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Wipo arbitration and mediation center
WORLD INTELLECTUAL PROPERTY ORGANIZATION
ARBITRATION AND MEDIATION CENTER
LATIN AMERICAN TELECOM, LLC
TLD string objected to: < .TUBE >
LEGAL RIGHTS OBJECTION
(Applicant Guidebook, Module 3; Procedure, art. 6, 7, 8;
WIPO Rules for New gTLD Dispute Resolution, para. 4)
[1.] This Legal Rights Objection is hereby submitted to the World Intellectual Property
Organization Arbitration and Mediation Center (“WIPO Center”) for determination
in accordance with the New gTLD Dispute Resolution Procedure (“Procedure”),
provided as an Attachment to Module 3 of the gTLD Applicant Guidebook
(“Applicant Guidebook”) approved by the Internet Corporation for Assigned Names
and Numbers (“ICANN”) on June 20, 2011 and as updated on January 11, 2012, and
the World Intellectual Property Organization Rules for New gTLD Dispute
Resolution for Existing Legal Rights Objections (“WIPO Rules for New gTLD
Dispute Resolution”) in effect on the day when the relevant Application for a new
II. The Parties
A. The Objector
[2.] The Objector in this proceeding is:
Latin American Telecom, LLC, a Delaware Limited Liability Company, with a
principal place of business located at 4 Gateway Center, 9th Floor, Pittsburgh, PA
15222 (hereinafter “Objector” or “LATELCO”).
[3.] The Objector’s contact details are:
LATELCO c/o ESQwire.com, P.C. 1908 Route 70 East Cherry Hill, NJ 08003
[4.] The Objector’s authorized representative in this proceeding is:
1908 Route 70 East, Cherry Hill, NJ 08003
[5.] The Objector’s preferred contact details for purposes of this proceeding are:
B. The Applicant/Respondent
[6.] The Applicant/Respondent in this proceeding is:
Charleston Road Registry, Inc., a Delaware Corporation, with a principal place of
business located at 1600 Amphitheatre Parkway, Mountain View, CA, 94043
(hereinafter “Applicant” or “Charleston/Google”).
A copy of the ICANN Posting of Applicant’s gTLD Application for .TUBE,
originally posted June 13, 2012 is attached hereto as Objector’s Annex 1
[7.] All information known to the Objector regarding how to contact the
Applicant/Respondent is as follows:
Sarah Falvey Senior Policy Analyst 1101 New York Avenue, N.W. Washington, DC 20005 202-346-1230 Will Houston Emerging Business Development 345 Spear Street San Francisco, CA 94105 415-488-6422
III. TLD string objected to (applied-for TLD string):
[8.] This Objection concerns the applied-for TLD string identified below:
IV. Jurisdictional Basis for the Objection
[9.] By applying for a new gTLD, the Applicant/Respondent has accepted the
applicability of the Procedure and the WIPO Rules for New gTLD Dispute
By filing the present Objection to a new gTLD, the Objector accepts the applicability
of this Procedure and the WIPO Rules for New gTLD Dispute Resolution.
The parties cannot derogate from the Procedure without the express approval of
ICANN and from the WIPO Rules for New gTLD Dispute Resolution without the
V. Factual and Legal Grounds
(Applicant Guidebook Module 3, art. 3.5.2; Procedure, art. 8)
[10.] The Objector’s basis for standing under the Procedure is:
Objector owns United States trademark registration No. 4,122,107 for the word
mark TUBE®, filed on August 7, 2008, published for opposition on February 2, 2010, and
issued by the United States Patent and Trademark Office (“USPTO”) on April 3, 2012 (the
“Trademark” or “Objector’s Trademark”). A copy of Objector’s United States Trademark
Registration Certificate and a Screen Shot from the USPTO Database is attached hereto as
Objector’s Annex 2. Objector’s Trademark covers services in International Classes 35, 38,
41, 42, and 44. Id. Accordingly, under Section 3.2.1 and 184.108.40.206 of the Applicant
Guidebook, Objector has standing as a rights holder to assert this objection based on its
valid and subsisting trademark rights that have been recognized by the USPTO.
[11.] This Objection is based on the following grounds:
“Existing Legal Rights Objection,” which refers to the objection that the string comprising
the potential new gTLD infringes the existing legal rights of Objector recognized or
enforceable under generally accepted and internationally recognized principles of law.
12.] This Objection is valid and should be upheld for the following reasons:
(Applicant Guidebook, art. 3.5.2; Procedure, art. 8(a)(iii)(bb))
The potential use of the applied-for gTLD by the Applicant/Respondent (i) takes unfair advantage of the distinctive character or the reputation of the Objector’s registered and unregistered trademarks or service marks (the “Marks”); and/or (ii) unjustifiably impairs the distinctive character or the reputation of the Objector’s Marks; and/or (iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s Marks.
Since 2008, Objector has invested substantial time and money to create the largest
network of “.com” TLD websites with domain names that contain the word “tube.” Each
domain name is comprised of the word “tube” preceded by a generic or descriptive word to
create a “***TUBE.com” domain name system (the “TUBE® Domain Channels”). Over
the past six (6) years, Objector has taken a concept, built a business unit, and developed the
TUBE® brand that culminated in the filing of Objector’s gTLD Application for the string
.TUBE. See Rami Schwartz’s Notarized Affidavit in Support of Objection attached as
Objector’s Annex 3 (hereinafter “Schwartz Aff.”). Objector’s acquisition of rights and
bona fide use were not established solely in conjunction with the gTLD application
Objector has been planning for the development and launch of its own .TUBE gTLD
since shortly after ICANN’s Board voted to proceed with the development of applicable
rules for the submission of new gTLD applications at its meeting in Paris, France in June
2008. Schwartz Aff. At ¶1. This long planning process is evidenced by Objector’s
continued acquisition and development of its TUBE® Domain Channels and application to
the US Patent and Trademark Office (“USPTO”) on August 7, 2008 for a word mark for
TUBE®, a request that was granted in April 2012 for five separate classes of goods and
services, all of which remain active. See Annex 2.
Conversely, Applicant applied for .TUBE without any trademark rights and with the
stated intent to run the gTLD as a closed registry and as an extension of its YouTube brand.
Google tellingly states in its Application that: “[t]he sole purpose of the proposed gTLD,
.tube, is to host select YouTube channels’ digital content.” See Annex 1 at Applicant’s
answer to Q18.a Mission/Purpose of Proposed gTLD. Moreover, Applicant, in further
conflict with Opposer’s pre-existing Trademark rights, provides that:
The mission of the proposed gTLD is to strengthen the brand relationship between YouTube and its content partners and to simplify the YouTube user experience. Select YouTube content distributors will be able to register a branded .tube domain (e.g., brand.tube) which will be used to host short and simple URLs that point to the distributor’s YouTube page or specific offering.
Id. at Q18.a. Mission⁄Purpose of the Proposed gTLD. Perhaps even more alarmingly,
Applicant has also stated that: “[t]he specialization goal of the proposed gTLD is to
extend the YouTube brand and reputation to each .tube second-level domain
provide select YouTube channels with a dedicated domain space for their registration and
management.” (emphasis added) Id. at Q18.b.i.1. Applicant’s sole intent is to dominate
the online video marketplace and expand its own brand at the expense of Objector’s
Trademark rights and brand. Applicant is further trampling the rights of Objector by
seeking an exemption from ICANN to run .TUBE as a closed registry to promote
Charleston Road Registry intends to apply for an exemption to ICANN’s Registry Operator Code of Conduct and operate the proposed gTLD with
Google as the sole registrar and registrant. This facilitates Google’s ability to further enhance the YouTube brand and the reputation of YouTube offerings…
Thus, it is clear that Applicant’s plan is to maintain YouTube’s dominance in online
video distribution in a manner that would bar bona fide third party domain registrations in
.TUBE from potential competitors, like Objector. Notwithstanding the clearly stated anti-
competitive actions Applicant would take were the gTLD granted to Applicant, it would
irreparably harm Objector by rendering Objector’s Trademark rights and years of
investment and development of TUBE® useless.
Applicant’s own certified statements make it clear that it seeks to takeover TUBE and
extend its YouTube brand. Such actions directly compete with Objector’s Trademark
rights in Int’l Classes 35, 38, 41, 42, and 44 using .TUBE in a confusingly similar manner
(indeed in a manner identical) to Objector’s pre-existing Trademark rights – in a manner
that either that subsumes TUBE into YouTube or that improperly creates an entirely new
brand for Applicant to disseminate information and entertainment via an online video
For the reasons set forth more fully below, and in accordance with ICANN’s
Guidebook and the WIPO Legal Rights Objection Procedures, Objector respectfully
requests that the Panel find that Objector has valid and subsisting trademark rights in
TUBE®, and that Applicant’s application for .TUBE should be deemed to be: i) taking
unfair advantage of Objector’s Trademark; ii) unjustifiably impairing Objector’s rights and
distinctive character of its Marks; and iii) creating an impermissible likelihood of confusion
between the applied for gTLD and Objector’s Mark.
As stated in the Procedure, the Panel will consider the following eight (8) non-
factors (emphasis added), each taken in turn below. For the reasons set forth
above and more fully below, Objector respectfully requests that the Panel protect
Objector’s Trademark rights and find that Applicant’s applied for gTLD is identical to and
infringes on the valid and subsisting United States Trademark rights of Objector.
1. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic
sound, or meaning, to the objector’s existing mark.
It is beyond debate that Applicant’s applied for gTLD is identical to Objector’s
Trademark -- the applied for string is < .TUBE > and Objector’s Trademark is <TUBE>.
Application of the confusing similarity test under the UDRP would typically involve a
straightforward visual or aural comparison of the trademark with the alphanumeric string in
the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Second Edition, Para. 1.2 ("WIPO Overview 2.0"). Panels typically apply a “low
threshold” test for confusing similarity under the first element of a Policy complaint,
proceeding to the merits of the case under the other elements of the Policy if there is
“sufficient similarity” between the disputed domain name and the relevant trademark.
Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (Apr.
9, 2009). This is commonly tested by comparing the mark and the disputed domain name
in appearance, sound, meaning, and overall impression. In this case, when the two
specimens are compared side by side (TUBE and .TUBE) there is no difference in
appearance, phonetic sound, or meaning between Applicant’s applied for .TUBE gTLD and
Objector’s TUBE® Trademark. Hasbro, Inc. v. Internet Entertainment Group, Ltd., 1996
WL 84858 (W.D. Wash. 1996) (finding similarity between CANDY LAND trademark and
offending CANDYLAND.COM domain name where only differences were that domain
name did not contain spaces and contained initial capitalization). Accordingly, given the
identical spelling of the two specimens and use of the same word, TUBE, the Panel should
find that the Applicant’s applied for gTLD and the Objector’s Trademark are identical.
2. Whether the objector’s acquisition and use of rights in the mark has been bona fide.
Under United States trademark law, the Lanham Act authorizes registration for marks
that are in “use in commerce,” 15 U.S.C. § 1051. “Use in Commerce” is defined as “the
bona fide use of such mark made in the ordinary course of trade, and not made merely to
reserve a right in a mark.” 15 U.S.C. § 1127. Generally, a mark is used in commerce when
“it is placed in any manner on the goods or their containers . . . and the goods are sold or
transported in commerce.” Id. Moreover, Objector’s registration of the trademark on the
Principal Register in the United States Patent and Trademark Office (“USPTO”) constitutes
evidence of the validity of the registered mark and of Objector’s exclusive right
to use the TUBE® mark on the goods and services specified in the registration. See 15
If “there is a genuine use of the mark in commerce . . . ownership may be established
even if the first uses are not extensive and do not result in deep market penetration.” Allard
Enters. v. Advanced Programming Res., Inc., 146 F.3d 350, 358 (6th Cir. 1998); see also
Ciphertrust, Inc. v. Trusecure Corp., 2005 U.S. Dist. LEXIS 46322, at *54 (E.D. Va. Nov.
28, 2005) (“[f]ederal trademark law does not require a regular pattern of sales to prove
use”). Indeed, the legislative history of the Trademark Law Revision Act of 1988
(“TLRA”) makes clear that a “flexible test of ‘use’ [should] be the guide” in interpreting
the provision. McCarthy § 19:110; see also S. Rep. No. 100-515 at 44-45 (Sept. 15, 1988)
(“the definition should be interpreted with flexibility so as to encompass various genuine,
but less traditional, trademark uses”). Thus, for the reasons set forth below, the threshold
for a bona fide use under United States law is clearly exceeded by Objector’s widespread
On June 16, 2008, Objector started acquiring “.com” TLD domain names that contain
the word “tube” preceded by a generic or descriptive word to create a “***TUBE.com”
domain name system (the “TUBE® Domain Channels”). Schwartz Aff. At ¶2. From 2008
to the present, Objector has purchased and operated over 1500 TUBE Domain Channels.
Id. at ¶3. The TUBE® Domain Channels have been selected to promote unique online
video distribution channels related to topics of interest such as: country or religious
affiliations, musical composers, artists, sports and athletics, as well as surname
opportunities for family postings. Notable TUBE® Domain Channels include but are not
IsraelTUBE.com MozartTUBE.com MexicoTUBE.com NascarTUBE.com KungFuTUBE.com Id. at ¶4; See also (with links to many popular TUBE® Domain
Channels). Each of the TUBE® Domain Channels have been actively used by visitors
around the world since 2008. Visitors to the TUBE® Domain Channels can, among other
things, view, upload, share and comment on videos under Objector’s TUBE® brand.
Moreover, Objector’s format allows for a “community” use that enables individuals to view
and share content that is only focused on the topic for that “channel.” For many years prior
to the filing of its application for its own .TUBE gTLD, Objector's TUBE® Domain
Channels were used in commerce in to generate revenue, and to obtain valuable user data
and account members and followers for TUBE®.
Many of Objector’s TUBE® Domain Channels are archived on archive.org and
demonstrate a bona fide use in commerce of the Trademark between 2008 and the present.
Schwartz Aff. At ¶5. A spreadsheet identifying select TUBE® Domain Channels and the
corresponding archive links is attached as Objector’s Annex 4. The archives show use of
the TUBE® Trademark in a distinctive style, color, and with prominent position on header
of the TUBE® Domain Channels to identify the content as part of TUBE®.
In addition to advertising for its Mexico.com travel platform, from 2008 to the
present, Objector has also leveraged the TUBE® Domain Channels to generate advertising
revenue for Objector through various pay per click advertising solutions, including but not
limited to Google’s Ad Sense. Id. at ¶6. Although Objector’s sites are viewed by users
around the world, the largest concentration of viewers are in the United States, Israel and
Mexico respectively. Id. at ¶8. Moreover, in 2010, LATELCO entered into a Joint
Venture agreement with an Israeli company to promote one of LATELCO’s premier
TUBE® Domain Channels, <IsraelTUBE.com> Id. at ¶9; (A copy of the Joint Venture
Agreement is attached as Objector’s Annex 5). Through this Agreement, Objector further
expanded its TUBE® operations worldwide, demonstrating international use in commerce.
Thus, Objector’s creation and worldwide distribution of TUBE® Domain Channels from
2008 to the present constitutes a bona fide use of Objector’s TUBE® Trademark.
Moreover, since its application for the gTLD was accepted, LATELCO commenced
promotion of the .TUBE gTLD as a logical use of its TUBE brand. On June 12, 2012,
Objector launched its main gTLD website located at(the “TUBE®
gTLD Site”) to educate the public about .TUBE and to begin accepting pre-registrations for
domain names. Schwartz Aff. At ¶11. (A screen shot of the TUBE gTLD Site is attached
hereto as Annex 6). From the TUBE® gTLD Site visitors are able to access many of
TUBE’s offerings across the TUBE® Domain Channels. Visitors can also learn about
Objector’s gTLD offering for .TUBE. Objector is using its existing tube-related domain
network to develop innovative approaches that can be made available for the benefit of all
Presently, Objector’s new logo incorporates TUBE® in stylized form and is displayed
across its TUBE Domain Channels. This use further expands the TUBE® brand and has
increased consumer awareness of Objector. A copy of Objector’s TUBE® Design Mark is
Opposer has also used TUBE® in commerce by generating interest and brand
awareness by actively promoting TUBE® through four Twitter Accounts – @dottube;
@dot_tube; @TUBEgTLD; and @TubeTLD (the “TUBE® Twitter Accounts”). Each of
the TUBE Twitter Accounts prominently feature Opposer’s TUBE logo and design and
actively promotes TUBE® and LATELCO through topical tweets and display of
Objector receives millions of impressions for TUBE®, further promoting its brand
and expanding its trademark use. (copies of the analytic reports for the TUBE Twitter
Accounts are attached as Objector’s Annex 7). For example, in the month of February,
2012, the TUBE Twitter Account individual account breakdown is as follows:
Dottube: 1,624 total followers, 8 new followers, and 486,190 impressions; Dot_tube: 1,854 total followers, 7 new followers, and 519,193 impressions; TubegTLD: 2,436 total followers, 20 new followers, and 819,631 impressions; and TubeTLD: 2,283 total followers, 13 new followers, and 2,243,459 impressions.
Objector is further promoting TUBE® with a Facebook Page located at
(the “TUBE® Facebook Page”). The TUBE Facebook Page
actively promotes TUBE® on a daily basis throughout the Facebook community and
already has 2,281 “likes.” Each of the TUBE® social media offerings are viewable and
linked to the TUBE® Domain Channels creating additional brand awareness and expanding
Accordingly, the Panel should find that Objector’s acquisition of its Trademark and
its consistent and continued use since as early as 2008 establishes that Objector has
engaged in a bona fide use of TUBE® satisfying this element and demonstrating protectable
3. Whether and to what extent there is recognition in the relevant sector of the public of the sign corresponding to the gTLD, as the mark of the objector, of the applicant or of a third party.
Objector is the only party that applied for the .TUBE gTLD string that has pre-
existing trademark rights in TUBE®. As of the final date gTLD applications were filed, in
April, 2012, Objector’s TUBE® Domain Channels comprised of over 1500 individual
domain names, and, upon information and belief, comprise part of the largest known single
network of ***TUBE.com domain names in the world. Schwartz Aff. At ¶10. Since
2008, Objector has owned and/or developed at least 1878 ***TUBE.com domain names.
Over the past six (6) years, Objector has continued to develop its TUBE® Domain
Channels and has consistently increased its brand awareness worldwide. As noted above,
visitors to Objector’s TUBE® Domain Channels are located worldwide. As evidenced by
Objector’s social media campaigns on Twitter and Facebook, Objector has thousands of
followers and, when combined with its TUBE® Domain Channels, Objector has received
millions of impressions of its TUBE® Trademark worldwide in connection with online
video sharing, domain names, internet advertising, and online entertainment, education, and
Conversely, Applicant is not known as TUBE. Applicant (Google) does not have
trademark rights for TUBE and, unlike Objector, Applicant is not marketed as TUBE and it
does not advertise or promote itself as TUBE. Moreover, to Objector’s knowledge, no
third-party company is known to use TUBE in connection with the goods and services that
Objector uses TUBE® and for which Objector owns a registered United States Trademark.
Schwartz Aff. At ¶15. Objector acknowledges that Applicant has trademark rights in
YOUTUBE for which Applicant has expended significant sums to promote the YOUTUBE
branded system for online video. This does not, however, bestow Applicant with rights in
TUBE®. Therefore, because Applicant does not have trademark rights in TUBE, and is not
known as TUBE, the Panel should find that this element favors protecting Objector’s pre-
4. Applicant’s intent in applying for the gTLD, including whether the applicant, at the time of application for the gTLD, had knowledge of the objector’s mark, or could not have reasonably been unaware of that mark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.
Applicant is quite possibly the worldwide leader in internet analytics and online
advertising. Applicant’s corporate website identifies that it has more than 30,000
employees. Moreover, Applicant is known in the industry for vigorously policing its
trademark rights and protecting its intellectual property. Applicant has an extensive legal
department devoted to solely to trademark matters. It is thus, unlikely that Applicant was
unaware of Objector’s Trademark when Applicant applied for its .TUBE gTLD. Moreover,
Applicant certainly must have had knowledge of Objector’s filing for its United States
Trademark. Indeed, Objector’s application for TUBE® was filed on August 7, 2008, and
was published for opposition on February 2, 2010. Annex 2. Given the sophistication of
current trademark monitoring services, which Applicant surely uses, and Applicant’s high
level of sophistication, Applicant knew, or should have known of Objector’s filing for its
trademark in 2008. Indeed, even if Applicant was somehow unaware of Objector’s
trademark application in 2008, it should have been aware of Objector’s Trademark when it
was published for opposition in the Official Gazette in 2010.
Furthermore, Objector is aware that Applicant has teams of individuals located in
Washington, D.C., New York, NY, and at its headquarters in California that are dedicated
to Applicant’s gTLD Program. Objector is aware that many, if not all of the gTLD strings
for which Applicant has applied have a business team whose responsibility is to manage
the operations for that particular string. At a minimum, Objector is aware that Applicant’s
.YOUTUBE and .TUBE gTLDs have a dedicated business unit that is responsible for
development and operations. Therefore, on balance, the Panel should find, given the
Applicant’s high level of sophistication and focused effort to support the YOUTUBE
business gTLD unit, it is more likely than not that Applicant was aware of Objector’s
Trademark rights when Applicant applied for the .TUBE gTLD string.
5. Whether and to what extent the applicant has used, or has made demonstrable preparations to use, the sign corresponding to the gTLD in connection with a bona fide offering of goods or services or a bona fide provision of information in a way that does not interfere with the legitimate exercise by the objector of its mark rights.
Applicant’s lack of trademark rights in the applied for string, its lack of use of TUBE,
and Applicant’s stated objectives for running the gTLD demonstrate that Applicant is
looking to control the online distribution of video through its YOUTUBE platform.
Applicant’s Application provides certified statements that demonstrate Applicant’s use will
directly interfere with Objector’s valid and registered TUBE® trademark rights in Int’l
6. Whether the applicant has marks or other intellectual property rights in the sign corresponding to the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, has been bona fide, and whether the purported or likely use of the gTLD by the applicant [respondent] is consistent with such acquisition or use.
Applicant does not have trademark rights for TUBE.
7. Whether and to what extent the applicant has been commonly known by the sign corresponding to the gTLD, and if so, whether any purported or likely use of the gTLD by the applicant is consistent therewith and bona fide.
Applicant is not commonly known by TUBE.
8. Whether the applicant’s intended use of the gTLD would create a likelihood of confusion with the objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
To establish a likelihood of success on the merits of its trademark infringement
claims, a party must show that its mark is entitled to protection and that the defendant's use
of the mark is likely to confuse consumers as to the source, origin or sponsorship of the
products or services at issue. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768–69,
112 S. Ct. 2753 (1992); Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 193 (5th
Cir. 1998). It is further settled that no actual confusion in the marketplace need be shown;
rather, a likelihood of confusion is enough to prevail in a claim for infringement. Id.
Where the goods and services are directly competitive, the degree of similarity
required to prove a likelihood of confusion is less than in the case of dissimilar products.
As the USPTO Trademark Trial & Appeal Board observed: “[a]s the degree of similarity of
the goods of the parties increases, ‘the degree of similarity [of the marks] necessarily to
support a conclusion of likely confusion declines.’” Although the degree of similarity
between the owner's mark and the alleged infringing mark is but one factor in the multi-
factor confusion analysis, we have recognized that when products directly compete, mark
similarity “may be the most important of the ten factors in Lapp.” Checkpoint Systems,
Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, (3rd Cir. 2001)(referring to
the Lapp multi factor confusion test used in the 3rd Circuit). As the 3rd Circuit Court of
Appeals held, “[w]hen goods are directly competing, both precedent and common sense
counsel that the similarity of the marks takes on great prominence.” Kos Pharmaceuticals,
Inc. v. Andrx Corp., 369 F.3d 700, 712-12 (3rd Cir. 2004)(citing A & H Sportswear, Inc. v.
Victoria’s Secret Stores, Inc., 237 F.3d 198, 216 (3rd Cir 2000). Marks “are confusingly
similar if ordinary consumers would likely conclude that [the two products] share a
common source, affiliation, connection or sponsorship.” It is clear that “[t]he single most
important factor in determining likelihood of confusion is mark similarity.”). A & H
Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 216 (3rd Cir 2000).
Applicant has submitted identical applications for both .YOUTUBE and .TUBE – the
only difference is the name of the applied for “string.” Both applications aim to extend the
YouTube brand via the new gTLD program, and both seek exemptions from the standard
registry operator Code of Conduct to allow for a “closed generic”/“single-registrant gTLD”
in which Google will be the only permissible registrant. Applicant’s intended use for its
applied for gTLD is directly competitive with, and would be comprised of the same goods
and services as those covered by Objector’s TUBE® Trademark rights.
While Google’s .YOUTUBE application is perfectly appropriate and, as an extension
of its YouTube trademark and business model, is exactly the type of gTLD envisioned as
being eligible for a waiver of the Code to permit single-registrant operation, Google’s
application for .TUBE, on the other hand, is wholly inappropriate. A single-registrant
.TUBE controlled by Google would stifle competition and innovation by registrants,
allowing Google to extend and consolidate its dominance of online video distribution
through “its YOUTUBE brand.” Annex 1 at Q18a. Applicant further confirms that its
offering will be used in a method, manner, and through channels of distribution, that are
confusingly similar to Objector’s current Trademark use stating that:
This specialization introduces a new domain name hierarchy that will
generate new YouTube namespace … in a unique, branded domain within
the .tube gTLD. This specialization makes it clear to Internet users
that this is the authoritative and designated space where they can find
select YouTube channel content offered in association with the Google
and YouTube brands
and accessible via differentiated and streamlined
web addresses. This specialization will enhance Internet users’ current
and future experience with YouTube.
Annex 1 at 18.b.i.1 Specialty (emphasis added)
The Application makes it clear that Google has no established trademark rights in
the word TUBE, and that it intends to apply to ICANN for a Section 6 exemption in order
to operate .TUBE solely for its own use and as an extension of its established and branded
YouTube business model. The salient points of Applicant’s Application are:
• While stating its belief that there is a “reasonable case” for ICANN’s granting of
a Section 6 single-registrant exemption, it provides no further explanation of why providing third parties with an ability to register .Tube domains is “not necessary to protect the public interest.” Applicant states that the exemption “facilitates Google’s ability to further enhance the YouTube brand and the reputation of YouTube offerings.” Annex 1 at Q.18.b.i.3. Reputation.
• .Tube is intended solely to extend YouTube’s business model and brand – “[t]he
sole purpose of the proposed gTLD, .tube, is to host select YouTube channels’ digital content.” Id. at Q18a.
• The ability to register .TUBE domains “will be limited to premium members that
meet YouTube’s selection criteria.” Id.
• .Tube domain ‘registration’ will not be freely available to all potential registrants
– “Only select content distributors who meet YouTube’s eligibility criteria will be eligible for a second-level domain within the gTLD.” – and even then, as the application concedes, they will only receive a “vanity domain name.”
• “Should ICANN not approve this proposed exemption, Charleston Road Registry
will facilitate a fair and equitable registrar process, providing open access to any
registrar who meets ICANN accreditation guidelines.” Id. at Q18.b.ii.1 Competition. Google appears to still be reserving the right to establish registration eligibility criteria that would limit domain registrations to YouTube content providers whose intended domain use would further Google’s business needs.
• Applicant states that the gTLD will “be differentiated from other gTLDs due to
its purposefully limited scope,” which “includes: (1): uniqueness in terms of the users the proposed gTLD seeks to benefit; (2) a clear indicator that second-level domains within the gTLD offer a particular, targeted content…” Annex 1 at Q18.b.ii.2. Differentiation.
The proposed purposes of and registrant limitations proposed for .TUBE by Google
demonstrate that the intended purpose of Google’s .TUBE acquisition is to deprive other
potential registry operators of an opportunity to build gTLD platforms for competition and
innovation that challenge YouTube’s Internet video dominance. It is clear that Google’s
intended use for .TUBE is identical to Objector’s TUBE® Domain Channels and directly
competes with Objector’s pre-existing trademark rights in Int’l Classes 35, 38, 41, 42, and
Indeed, throughout its application, Charleston tries to falsely conflate competition
and innovation within the Google-controlled .YOUTUBE/.TUBE ecosystem – as opposed
to genuine Third-Party competition and innovation that would result if Objector’s
Application for an open .TUBE registry is granted. Applicant’s own statements leave no
doubt that its intended use of the gTLD would create a likelihood of confusion with the
Objector’s TUBE® Trademark as to the source, sponsorship, affiliation, or endorsement of
the gTLD. Where the goods or services are directly competitive, the degree of similarity
required to prove a likelihood of confusion is less than in the case of dissimilar goods and
services. 4 McCarthy on Trademarks and Unfair Competition § 24:33 (4th ed.); KOS
Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 70 U.S.P.Q.2d 1874 (3d Cir. 2004)
(finding that ADVICOR and ALTOCOR are confusingly similar when both used for
prescription cholesterol reducing drugs).
Here, the Panel should find that the identical nature of the Objector’s TUBE®
Trademark and the applied for gTLD coupled with the fact that Applicant intends to use the
gTLD in the same manner (on line video information and entertainment distribution),
through channels (related to topical video content and advertisement), and with the same
goods and services for which Objector currently has its pre-existing Trademark rights,
necessitates a finding in favor of Objector. Based on the foregoing, granting of the gTLD
to Applicant would create a clear likelihood of confusion with Objector’s valuable pre-
existing registered trademark rights. Accordingly, Objector respectfully requests that the
Panel find in favor of Objector and reject Applicant’s Application for the gTLD.
A schedule and description listing all supporting evidence/documentation for Objector’s
VI. Panel (of Experts)
(Procedure, art. 13; WIPO Rules for New gTLD Dispute Resolution, para. 8)
[13.] The Objector elects to have the dispute decided by a three-member Panel.
VII. Other Legal Proceedings
Objector is unaware of any legal proceedings that have been commenced or
terminated in connection with the applied-for TLD that forms the basis for the Objection.
[15.] A copy of this Objection has been sent electronically to the Applicant/Respondent on
March 13, 2013
by email toandand to ICANN on March 13, 2013 by email to ICANN New gTLD Program General Manager Christine Willet
(Procedure, art. 8(c); WIPO Rules for New gTLD Dispute Resolution, para. 10; Annex D to WIPO Rules for New gTLD Dispute Resolution) [16.] As required by the Procedure and WIPO Rules for New gTLD Dispute Resolution,
payment in the amount of USD 10,000 has been made by wire transfer to WIPO
evidence of such payment is provided as Annex 8.
By submitting this Objection, the Objector acknowledges and agrees that further payments may be required, e.g., in the event the parties elect Determination by a three-member Panel, or as may otherwise be provided in the Procedure and WIPO Rules for New gTLD Dispute Resolution.
(Procedure, art. 1(d) and 22; WIPO Rules for New gTLD Dispute Resolution, para. 16) [17.] The Objector understands and agrees that its claims and remedies concerning the
application of the applied-for TLD,
the instant Legal Rights Objection and the Determination thereof shall be solely against the Applicant/Respondent, and neither the Expert(s)/Panel(ists), nor WIPO Center and its staff, nor ICANN and its Board members, employees and consultants shall be liable to any person for any act or omission in connection with any proceeding conducted under this Procedure.
[18.] By submitting this Objection to the WIPO Center the Objector hereby agrees to abide
and be bound by the provisions of the applicable New gTLD Dispute Resolution Procedure and WIPO Rules for New gTLD Dispute Resolution.
[19.] The Objector certifies that the information contained in this Objection is to the best
of the Objector’s knowledge complete and accurate, that this Objection is not being presented for any improper purpose, such as to harass, and that the assertions in this Objection are warranted under the Procedure and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.
_____________________ Jason B. Schaeffer Counsel For Objector
ESQwire.com, P.C. 1908 Route 70 East Cherry Hill, NJ 08003 FILED:
XI. SCHEDULE OF OBJECTOR’S ANNEXES
A Copy of Applicant’s gTLD Application for .TUBE;
A Copy of the USPTO Certification of Objector’s TUBE Trademark and Screen Shot
Affidavit of Rami Schwartz in Support of Objection;
Spreadsheet of Select TUBE Domain Channels and Link to Archived Pages from
Archive.org showing Historical Use of TUBE;
Copy of Joint Venture Agreement for Management of <IsraelTUBE.com>;
Screen Shot of Objector’s tubegtld.com Website;
Analytic Reports for Objector’s Twitter Accounts – February 2013; and
Confirmation of Objector’s Wire to WIPO for Payment of LRO Filing Fee.
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