+1 212 318 2000
Europe, Middle East, & Africa
+44 20 7330 7500
+65 6212 1000
By Amy E. Bivins
Del Monte Corp. prevailed July 29 over one of its many global trademark licensees in a legal rights objection challenging the licensee's application for the .delmonte new top-level domain (Del Monte Corp. v Del Monte Int'l GmbH, WIPO, No. LRO2013-0001, 7/29/13).
The opinion, posted by the World Intellectual Property Organization's Arbitration and Mediation Center Aug. 6, presents a pair of firsts. It is the first objection to be upheld under the new LRO process, created by the Internet Corporation for Assigned Names and Numbers. The decision is also the first involving parties that opted for three-member panel LRO proceedings.
Majority panelists Sebastian M. W. Hughes and William R. Towns found something untoward about the licensee's behavior that tipped the analysis from a mere likelihood of confusion to the “something more” required for an objector to prevail.
The respondent is the assignee of three license agreements which permit the use of the Del Monte mark on certain processed food products in Europe, the Middle East, and Africa, as well as on fresh produce and certain other products on a worldwide basis.
The licensee was the only entity to apply for the .delmonte TLD. The successful LRO will halt the progression of the 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 the Objector's mark.”
“In my view, Respondent has a bona fide basis for owning this gTLD, even if Objector would also have had a bona fide basis if it had been the applicant for this gTLD[,]” Badgley wrote.
Objector Del Monte Corp., San Francisco, was represented by attorneys at Orrick, Herrington & Sutcliffe LLP. Respondent Del Monte International GmbH, Monte Carlo, Monaco, was represented by attorneys at Skadden Arps Slate Meagher & Flom.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).