest online companies, including Google, Microsoft and Amazon, are among those seeking to operate some of the near-2,000 gTLDs that have been applied for under ICANN's gTLD expansion scheme. Successful applicants would be responsible for approving individual web addresses rooted at the new gTLDs. Top level domains are the suffixes to addresses and include familiar address endings such as .com, .org and .net. ICANN has previously said it wants to "unleash the global human imagination" by extending the number of top level domains in operation.

Copyright © 2013, Out-Law.com

Out-Law.com is part of international law firm Pinsent Masons.

High performance access to file storage

More from The Register

next story
Did a date calculation bug just cost hard-up Co-op Bank £110m?
And just when Brit banking org needs £400m to stay afloat
One year on: diplomatic fail as Chinese APT gangs get back to work
Mandiant says past 12 months shows Beijing won't call off its hackers
Whoever you vote for, Google gets in
Report uncovers giant octopus squid of lobbying influence
Lavabit loses contempt of court appeal over protecting Snowden, customers
Judges rule complaints about government power are too little, too late
MtGox chief Karpelès refuses to come to US for g-men's grilling
Bitcoin baron says he needs another lawyer for FinCEN chat
Don't let no-hire pact suit witnesses call Steve Jobs a bullyboy, plead Apple and Google
'Irrelevant' character evidence should be excluded – lawyers
EFF: Feds plan to put 52 MILLION FACES into recognition database
System would identify faces as part of biometrics collection
Putin tells Snowden: Russia conducts no US-style mass surveillance
Gov't is too broke for that, Russian prez says
Ex-Tony Blair adviser is new top boss at UK spy-hive GCHQ
Robert Hannigan to replace Sir Iain Lobban in the autumn
Alphadex fires back at British Gas with overcharging allegation
Brit colo outfit says it paid for 347KVA, has been charged for 1940KVA
prev story

Whitepapers

Top three mobile application threats
Learn about three of the top mobile application security threats facing businesses today and recommendations on how to mitigate the risk.
Combat fraud and increase customer satisfaction
Based on their experience using HP ArcSight Enterprise Security Manager for IT security operations, Finansbank moved to HP ArcSight ESM for fraud management.
The benefits of software based PBX
Why you should break free from your proprietary PBX and how to leverage your existing server hardware.
Five 3D headsets to be won!
We were so impressed by the Durovis Dive headset we’ve asked the company to give some away to Reg readers.
SANS - Survey on application security programs
In this whitepaper learn about the state of application security programs and practices of 488 surveyed respondents, and discover how mature and effective these programs are.