ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
DotMusic Limited v. Entertainment Names Inc.
Case No. LRO2013-0061

1. The Parties
The Objector/Complainant (“Objector”) is DotMusic Limited of Lemesos, Cyprus, represented byConstantinous Roussos, United States of America.
The Respondent/Applicant (“Applicant”) is Entertainment Names Inc. of Tortola, British Virgin Islands,
Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Minds +Machines, California, United States.

2. The applied-for gTLD string
The applied-for gTLD string is <.music>.

3. Procedural History
The Legal Rights Objection (“Objection”) was timely filed with the WIPO Arbitration and Mediation Center(the “WIPO Center”) on March 14, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the“Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center has completed the review of the Objection
on March 22, 2013 and determined that the Objection complied with the requirements of the Procedure andthe World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing LegalRights Objections (the “WIPO Rules for New gTLD Dispute Resolution”).
The WIPO Center received a proposal from a third-party to consolidate the Objections LRO2013-0057,LRO2013-0058, LRO2013-0059, LRO2013-0060, LRO2013-0061, LRO2013-0062, and LRO2013-0063 onApril 25, 2013. The Objector indicated support to aspects of the consolidation proposal, which was opposedby other parties in the Objections referred to in the consolidation proposal. In accordance with Article 12 ofProcedure and Paragraph 7(d) of the WIPO Rules for New gTLD Dispute Resolution, the WIPO Center did
not make a decision to consolidate the Objections for purposes of Article 12(b) of the Procedure.
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Applicant of theObjection, and the proceedings commenced on April 19, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center onMay 18, 2013.

page 2On March 22, 2013, in accordance with Article 11(g) of the Procedure, the WIPO Center notified theApplicant of a deficiency in the filed Response, specifically, that the Response had not been filed using theappropriate model form which is required for use to respond to an objection filed under the Procedure. TheWIPO Center in its notification requested the Applicant to file an amended response curing the deficiency
within five days.
On May 23, 2013, the Applicant filed an Amended Response, the receipt of which was acknowledged by theWIPO Center on the same day.
The WIPO Center appointed Miguel B. O’Farrell as the Panel in this matter on June 18, 2013. The Panelfinds that it was properly constituted. The Panel has submitted the Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance withArticle 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.
On July 15, 2013 the Objector of its own accord submitted an Additional Submission. On July 16, 2013 theApplicant objected to any additional submissions and requested the Panel that should it allow the submission
Applicant should be given the opportunity to rebut it.
On July 17, 2013 the Panel issued a Procedural Order granting Applicant a term of five days for rebuttal of
the Objector’s Additional Submission, without prejudice to the Panel’s determination of the admissibility ofsuch submission. The Applicant filed a timely Response to the Objector´s Additional Submission.
In the same Procedural Order, the Panel decided that, as decided by another panel in a similar case (DotTunes Limited v. Amazon EU S.à.r.l., WIPO Case No. LRO2013-0065), Mr. Jason Schaeffer and his firm
were not to be included on any further communication in this case.
The Panel accepts the Additional Submissions submitted by both parties and will consider them to the extent
that the Panel finds that they contain anything useful to help decide the case.

4. Factual Background
The Objector is the registered owner of the figurative European Community Trade Marks (“CTM”) No.
00139792 .MUSIC and device (applied for on March 5, 2009 and granted on November 3, 2009) and No.
008139834 DOTMUSIC and device (applied for on March 5, 2009 and granted on November 11, 2009) inclasses 35, 42 and 45. The specification of the marks cover, inter alia:“domain name reservation, registration, maintenance and management services; domain namesearching services; domain name registry services, namely coordinating the assignment of domainnames and address space; technical and legal research relating to Internet domain names (45),“Computer services, namely research, reservation, recording and administration of Internet domainnames; technical expertise relating to Internet domain names and projects; management of a web
based commercial platform of Internet domain names and projects, surveying for Internet domainnames and projects, design and development of Internet projects (42), “Management of databases,management of a database for Internet domain names and projects, also containing Internet domainnames and other Internet addresses; administrative services provided in connection with registration
and allotment of Internet domain names and other Internet addresses, including renewal andassignment services (35).”

page 3In both marks, the letter “s” in “music” is the representation of a treble clef flipped horizontally on a figure of astylized star, with a green, white and blue-gray color combination as set out below:

The Applicant has applied for the gTLD <.music> which has been objected to by the Objector based
primarily upon the above-mentioned trademarks rights and other arguments which will be dealt with below.

5. Parties’ Contentions
A. Objector
The Objector asserts that it is an e-commerce company that does business with “.MUSIC”-themed marks,including .MUSIC, DOTMUSIC and others such as .SONG, .TUNES, and .ARTIST.
The Objector has produced evidence to prove the fame of DotMusic, including the sponsorship of various
events, press releases and Internet traffic.
The Objector alleges that “if the Applicant assumes the goodwill created by DotMusic then the Applicant willtake unfair advantage of the millions of dollars invested by DotMusic in its business related to its Marks” andcontinues to argue that “Applicant would unfairly benefit from the significant reputation and goodwill
established by DotMusic´s actual bona fide use of its Marks creating an inevitable likelihood of confusion
among consumers and target audience the services are targeted for.”B. Applicant
The Applicant asserts that it has legitimate interests in the mark MUSIC by virtue of a trademark applicationthat was published in Chile and adds that “Applicant and Complainant, then, both have legitimate rights inthe mark MUSIC.”
The Applicant argues that it has legitimate interests in the top-level domain and that there has been no badfaith on the part of the Applicant, but that there has been bad faith on the part of the Complainant andrequests the Panel to make a finding for reverse top-level domain name hijacking.
The Panel notes that the Amended Response filed by the Applicant is mistakenly based on the Uniform
Domain Name Dispute Resolution Policy (“UDRP”) rather than the Procedure. In spite of this, for thepurposes of evaluating the merits of this Objection the Panel will consider the Applicant’s statements anddocuments which are relevant to the Procedure and Module 3 of the gTLD Applicant Guidebook(“Guidebook”).

6. Discussion and Findings
To succeed in a legal rights objection pursuant to the Procedure, the Objector bears the burden of proof todemonstrate that the potential use of the applied-for gTLD by the Applicant (i) takes unfair advantage of thedistinctive character or reputation of the Objector’s registered or unregistered trademark or service mark(“mark”); or (ii) unjustifiably impairs the distinctive character or the reputation of the Objector’s mark; or (iii)
otherwise creates an impermissible likelihood of confusion between the applied for gTLD and the Objector’smark.

page 4Due to the similarities between this case and the <.song> and <.tunes> cases the Panel, to the extent that it
finds them applicable to the case, will incorporate here significant elements of those determination’swordings.
The Objector’s trademark .MUSIC is identical to the applied-for string gTLD <.music> (this identity isexpressly acknowledged by Applicant in paragraph V(A)(2) of the Amended Response).
However, the word “music” is clearly generic and descriptive when used in relation to music and musicrelated goods or services, which is the intended use of the Applicant for the applied-for gTLD string in
dispute <.music>.
The Applicant has indicated that the purpose of the <.music> TLD is to “[p]rovide a trusted TLD for musicalartists, trade and union organizations, record labels, publishing companies, music distribution and marketingcompanies, DSPs, consumer brands, and music fans that will bring security, convenience, trust andefficiency to their music related activities,” and further, to “enhance consumer’s ability to discover andlegitimately consume music[.]”Should the trademark .MUSIC not have included the additional graphical elements shown above, it would
likely not have been granted for anything related to music.
This means that while the Objector may have valid rights in the .MUSIC and DOTMUSIC trademarks, thePanel finds such rights are limited to the extent that they cannot be enforced in this proceeding to prevent
the Applicant from using the word “music” for “music” or including it in a TLD which is to be used for theabove-mentioned music-related activity.
Section 3.5.2 of the Guidebook sets out eight non-exclusive factors to be considered by the Panel. ThePanel will address each of these factors below.
1. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, ormeaning, to the objector’s existing mark.
The gTLD <.music> and the Objector’s trademark .MUSIC are phonetically identical. However, there areconsiderable differences between the registered mark as shown above and how it would be used as a string
in a gTLD.
2. Whether the objector’s acquisition and use of rights in the mark has been bona fide.
There is nothing in the case file that prevents the Panel from making a finding of good faith in the Objector’sacquisition and use of rights in the .MUSIC mark.
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 a third party.
The Objector has produced evidence to show that his mark must be known and even perhaps well known ina relevant sector. Nevertheless, in the Panel’s view, such recognition is not sufficient to accept that thedescriptive term “music” has acquired a secondary meaning. Rather, it is the Panel’s view that consumers ofmusic and music-related activities on the Internet would more likely interpret the gTLD <.music> as a
descriptive term and not necessarily associated with the Objector. The Applicant has not demonstrated any
use or recognition of its asserted .MUSIC registration (discussed below) and none of the parties rely on thirdparty marks in their pleadings.

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4. Applicant’s intent in applying for the gTLD, including whether the applicant, at the time ofapplication 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.
Considering the generic and figurative aspects of the Objector’s marks, for the purposes of this case thePanel attaches little importance to the fact of whether Applicant had knowledge of those marks. There is noallegation that the Applicant is engaged in a pattern of conduct of applying for TLDs which are identical or
confusingly similar to marks of others.
5. Whether and to what extent the Applicant has used, or has made demonstrable preparations touse, the sign corresponding to the gTLD in connection with the bona fide offering of goods orservices or bona fide provision of information in a way that does not interfere with the legitimate
exercise by the objector of its mark rights.
The Panel has no evidence that the Applicant has used or made demonstrable preparations to use the sign
corresponding to the gTLD in connection with the bona fide offering of goods or services other than thereference made by Applicant to the intent to use it through its answer to Question 18: Mission and Purpose
discussed above.
In this connection, the Applicant also refers to an application it has filed for the trademark MUSIC in Chile
under Serial No. 1000890 for services falling in class 42, as shown in the copy of the relevant application
added to the file which shows that the name of the applicant is “ENTERTAINMENT NAMES, INC.” whichcoincides with the name of the Applicant. However, by checking the web page of the Chilean trade markoffice Instituto Nacional de Propiedad Industrial (“INAPI”), the Panel notices that the application stands in thename of “TOP LEVEL DOMAIN HOLDINGS, LTD.”
Nevertheless, given the generic nature of the gTLD the Panel does not consider this element relevant for
deciding this case.
6. Whether the applicant has marks or other intellectual property rights in the sign corresponding to
the gTLD, and, if so, whether such acquisition of such 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 is consistent withsuch use.
Given that the Panel considers the gTLD to be generic and descriptive, there is no need for the Applicant toprove any intellectual property rights to successfully defend against the Objection. The Panel however notes
the Applicant’s asserted application for the trademark MUSIC in Chile but finds such application alone
cannot form the basis for any Panel finding of intellectual property rights of the Applicant corresponding to
the <.music> gTLD, for purposes of this proceeding.
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.
From the evidence provided, the Applicant does not appear to have been commonly known by the sign.MUSIC or MUSIC. It has expressed the intention of creating a business under the gTLD.
8. Whether the applicant’s intended use of the gTLD would create likelihood of confusion with theobjector´s mark as to source, sponsorship, affiliation, or endorsement of the gTLD.
The Applicant’s stated intention is to use of the gTLD <.music> in connection with music-related activities.
Such use of the word “music” would seem to be only for its dictionary meaning and therefore it is unlikely thatit should be viewed by Internet users including music fans and others involved in music-related activities aspage 6
mark of the Objector.
Moreover, the Applicant has indicated that its policies and agreements are designed to include inter alia theprotection of trademarks and intellectual property rights and will make sure that their mechanisms for
enforcing rights and preventing abuse (such as their Complaint Resolution Service) operate effectively,efficiently and fairly.
In other words, given the generic nature of the sign, the Panel finds that there is little or no likelihood ofconfusion as to the source, sponsorship, affiliation, or endorsement of the gTLD. Should the Applicant use
the disputed gTLD string in such a manner that it infringes the Objector’s trademark rights, the Objector
could then take the appropriate legal actions to defend such rights. However, in the Panel’s view, this does
not seem likely to occur, at least seen from this point in time.
Concluding, the Panel finds that the purported use of the applied for gTLD by the Applicant:
(i)
(ii)
(iii)

does not take unfair advantage of the distinctive character or the reputation of the Objector’s marks,
does not unjustifiably impair the distinctive character or the reputation of the Objector’s marks, anddoes not otherwise create an impermissible likelihood of confusion between the applied-for gTLD andthe Objector’s marks.

Reverse TLD Name Hijacking
The Applicant claims that the Complainant has acted in bad faith and has requested the Panel to make afinding of Reverse TLD Domain Name Hijacking and “disallow Complainant’s application for .music fromproceeding.”
To such effect, the Applicant has made the following contentions.
(a)“Complainant is attempting to defraud the Panel by omitting pertinent evidence – evidence ofApplicant’s trademark for “music” – that was easily discoverable”. However, as mentioned above, thetrademark application “music” which the Applicant claims to have filed in Chile, as it appears in thedata base of INAPI, is in the name of a third party (TOP LEVEL DOMAIN HOLDINGS, LTD), and(b)“Complainant has offered no evidence of likelihood of confusion because it knows that no such
evidence exists and, further, that no such evidence can exist.” Clearly, since there has been no use of
the gTLD <.music> nor has the Applicant claimed to have made any use of the trademark “music”
there is no possibility of producing evidence to prove the alleged confusion.

While the Panel would not have found on the evidence that a finding of Reverse Domain Name Hijacking orabuse of process would be called for under the UDRP standards (see WIPO Overview of WIPO Panel Views
on Selected UDRP Questions, Second Edition, paragraph 4.17), the Panel notes in any event no provision
for such finding is available under the Procedure.

7. Decision
For the foregoing reasons, the Objection is rejected.
[signed]Miguel B. O’Farrell
Sole Panel Expert
Date: August 15, 2013