Del Monte Corp. Prevails Over Licensee In First Win Under New Domains LRO Process

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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.

Majority Sees Something Untoward
The majority panelists found it at least arguable that the licensee was in breach of its license agreements, and noted the licensee's plans to exclude Del Monte and its other licensees from registering within the .delmonte TLD.

“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.”

Dissent: First in Time Has Rights
Panelist Robert A. Badgley, dissenting, wrote that the majority gave Del Monte's unsupported arguments surrounding the licensee's lack of trademark rights too much credence.

“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.

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