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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.

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