ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Scripps Networks Interactive, Inc. v. Wild Orchard, LLC
Case No. LRO2013-0021

1. The Parties
The Objector/Complainant (“Objector”) is Scripps Networks Interactive, Inc. of Knoxville, Tennessee,
United States of America represented by Wolfe, Sadler, Breen, Morasch & Colby, LLC, United States.
The Applicant/Respondent (“Applicant”) is Wild Orchard, LLC of Bellevue, Washington, United States
represented by The IP & Technology Legal Group, P.C. d/b/a “New gTLD Disputes”, United States.

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

3. Procedural History
The Legal Rights Objection (“LRO” or “Objection”) was filed with the WIPO Arbitration and Mediation Center(the “WIPO Center”) on March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the“Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center has completed its review of the Objection on
March 21, 2013 and has determined that the Objection complies with the requirements of the Procedure andthe World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the “WIPO Rules”).
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Applicant of the
Objection, and the proceedings commenced on April 16, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Applicant timely filed its Response with the WIPO Center on
May 17, 2013.
On May 17, 22, and 29, 2013, the Objector submitted e-mail communications to the Center relating toconsolidation of proceedings. The Objector inquired as to possible consolidation of this proceeding andanother objection from the Objector and involving the same gTLD though with a different
applicant/respondent. Subsequently, on May 29, the Objector filed a formal request for consolidation. The
Center, pursuant to Article 12 of the Procedure and Paragraphs 7 and 8 of the WIPO Rules and through amessage dated May 30, 2013, concluded that the request was untimely. It invited both parties in thispage 2
proceeding to comment on its conclusion by June 3, 2013. Neither party provided any comments in
response to the WIPO Center’s invitation.
The WIPO Center appointed Peter L. Michaelson as the Panel in this matter on June 11, 2013. The Panelfinds that it was properly constituted. On June 10, 2013, the Panel had submitted its Statement ofAcceptance and Declaration of Impartiality and Independence, as required by the WIPO Center to ensurecompliance with Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules.
In light of the interests at stake for both parties in this proceeding, the Panel, pursuant to Article 17 of theProcedure and through Expert Panel Order No. 1 issued on July 8, 2013, invited both parties to file a further
set of submissions. Specifically, the order invited the Objector to file, in its discretion and within 15 days, a
Reply, with the WIPO Center, limited to observations and arguments related to new or unforeseenarguments brought forward by the Applicant in its Response. Similarly, the order accorded the Applicant an
opportunity to file, with the WIPO Center, in its discretion and within an immediately subsequent period of
15 days, a Sur-reply to observations and arguments set forth in the Reply.
On July 23, 2013, the Objector timely filed its Reply by e-mail with the WIPO Center. Subsequently, on
August 6, 2013, the Applicant timely filed its Sur-Reply by e-mail with the WIPO Center.
Pursuant to Panel Order No. 1, the Panel’s Expert Determination is due 45 days after the expiration of the
15-day Sur-Reply period, that deadline specifically being September 23, 2013.

4. Factual BackgroundA. Objector’s FOOD Marks
The Objector, Scripps Networks Interactive, Inc (“SNI”), owns a portfolio of numerous United States andcounterpart foreign registered trademarks for marks containing the term “food” with or without additional text
and in block letters, lower case letters and/or as part of a design. The Objector has provided: (a) in Annex 2
to the Objection, a listing of all its FOOD Marks, and (b) in Annex 3 to the Objection, copies of its registration
certificates for one of its Argentinian registrations and various ones of its US registrations. Pertinent detailsof a representative sample of those US registrations, depicting variations of the FOOD Marks across SNI’s
portfolio, are as follows:(1)

FOOD (block letters)
US registration No.: 4,049,665
registered: November 1, 2011

This mark is registered for use in connection with: “[e]ntertainment services, namely an on-going audio andvisual program distributed over television, satellite, wireless, audio and video media, fiber optics, cable, anda global computer network in the fields of cooking and culinary arts, health, fitness, and nutrition”, all inInternational class 41. The registration certificate states that, in conjunction with these services, both firstuse and first use in commerce of the mark commenced as of January 2, 2003.
(2)

FOOD (design: white lower case text “food” within a black circle with a black background)
US registration No.: 3,658,544
registered: July 21, 2009This mark is registered for use in connection with: “providing information via a global computer information
network in the fields of cooking and culinary arts” in international class 43. The registration certificate states
that, in conjunction with this service, both first use and first use in commerce of the mark commenced as ofJanuary 1, 2003.

page 3
(3)

FOOD NETWORK (block letters)
US registration No.: 3,874,130
registered: November 9, 2010

This mark is registered for use in connection with: “[p]rinted materials and publications, namely a magazine
about food and cooking” in international class 16. The registration certificate states that, in conjunction withthese goods, both first use and first use in commerce of the mark commenced as of November 1, 2008.
(4)

FOOD NETWORK-HD (block letters)
US registration No.: 3,319,967
registered: October 23, 2007

This mark is registered for use in connection with: “distribution of television programs for others;
entertainment services, namely, providing television programs in the fields of food, cooking, recipes,
restaurants, entertaining, nutrition, and the culinary arts via television, global computer networks, wirelessglobal computer networks, cable, satellite, and fiber optics; audio-visual programming services, namely
television programming”, all in international class 41. The registration certificate states that, in conjunction
with these services, both first use and first use in commerce of the mark commenced as of June 30, 2006.
(5)

FOOD NETWORK (block letters)
US registration No.: 3,607,721
registered: April 14, 2009This mark is registered for use in connection with: “[c]heese cloth; dish cloths; fabric table runners andtable toppers; oven mitts; place mats not made of paper; place mats of textile material; table linen namely
coasters, napkins and place mats; table mats not of paper; textile napkins, place mats and tablecloths”, allin international class 24. The registration certificate states that, in conjunction with these goods, both firstuse and first use in commerce of the mark commenced as of September 30, 2007.
(6)

FOOD NETWORK (design: white lower case text “food network” with “network” in a smaller fontjuxtaposed immediately below “food”, both within a black circle with a black background)
US registration No.: 2,924,169
registered: February 1, 2005

This mark is registered for use in connection with: “entertainment services in the nature of ongoing television
programs in the field of cooking and culinary arts, health, fitness and nutrition and distribution for others andproduction of television programs”, all in international class 41. The registration certificate states that, in
conjunction with these services, both first use and first use in commerce of the mark commenced as ofFebruary 27, 2003.
(7)

FOOD.com (stylized: “Food” in block letters, followed by a period with a raised balloon containing“.com” in white letters against a black background emanating from the period)
US registration No.: 4,106,214
registered: February 28, 2012

This mark is registered for use in connection with: “providing information via a global computer information
network in the fields of cooking and culinary arts” in international class 43. The registration certificate states
that, in conjunction with this service, both first use and first use in commerce of the mark commenced as ofJuly 13, 2010.
(8)

FOODOGRAPHY (block letters)
US registration No.: 4,046,554
registered: October 25, 2011

page 4This mark is registered for use in connection with: “educational and entertainment services, namely, acontinuing program about cooking, accessible by radio, television, cable, fiber optic networks, wirelessnetworks, satellite, audio video, and computer networks”, all in international class 41. The registration
certificate states that, in conjunction with this service, both first use and first use in commerce of the markcommenced as of July 4, 2010.
B. Objector
The Objector, SNI, a publicly traded US company, develops lifestyle-oriented content for many media
platforms, including television, digital, mobile and publishing. Its portfolio includes worldwide media brands,
including Food Network, HGTV, Travel Channel, Cooking Channel and DIY Network.
SNI, through its subsidiary or related entities Scripps Networks, LLC and Television Food Network, G.P.,
owns the FOOD Marks. Many of these marks have been in existence for more than 10 years and used with
SNI’s FOOD brand and in conjunction with, e.g., television broadcasting and entertainment services, online
entertainment and information services, sweepstakes and contests, and other related goods and services.
SNI has been operating its television network under its marks FOOD and FOOD NETWORK for 20 years.
Currently, its television programming is viewed in over 150 countries, including the United States, the United
Kingdom of Great Britain and Northern Ireland, India, and further countries in Asia and in Africa. This
programming is viewed by approximately 100 million subscribers in the United States alone, with tens of
millions more throughout the world. SNI’s <foodnetwork.com> website averages over 225 million visitors
each month. On social media and with respect to culinary arts and cooking, SNI’s FOOD brand has
attracted over 5 million collective fans. Since 2010, SNI also operates another website at <food.com>
through which, SNI under its mark FOOD.COM, provides recipes and information on cuisine and mealplanning. This latter website currently experiences over 20 million monthly visitors. The brand FOOD.COM
presently has social media following of over 300,000 fans. Further, SNI’s programming has gained attention
from other forms of media, including newspapers, magazines and radio and television talk shows.
Paragraphs 4-7, Declaration of Lori Hickok, Executive Vice President of Finance for SNI – a copy of thedeclaration appears in Annex 5 to the Objection.
At present, SNI expends approximately USD 30 million annually in marketing its FOOD and FOOD
NETWORK branded shows and products. This marketing is conducted through print media, television
advertising, television talk shows featuring talent, digital advertising, website and social media pages, andparticipation in and sponsorship of culinary events, such as food and wine festivals, food truck tours, cooking
contests and other events. Id. at paragraph 9.
SNI’s FOOD brand generates more than USD 800 million of annual revenue. Id. at paragraph 5.
SNI, through its subsidiary, Lifestyle Domain Holdings, LLC, is the applicant for the conflicting gTLD string<.food>.
C. Applicant
Donuts Inc. (“Donuts”), the parent company of the Applicant, was founded to acquire and operate “new”
gTLDs under ICANN’s New gTLD Program that officially launched in July 2011. It applied for 307 new gTLD
strings (at a cost of USD 185,000 per application) for a cumulative investment of approximately USD 57
million in application fees – more than any other entity has invested (the next largest two are Google with
101 strings and Amazon with 78 strings). Paragraph 14, Declaration of Jonathon Nevett, a founder andExecutive Vice President of Donuts – a copy of that declaration appears in Annex B to the Response.
Donuts intends to provide various services including a domain name registrar at each new gTLD it places inoperation, thus creating a large-scale top-level domain (TLD) registry. It believes that, by achieving
economies of scale through operating a large number of new gTLD name registries, it will: (a) expand
consumer choice and expression, particularly for those Internet users who seek a specific Internet identity,

page 5
as well as (b) increase competition in the namespace by making available for registration and use secondlevel domain-gTLD name pairs that otherwise would not be economically viable and obtainable.
See paragraphs 18(a) and 23 (first paragraph of answer text), New gTLD Application submitted to ICANN byWild Orchard, LLC (for string: <.food>), application ID: 1-1462-36448 – a copy of which appears in Annex 1
to the Complaint (henceforth simply “New gTLD Application”).
Donuts selected the 307 gTLD strings, including <.food>, as delineating subject areas which it believed
would be attractive and useful to a variety of Internet users as each one facilitates search, self-expression,
information sharing and the provision of goods and services. Ibid. Donuts stated that it deliberately choseeach string to be a common dictionary word so that consumers could use the corresponding gTLD inaccordance with its well-understood meaning. Paragraph 7, Nevett Declaration.
Donuts states, that in an effort to preserve third-party rights and protect against potential abuse andmisconduct that may arise during customer name registration, it will implement eight additional measures
beyond those ICANN requires for use with every new gTLD it places in use: periodic audit of WhoIs data for
accuracy, remediation of inaccurate WhoIs data including takedown where warranted, implementation of adomain protected marks list for trademark protection, new “claims plus” product for trademark protection,
terms of use that prohibit illegal or abusive activity, limitations on domain proxy and privacy service,
published policies and procedures that define abusive activity, and proper resourcing for all these measures.
Paragraph 11, Nevett Declaration and Paragraph 18(a), New gTLD Application.
In addition to its USD 57 million investment in gTLD applications, Donuts has also invested additional sums,
ranging in the millions of dollars, for technical and other support to operate name registries for its new gTLDs
when and if they are issued to Donuts. Paragraph 15, Nevett Declaration. In that regard, Donuts has also
engaged a number of companies that provide back-end technology, marketing, finance, legal and consulting
services. Id. at paragraphs 9-13; and paragraph 18(a), New gTLD Application.
To accomplish all this, Donuts has raised more than USD 100 million from a number of capital sources,
including venture capital and private equity funds, bank financing and from well-capitalized investors, and iscapable of raising additional funds should the need arise. Paragraph 18(a), New gTLD Application.

5. Parties’ Contentions
A. Objector
Pursuant to Articles 2(e) and 8(a)(iii)(aa) of the Procedure, the Objector SNI asserts the present LRO as
being generally predicated, pursuant to Article 8(a)(iii)(bb), on its belief that the applied-for <.food> gTLD
infringes its existing legal rights that are recognized or enforceable under generally accepted internationalrecognized principles of law. As set forth in the Objection, the rights are those resulting from its trademark
registrations, both in the United States and in various foreign countries, for its FOOD Marks. Article
8(a)(iii)(bb) of the Procedure requires that the Objector explain why it believes its objection is valid andshould be upheld. Pursuant to that paragraph, SNI asserts that the potential use of the Applicant’s appliedfor <.food> gTLD:(a) takes unfair advantage of the distinctive character or the reputation of SNI’s marks; and/or(b) unjustifiably impairs the distinctive character or the reputation of those marks; and/or(c) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and thosemarks.
The Objector further contends that the potential use of the Applicant’s applied-for <.food> gTLD harms
Internet users by misleading them into believing that the <.food> gTLD is related to its famous brand FOOD
as evidenced by the long-standing global use in commerce of its mark FOOD and registrations for the sameor similar marks in many jurisdictions around the world.

page 6Given these broad assertions, the basic grounds, in some specificity, that underlie SNI’s objection to theapplied-for gTLD are as follows:
1. The <.food> gTLD is similar and, in certain instances, identical in appearance, sound and meaning, tothe SNI’s FOOD Marks. SNI’s acquisition and use of rights in these marks have been bona fide as
evidenced by: (a) the long period during which the registrations have subsisted – over 10 years for someof the registrations, and (b) its use, for over 20 years, of the marks FOOD and FOOD NETWORK in
conjunction with its global television programming. During this period and as a result of SNI’s extensive
use of its FOOD Marks, those marks have acquired substantial secondary meaning in the marketplace.
2. If the Applicant were to sell, as it purports to do, second-level domains to the general public on anunrestricted basis under the <.food> gTLD, that would erode consumer confidence in SNI’s FOOD and
FOOD-variant brands (e.g., the FOOD NETWORK brand) as authoritative sources of information,
programming, content and advice, and would ultimately confuse and mislead consumers into believing thatthe content, information and/or products in the <.food> gTLD are provided by SNI – when they are not.
Consequently, the goodwill associated with SNI’s FOOD and FOOD-variant brands would be irreparably
damaged. This result lies contrary to the legal protection provided to SNI under trademark law, both in the US
and multiple foreign jurisdictions, which seeks to prevent consumer confusion and, as such, maintain goodwill
associated with brands as source indicators.
3. Given SNI’s worldwide registration and widespread use of its FOOD Marks for over 10 years, theApplicant knew or should have known of SNI’s trademark rights in and to SNI’s FOOD and FOOD-variant
marks at the time the Applicant filed its application for the <.food> gTLD.
4. As evidenced through SNI’s own gTLD application (through its subsidiary, Lifestyle Domain
Holdings, LLC) for the <.food> gTLD, SNI intends to operate <.food> as a mechanism to extend its current
online channel of distribution through the use of its FOOD brand as a TLD. This includes providing SNI’s
programming, content, information and connected experiences centered on cuisine, cooking and culinaryarts. Only SNI can offer the consumer the experience and quality associated with SNI’s FOOD
and FOOD-variant brands. Allowing the Applicant to operate the <.food> gTLD would be contrary to:(a) ICANN’s well-settled policy of protecting Internet users and consumers from infringers, and (b) the
intention of the new gTLD program to ensure that those users are protected in the expanded Internet
environment and also rightful brand owners, such as SNI, can reasonably protect their brands frommisappropriation or unlawful use.
5. The Applicant has not made any demonstrable preparations to use the sign FOOD in connection with abona fide offering of goods or services or a bona fide provision of information in a way that neither
interferes with the legitimate exercise by SNI of its trademark rights nor undermines SNI’s rights in its marks.
While the Applicant intends to use the new gTLD “to increase competition and consumer choice at the top
level”, the manner through which it will do so will explicitly interfere with the existing rights of SNI. SNI’s
trademark rights are within the field of operating a web site, computer network, content and information.
Therefore, use of <.food> by the Applicant as a gTLD would inherently infringe upon SNI’s exact class ofgoods and services for which it has been granted trademark protection.
6. The Objector intends to function, per the ICANN-Registry Operator Registry Agreement, as aSpecification 9 exempt system. In conjunction with doing so, SNI will carefully monitor and safeguard theuser experience to provide users with confidence that they have found SNI’s family of brands and thecontent, information and experiences associated with those brands, including the FOOD brand, that
consumers throughout the world know and trust. SNI’s operation of the <.food> gTLD will further benefit
Internet users by creating additional opportunities to strengthen the consistency of delivery of SNI’s FOOD
brand. In doing so, SNI intends to create numerous subdomains under the <.food> gTLD that have not been
available under the existing TLD namespace. Further, the <.food> gTLD creates the possibility that these
to-be-created subdomains will be precisely targeted to Internet users who will use them, focused on content
associated with the gTLD under which they will reside, and relevant to the gTLD (i.e., there will be anincreased nexus between the gTLD and the content, information and experiences associated with SNI’s

page 7family of lifestyle brands). In other words, Internet users will benefit from the goodwill associated with FOOD
brands on SNI’s <.food> gTLD.
In contrast, the Applicant’s intended use of the <.food> gTLD is to resell second-level domains in the open
marketplace and become an authoritative online resource for content related to cuisine and the culinaryarts. Such activity would not only irreparably damage SNI’s FOOD brand, but also a significant likelihood
exists that it would unlawfully trade upon the existing fame and goodwill of SNI FOOD Marks. In thatregard, the Applicant has not articulated in its application for the gTLD how it will create a trusted environment
for cuisine-related information, products and services. Should the Applicant operate <.food> as an open
registry, then SNI’s consumers will be confused and misled into believing that second-level domains on the<.food> gTLD are somehow related or connected to SNI’s FOOD brand, when they are not; and that thecontent provided through those second-level domains emanates from, is somehow associated with or has thesame quality level as that provided by SNI when it does not. This will devalue and dilute the integrity of SNI’s
FOOD brand which SNI has built over many years and the substantial investment SNI has made in thatbrand, thus causing irreparable harm to SNI.
B. Applicant
In its Response, the Applicant takes a markedly contrary view. Its principal arguments in support for denying
the Objection are:(a) The Objector failed to satisfy its burden of proof. Its mark FOOD has no distinctive character. Moreover,
the Applicant’s proposed use of the <.food> gTLD is consistent with the generic meaning of the word “food”
and, as such, would not unjustifiably impair or take unfair advantage of the Objector’s marks or their
distinctive character or reputation. As such, no likelihood of confusion would arise between the Applicant’s
proposed use of the <.food> gTLD and SNI’s FOOD Marks.
(b) There is no evidence of infringement.
(c) The applied-for <.food> gTLD promotes free speech, competition and consumer choice on the Internet.
The present objection thwarts these goals. If the objection succeeds, it would prevent the Applicant fromoffering a generic dictionary term as a gTLD. This would create an improper Internet-wide monopoly over an
English-language word.
Having set forth these broad arguments, the Applicant primarily asserts the following specific grounds:
1. The <.food> gTLD does not infringe upon any legitimate right of SNI; nor has the Applicant provided any
evidence that it does. Moreover, the Applicant bears no ill intent towards SNI including any intent to infringe
its marks; here too, SNI has not provided any evidence to the contrary.
The sign FOOD is a common dictionary word having multiple meanings which, if SNI successfully opposes,
would prevent an entire segment of the Internet community from using the word consistent with its genericand non-trademark meanings, i.e., as an adjective describing a characteristic of domain names or web sitesthat contain information on or goods/services concerning food. Neither ICANN nor any other regulatory body
imposes prior restraints on freedom of expression to use an ordinary dictionary term simply because certain
uses may implicate trademark rights. SNI cannot use this proceeding as a bludgeon to beat down legitimate
uses of new gTLDs to preserve its limited, non-exclusive trademark rights. Rather, SNI must turn to othertools which ICANN has provided, such as the Uniform Domain Name Dispute Resolution Policy, to enforce
its rights against abuse by third parties. It is well established in trademark law that one who claims acommon, descriptive word as a trademark takes the risk that many others will use the same or a similar term
to identify their companies, goods and/or services. Although one may own trademark rights in such a term,such rights will not prevent others from using the word in good faith in its descriptive sense, and not as atrademark.
2. SNI is not the only content provider descriptively using the word “food” to identify its business of providing
cooking related content to the public. In that regard, “The Food Channel,” is a registered trademark ofFoodchannel.com, LLC. “The Food Channel,” just like SNI’s FOOD NETWORK provides information topage 8
consumers, via the Internet, regarding cooking and cuisine. A hardcopy of the home page of the web site
<foodchannel.com> appears in Annex C to the Response. While the “Food Channel” may not be as large or
successful as SNI’s offering, two content providers with highly similar names have been and are now
coexisting within the identical market. The same is true in print media, where, although SNI has its own
Food Network magazine, other third-party food-related publications exist which offer the same or similar
content as does SNI’s magazine and include the term “food” in their names, such as, e.g.: the FOOD
magazine (a copy of the front cover of this publication appears in Annex D to the Response), Food andWine, Good Food, Food and Travel and Food and Home Entertaining. Furthermore, in the absence of any
direct evidence provided by SNI that establishes any consumer association between the term “food” andSNI’s content offerings and licensed products, the consuming public does not perceive SNI, contrary to its
view, as a sole source of food-related content.
Hence, there is no reason whatsoever why the Applicant cannot utilize the sign FOOD as a gTLD withoutcausing confusion among the public or harming SNI’s FOOD Marks.
3. SNI has not proven that the relevant sector of the public would recognize the sign FOOD as its claimed
mark. For a gTLD, that sector encompasses everyone in the world with Internet access. SNI claims that
“Internet users and consumers around the world regularly rely upon the goodwill and reputation associatedwith SNI’s FOOD brands in seeking out culinary content and advice.” Objection at Paragraph 6. Yet, SNI
offers no support for this claim. While members of the public, either via television or the Internet, access
SNI’s “FOOD NETWORK” content for informational purposes, SNI has not provided any proof whatsoeverthat consumers exclusively or even regularly associate the use of the generic term “food” with SNI, or, moregenerally speaking, with cuisine shows on television.
As such, SNI does not and cannot demonstrate that Internet users sufficiently associate the generic word
“food” with SNI such that SNI’s claimed trademark rights in that word can prevent the Applicant from using it
as a gTLD.
Trademark rights do not prevent the non-trademark use of a dictionary term in or with a top-level domain.
See, e.g., Image Online Design v. ICANN, 2013 U.S. Dist. LEXIS 16896, 22-24 (C.D. Cal. 2013) (finding noprotectable interest in the proposed top-level domain name <.web>); see also Advertise.com v. AOL
Advertising, 616 F.3d 974, 978-979 (9th Cir. 2010) (AOL’s “advertising” usage insufficient to prevent use ofadvertising.com as each identifies a type of service and not the supplier of it, or merely a “genus” of which
the particular service of each is a “species"); Hasbro v. Clue Computing, 66 F. Supp. 2d 117, 133(D. Mass. 1999), affirmed, 232 F.3d 1 (1st Cir. 2000) (summary judgment entered in favor of defendantregistrant of <clue.com> site against rights holder in “Clue” board game; trademark law does not support
monopoly over domain name uses, such that “[i]f another Internet user has an innocent and legitimate
reason for using the ... mark as a domain name and is the first to register it, that user should be able to use”
the name).
4. To mitigate possible rights abuse and, concomitantly, provide a more secure environment than currently
exists, the Applicant will provide additional levels of trademark rights protection as part of its <.food> gTLD
registry, such as through a “Domain Protected Marks List” and a “Claims Plus” service, beyond even theenhanced levels required by ICANN for use with any of the new gTLDs (such as the Uniform Rapid
Suspension system, the Post Delegation Dispute Resolution Procedure and the Trademark Clearinghouse).
Paragraphs 9-13, Nevett Declaration.
5. SNI has not provided any actual evidence establishing the alleged popularity of its marks as the Hickok
declaration is uncorroborated, conclusory and self-serving. Further, since neither SNI nor Ms. Hickok
identifies the specific source for their data and does not attach the reports from which that data is derived, allstatistical references which either provides are of dubious evidentiary value and should be discounted
accordingly.
6. The Applicant has invested considerable sums in applying for and provisioning 307 gTLD strings including
planning and preparing to use the string “food” and each of its other applied-for strings in a manner thatpage 9protects the rights of others. Paragraph 7, Nevitt Declaration. The Applicant will have terms and conditions
that prohibit unlawful conduct, as well as implement additional trademark protection mechanisms and abuse
mitigation measures beyond those currently required by ICANN. Further, the Applicant reserves the right todelete second-level domains used in an illicit manner. Id. at paragraphs 9-13. Thus, SNI has failed to provethat the Applicant will operate the <.food> gTLD in other than in a bona fide manner.
C. Objector’s Reply
In its Reply, SNI raises several principal arguments as follows, some of which appear to amplify arguments it
has previously made:1. The applied-for gTLD is identical, in all respects, in appearance, sound and meaning to SNI’s FOOD
Marks and sufficiently similar to those marks where the term “food” is a dominant component, e.g., the marks
FOOD NETWORK and FOOD.COM. In the latter marks, the term is not used in a generic manner.
2. SNI reiterates its position that if the Applicant is permitted to use its applied-for gTLD, then consumer
confusion and infringement will certainly occur with irreparable dilution and damage to the integrity and valueof SNI’s FOOD brand.
SNI owns trademark rights in the mark FOOD specifically for use in conjunction with providing information via“a global computer information network in the fields of cooking and culinary arts, health, fitness andnutrition”. Unlike brand protection for apparel or other consumer goods, SNI’s trademark rights are directly
related to the use of the applied-for gTLD. Here, SNI’s FOOD brand has been built around and is inherently
tied to digital online media content related to “food”, the very item from which the Applicant is attempting to
profit through use of its applied-for gTLD. There are not many common usages of the term “food” which lie
outside the scope of cooking, culinary arts, health, fitness and nutrition. SNI’s brand is built around theseconcepts as it relates to digital media content. The Applicant’s applied-for gTLD is an attempt to capitalizeon the same type of food-based digital media content by selling domains which would be confusingly similar
to SNI’s brand. There is not a wide range of second-level domains available in the <.food> gTLD which
would not directly infringe upon SNI’s trademark rights. As such, the use of “food” as the primary source
indicator for online digital content, as would result from the Applicant’s use of the term, would infringe on
SNI’s FOOD Marks.
3. The Applicant should have been reasonably aware of SNI’s FOOD Marks at the time it applied for thegTLD and that those marks were not generic.
D. Applicant’s Sur-reply
In its Sur-reply, the Applicant responded to the Reply by raising the following primary arguments:
1. In a companion LRO administrative proceeding involving the same <.food> gTLD, Scripps Networks
Interactive, Inc. v. Dot Food, LLC, WIPO Case No. LRO2013-0020, the panel rejected SNI’s objection,
despite specific arguments which SNI made there and now makes here in support of its new gTLD
application:(a) its federal registration of its FOOD Marks;(b) perceived similarities in sight, sound and meaning between the sign FOOD and the FOOD Marks and thegoods and services marketed thereunder;(c) the Hickok Declaration; and(d) infringement is highly likely to occur, including by second-level <.food> domain names made through theApplicant’s registry.
The fundamental reason underlying the panel’s rejection in the above case was its view that the term “food”
was used in the applied-for gTLD in accordance with its generic sense, i.e., common dictionary meaning.
That usage cannot by itself cause any likelihood of confusion with any of SNI’s marks. Precluding thepage 10applicant from using the term “food” as its gTLD would effectively prevent third-parties from using the term inmany common usages in which they are entitled to do so. Thus, the panel concluded that it would beunreasonable to foreclose its use by the applicant as a gTLD.
2. No matter how similar the applied-for gTLD is to the Applicant’s registered FOOD Marks, neither thesimilarity nor any allegation of infringement can overcome the generic use of the term in the applied-for gTLD
which will not interfere with the legitimate exercise by SNI of its trademark rights in its FOOD Marks.
3. The Applicant will implement a number of additional protective measures, over and above those required
by ICANN, to prevent trademark infringement.

6. Discussion and Findings
A. Procedural Framework
ICANN has created a framework for establishing a set of new domain name registries identified as theso-called “new gTLDs”. Similar to the conventional gTLDs (e.g., “.com”, “.org”, and “.net”), the new gTLDs
will be comprised of textual strings, many of which will likely constitute words in a given language.
ICANN GNSO (Generic Names Supporting Organization) Recommendation 3 states that “[s]trings must not
infringe the existing legal rights of others that are recognized or enforceable under generally accepted andinternationally recognized principles of law.”
To interpret and give meaning to this recommendation, ICANN instituted a process through which trademark
rights holders may lodge an objection, specifically one predicated on that holder’s legal rights, to an
applicant’s adoption of an applied-for new gTLD. Section 3.2.1 of the gTLD Applicant Guidebook, Module 3(June 4, 2012) (“Applicant Guidebook”).
In order for a panel to consider a LRO, a rights holder must establish, under Section 3.2.2 of the Applicant
Guidebook, that, as a threshold requirement, it has standing to object. Specifically, under Section 3.2.2.2 of
the Applicant Guidebook, the objector must delineate the basis, through source and documentation, of its
existing legal rights which the holder believes would be infringed by an applied-for gTLD. The source of
these rights may include registered or unregistered trademarks.
Once the objector alleges standing, then, pursuant to Section 3.5.2 of the Applicant Guidebook, the objector
has a burden of showing that the potential use of the applied-for gTLD by the applicant:(1) takes unfair advantage of the distinctive character or the reputation of the objector’s registered or
unregistered trademark or service mark, or(2) unjustifiably impairs the distinctive character or the reputation of the objector’s mark, or(3) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and theobjector’s mark.
Where an objection is based on trademark rights, this paragraph enumerates eight non-exclusive factors
which the panel will then consider in determining whether the objector has satisfied its burden or not:(1) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the objector’s existing mark.
(2) Whether the objector’s acquisition and use of rights in the mark has been bona fide.
(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, the applicant or a third party.
(4) The 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 thatmark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for oroperates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.

page 11(5) Whether and to what extent the applicant has used, or has made demonstrable preparations to use, thesign corresponding to the gTLD in connection with a bona fide offering of goods or services or a bona fideprovision of information in a way that does not interfere with the legitimate exercise by the objector of its
mark rights.
(6) Whether the applicant has marks or other intellectual property rights in the sign corresponding to thegTLD, 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 is consistent with such acquisition or
use.
(7) Whether and to what extent the applicant has been commonly known by the sign corresponding to thegTLD, and if so, whether any purported or likely use of the gTLD by the applicant is consistent therewith andbona fide.
(8) Whether the applicant’s intended use of the gTLD would create a likelihood of confusion with theobjector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
B. Analysis
1. Standing under Section 3.2.2.2
As noted above, under Section 3.2.2.2 of the Applicant Guidebook, the Objector SNI must first delineate thebasis, through source and documentation, of its existing legal rights which it believes would be infringed by
the applied-for <.food> gTLD.
SNI has done so by basing its rights on its portfolio of registered FOOD Marks which it has specified in
Annex 2 to its objection and of which, in Annex 3, it has provided copies of some of its registration
certificates. The details of a representative sample of its United States registrations have been delineated in
section 4(A) above. The Objector claims these marks would be infringed by the applied-for <.food> gTLD.
As such, there can be no question that SNI has established requisite standing for its objection, and thus has
satisfied its burden under Section 3.2.2.2.
2. Multi-factor assessment under Section 3.5.2
With standing established, the focus shifts to Section 3.5.2 of the Applicant Guidebook under which thePanel determines whether SNI has sufficiently shown that the Applicant’s intended use of the applied-for<.food> gTLD would:(1) take unfair advantage of the distinctive character or the reputation of the SNI’s FOOD Marks; or(2) unjustifiably impair the distinctive character or the reputation of any of those marks; or(3) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and any of the
FOOD Marks.
As stated by the panelist in Right At Home v. Johnson Shareholdings, Inc., WIPO Case No. LRO2013-0030(see also Pinterest, Inc. v. Amazon EU S.à.r.l, WIPO Case No. LRO2013-0050):“The use of the terms ‘unfair,’ ‘unjustifiably,’ and ‘impermissible’ as modifiers, respectively, of ‘advantage,’‘impairs,’ and ‘likelihood of confusion’ in Section 3.5.2 suggests that there must be something more thanmere advantage gained, or mere impairment, or mere likelihood of confusion for an Objection to succeed
under the Procedure. It seems, rather, that there must be something untoward – even if not to the level ofbad faith – in the conduct or motives of Respondent, or something intolerable in the state of affairs which
would obtain if the Respondent were permitted to keep the String in dispute.”
The Panel concludes that the potential use of the applied-for gTLD by the Applicant would not take unfair
advantage or unjustifiably impair the distinctive character or the reputation of SNI’s FOOD Marks, orotherwise create an impermissible likelihood of confusion with any of those marks.

page 12In reaching its conclusions, the Panel has carefully considered, in light of the specific facts at issue and therelevant substantive legal principles, the eight non-exclusive factors set forth in Section 3.5.2 of the Applicant
Guidebook and now provides its corresponding reasons as follows.
i. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or meaning,to the objector’s existing mark.
SNI’s FOOD Marks encompass registered marks that have either the term “food” standing alone or as aformative in conjunction with one or more terms, such as, e.g., NETWORK or .COM. Assessing this factor
requires a simple comparison between the applied-for gTLD and SNI’s marks, regardless of the public
perceptions of these marks and whether use of that gTLD would cause any likelihood of confusion to arise(which are respectively addressed in factors (iii) and (viii) below).
Accordingly, it is obvious to the Panel, from a simple visual comparison, that the applied-for <.food> gTLD is
identical to a number of those marks and quite similar to many of the rest. This factor appears to serve as an
outcome-determinative threshold test. If SNI were unable to prove that identicality or sufficient similarity
exists, i.e. the test fails, then its objection will in all likelihood be rejected on that ground already.
ii. Whether the objector’s acquisition and use of rights in the mark has been bona fide.
SNI’s FOOD Marks have been in existence for more than 10 years and remain in use, in conjunction with
SNI’s branded goods and services enumerated in the corresponding registrations. Presently, SNI spends
approximately USD 30 million per year marketing its goods and broadcast services under its FOOD Marks.
There is no evidence of record whatsoever that SNI has acquired or used any of its registered marks in otherthan a bona fide manner – nor has the Applicant even implicitly raised this issue.
Just as with the immediately preceding factor, the Panel views the present factor as simply anotheroutcome-determinative threshold test. If the Applicant were to successfully prove that SNI acquired or used
its marks in bad faith, then its objection would in all likelihood be denied on that ground already.
iii. 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.
SNI strenuously argues, based on its rather comprehensive use of its marks FOOD and FOOD NETWORK
for many years in conjunction with its television broadcasting and entertainment services directed to aspectsof cuisine, cooking and culinary arts, that those terms have developed sufficient secondary meaning in theminds of the relevant viewers as to be source-indicative of the particular services and products with whichthose terms are used by SNI.
The Applicant does not dispute that such secondary meaning may have been established in the relevant
viewers for the mark FOOD NETWORK – namely those who seek out food-related content from SNI (or its
licensees) whether through television, the Internet or other mass media. However, there is sharp
disagreement amongst the parties, based on the meaning and public use of the term “food” alone, whether
any such secondary meaning carries over just to that term and, if it exists, just how extensive it is.
SNI contends that the term “food” has acquired secondary meaning in the food industry, as source-indicativeof its goods and services, sufficient to differentiate that term from its generic meaning and thus support SNI’scontention of potential infringement by the applied-for gTLD should it come into use.
No independent, corroborating evidence has been presented by SNI sufficient to persuade this Panel that
SNI has developed secondary meaning in just the term “food” such that more than, at most, a de minimis
amount of the viewing public likely associates that term with SNI (or its licensees) not merely in the context of
being a source of entertainment and broadcast television shows related to the cuisine, cooking and theculinary arts – as its registrations indicate for its services – but rather in the much broader context of being

page 13source of goods and services in the entire food industry. Overwhelming usage of that word by Internet users
who seek information regarding some aspect of that industry is consistent with the commonly understood,
i.e. generic, meaning of the word. Words that are so used are simply incapable of ever possessing any
distinctiveness and hence trademark significance. Should, over time, the public usage of that term andhence its generally perceived meaning change, then such significance may arise at some point. There is no
showing of record that any such change has happened here or is in process of happening among any
relevant Internet user community.
Further, as the Applicant has not yet used the term “food” at all, but will apparently only do so in its genericsense as a gTLD for a registry of food-related second-level domains, the Applicant has yet to develop any
trademark significance in that term and, once it starts using the term as it intends, is highly unlikely in the
Panel’s opinion to ever develop any such significance.
As such and based on the evidence of record, the Panel concludes that the sign FOOD has no significanceas a mark in the relevant sector of the viewing public as a mark of SNI, the Applicant or even a third party.
This factor favors neither party here.
iv. The 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 thatmark, and including whether the applicant has engaged in a pattern of conduct whereby it applied for oroperates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.
As set forth in the New gTLD Application, Donuts, the Applicant’s parent company, intends to provide alarge-scale TLD registry composed of a separate registrar for each new TLD, of the 307 for which it hasapplied, that it eventually obtains and places into operation. By doing so, Donuts intends to make available
second-level domain-gTLD name pairs for registration and use that otherwise would not be economically
viable and obtainable in the namespace, thus, in its view, expanding competition and, particularly for those
who seek a specific Internet identity, consumer choice and expression. See paragraphs 18(a) and 23 (firstparagraph of answer text), New gTLD Application. Donuts stated that, for each applied-for gTLD, it
intentionally selected a common dictionary word as the gTLD string, that would be used in accordance with
its well-understood dictionary meaning. Paragraph 7, Nevett Declaration. <.food> is one of them.
The Applicant, consistent with its Response, manifested what appears to be a good-faith belief, at the time it
applied for the <.food> gTLD, that inasmuch as it will use this gTLD in accordance with the string’s wellunderstood dictionary meaning, no infringement of any mark would result – whether any of SNI’s FOOD
Marks or those of any other party.
The Panel interprets the phrase “pattern of conduct” in the context of this factor to require that an applicant,in applying for or using multiple TLDs, intentionally selected or additionally used those strings as TLDs which
are each identical or confusingly similar to another’s mark(s) so as to repeatedly intend to cause or havecaused a likelihood of confusion in the minds of Internet users between each successive TLD and acorresponding mark(s) and, there through, thus provide an opportunity for that applicant to exploit theconfusion for its own benefit. Here, the Panel finds the Applicant most likely not only had no such intention
but also acted in a manner entirely inconsistent with one which would.
This factor favors the Applicant.

page 14v. Whether and to what extent the applicant has used, or has made demonstrable preparations to use, thesign corresponding to the gTLD in connection with a bona fide offering of goods or services or a bona fideprovision of information in a way that does not interfere with the legitimate exercise by the objector of its
mark rights.
The Applicant has made a considerable investment in preparing to use the <.food> gTLD in connection witha bona fide offering of goods or services but equally importantly in a manner which it professes will respect
the trademark rights of the Objector SNI and not interfere with its legitimate exercise of those rights.
As discussed above, the Applicant’s parent company, Donuts, has expended approximately USD 57 million
in filing fees alone to acquire 307 gTLDs – far more than any other applicant has done thus far – to form a
massive TLD registry. In addition to that investment, Donuts has indicated it has also invested considerable
sums to obtain ancillary support, including technical, legal and other necessary third-party services, toproperly operate its registry for all its new gTLDs when and if they are issued to Donuts. Paragraph 15,
Nevett Declaration.
As part of that investment, Donuts reports it is instituting additional mechanisms beyond those required by
ICANN to operate any new gTLD to protect third-party rights holders, including SNI, against potential abuse
and misconduct that may arise during customer name registration. These additional mechanisms include:
periodic audit of WhoIs data for accuracy, remediation of inaccurate WhoIs data including takedown where
warranted, implementation of a domain protected marks list for trademark protection, new “claims plus”
product for trademark protection, terms of use that prohibit illegal or abusive activity, limitations on domain
proxy and privacy service, published policies and procedures that define abusive activity, and proper
resourcing for all these measures. Paragraph 11, Nevitt Declaration and Paragraph 18(a), New gTLD
Application.
To fund this entire effort, Donuts has raised more than USD 100 million in funding. The Panel recognizes
the significance of this cumulative investment and the extent of the efforts already undertaken and currently
underway by the Applicant in implementing its registry. There is no question in the Panel’s mind, nor has
SNI raised any, as to the legitimacy of the preparations underway by the Applicant.
SNI’s concerns are principally directed to whether third-party registrations of second-level domains for the
food industry under the Applicant’s applied-for <.food> gTLD will interfere with SNI’s legitimate exercise of its
trademark rights. As discussed in detail below with respect to the last factor, the Panel finds that the
Applicant’s proposed use of the gTLD in serving the entire food industry will not in and of itself interfere with
SNI’s legitimate exercise of its trademark rights in its FOOD Marks in conjunction with those segments of thatindustry, as set forth in its registrations, in which SNI uses its marks. To the extent SNI’s rights arecompromised by any third-party user registration of a second-level domain under the Applicant’s <.food>name registry and insufficient protection is accorded through the Applicant’s rights’ protection mechanisms(both those required by ICANN and those additional mechanisms put in place by the Applicant), SNI canutilize an appropriate post-registration dispute resolution mechanism to seek suitable redress against thatuser. The Panel finds that such potential for abuse in this case has not been demonstrated to have reached
an “impermissible” level, which would have more strongly warranted a finding in favor of the Objector.
This factor also favors the Applicant.
vi. Whether the applicant has marks or other intellectual property rights in the sign corresponding to thegTLD, 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 is consistent with such acquisition or
use.
There is no evidence in the record and the Applicant has made no corresponding claims that it has any
marks or other intellectual property rights in the sign FOOD.
Taken as such, this factor slightly favors the Objector.

page 15vii. Whether and to what extent the applicant has been commonly known by the sign corresponding to thegTLD, and if so, whether any purported or likely use of the gTLD by the applicant is consistent therewith andbona fide.
There is no evidence of record that the Applicant has ever been commonly known by the term “food” and,given the common understood meaning of this term, the Panel has every belief that the Applicant is not soknown.
Taken as such, this factor also slightly favors the Objector.
viii. Whether the applicant’s intended use of the gTLD would create a likelihood of confusion with theobjector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
Federal trademark law in the United States recognizes the public’s unfettered right to use a word inaccordance with whatever commonly understood meaning it then has. Descriptive or generic words, whenused as such, are simply incapable of acquiring any distinctiveness and functioning as trademarks.
The word “food” is an extremely widely-used generic term – which the Applicant cannot and does not
dispute. Its meaning is consistent and well-understood, as reflected in the following illustrative dictionary
definitions:“nutriment in solid form;
something that nourishes, sustains, or supplies;
material consisting essentially of protein, carbohydrate, and fat used in the body of an organism to sustain
growth, repair, and vital processes and to furnish energy; also: such material together with supplementary
substances (as minerals, vitamins, and condiments);”
Merriam-Webster Online Dictionary (accessible at <merriam-webster.com>);“a nourishing substance that is eaten, drunk, or otherwise taken into the body to sustain life, provide energy,
promote growth, etc.;
more or less solid nourishment, as distinguished from liquids;
a particular kind of solid nourishment: a breakfast food, dog food;anything serving for consumption or use”
Dictionary.com (accessible at <dictionary.com>); and“[m]aterial, usually of plant or animal origin, that contains or consists of essential body nutrients, such acarbohydrates, fats, proteins, vitamins, or minerals, and is ingested and assimilated by an organism to
produce energy, stimulate growth and maintain life.
A special kind of nourishment: breakfast food, plant food.
Nourishment eaten in solid form: food and drink.
Something that nourishes or sustains in a way suggestive of physical nourishment.”
The Free Dictionary (accessible at <thefreedictionary,com>).
SNI uses the word “food” in its FOOD Marks both as a single-term mark and as a term in a composite mark,such as FOOD NETWORK. However, this word is used in those marks in connection with, generally
speaking, a service of providing food-related content over network and other broadcast media, and various
products including printed publications containing the same content and various goods, such as specificcooking utensils, accessories and related goods used in connection with the culinary field.
As the word “food” is a generic descriptor of some of the content itself which SNI provides, SNI is unable toclaim any trademark rights in the use of that word to describe the subject matter of that content or, moregenerally, in connection with any aspect of the food industry that falls within the generic ambit of the word.
A long and well-established principle of federal trademark law is that “a generic name is free for use byanyone when applied to the products it signifies ... and can be used in its generic sense notwithstanding its

page 16
registration for other products” and that “genericness is a defense to a trademark infringement action.”
Gilson on Trademarks § 2.02[1] (Matthew Bender 2012). In light of this, one who adopts and uses a genericterm as a mark or as part of a composite mark bears the risk inherent in that attribute: (a) that others will use
the same or similar term in its generic sense to identify their respective companies, goods and/or services,
and also (b) any confusion that might arise out of such use. Although one may own trademark rights in sucha term (such as through so-called arbitrary usage, i.e. use of a generic or descriptive term in a totallydifferent sense), “such rights will not prevent others from using the word ... in good faith in its descriptive
sense, and not as a trademark.” See, e.g., Car-Freshener Corporation v. S.C. Johnson & Son, Inc.,
70 F.3d 267, 269 (2d Cir. 1995). Very little weight is given in the analysis of confusing similarity to genericterms used in their generic sense. See, e.g., Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 491(2d Cir. 1988) (“The long-standing view that the nongeneric components of a mark must be compared in thecontext of the overall composite mark… remains the rule in this Circuit.”) (emphasis added); American
Cyanamid Corp. v. Connaught Laboratories, Inc., 800 F.2d 306, 308 (2d Cir. 1986) (“[A] trademark
infringement finding thus cannot be based on the use of a generic or descriptive term.”).
As discussed previously, the Applicant intends to use its string in accordance with its commonly understooddictionary meaning, i.e. in its generic sense, as a gTLD to provide second-level domain - <.food> name pairavailability throughout the entire food industry. Substantial segments of that industry exist – far more so thanjust the relatively small markets served by SNI and for which its marks are registered – for which use of theterm FOOD in that manner would simply be as a generic modifier or descriptive attribute.
The Panel can easily think of illustrative name pairs where the FOOD portion of the gTLD is generic, e.g.,<vegetable.food>, <fish.food>, <cereal.food>, and <restaurant.food>, which would likely neither interfere with
nor implicate any of the Objector’s FOOD Marks. Undoubtedly, huge numbers of other such name pairs
could similarly be formed. None of these would create a likelihood of confusion with any of SNI’s FOOD
Marks, as to the source, sponsorship, affiliation, or endorsement, of the gTLD.
SNI emphatically asserts that the Applicant’s proposed activity would “irreparably damage the famous FOOD
brand, there is a significant likelihood that such activity would unlawfully trade upon the fame and goodwill of
Objector’s marks. ... Should Respondent operate .FOOD as an open system, consumers will be confused
and misled into believing that second string domains on the top level domain .FOOD are somehow related orconnected to the famous FOOD brand. They will be damaged when they trust content that is not of thesame quality that Objector offers.” (Objection at paragraph 8). SNI has not provided any independent, letalone persuasive, support of the accuracy and certainty of its predictions. As such, these predictions are
just speculative. Further, SNI in having chosen the generic word “food” as its mark and a component of its
composite marks must tolerate the risk of confusion emanating from third-party generic usage of this word
and whatever ensuing damage that use will occasion to its marks and goodwill.
SNI further asserted that “... there are no meaningful registration restrictions in Respondent’s application,
Respondent has not articulated how it will achieve the creation of a trusted environment for cuisine-related
information, products and services” (Objection at paragraph 8). The Panel notes that the Applicant appears
to be implementing such restrictions by incorporating additional rights protection mechanisms, beyond thoserequired by ICANN for use with a new gTLD, to remediate possible registration abuse.
Generic use cannot create any likelihood of confusion as to source, sponsorship, affiliation or endorsement
as words used consistent with their generic meanings are incapable of acquiring any distinctiveness for
trademark purposes. As such, the Applicant is well within its rights to so use <.food> as its gTLD in themanner for which it has applied to do so.
Consistent with federal trademark law, previous LRO decisions have held that the use of a common English
word generically or descriptively weighs against – or entirely precludes – a finding of a likelihood ofconfusion. See, e.g., I-REGISTRY Ltd v. Vipspace Enterprises LLC, WIPO Case No. LRO2013-0014(“Respondent’s intended use of the gTLD will lead to the gTLD being seen first and foremost as a descriptive
term describing the purpose and characteristics of the domain… The Panel does not believe that confusion
with the Objector’s mark is likely.”); Defender Security Company v. Charleston Road Registry Inc.,

page 17
WIPO Case No. LRO2013-0032 (“Respondent’s intended use of the new gTLD <.home> would not create alikelihood of confusion…since Respondent intends to use the sign corresponding to the New gTLD in its
generic sense.”); United States Postal Service v. Charleston Road Registry Inc., WIPO Case
No. LRO2013-0045 (“ ... Objector has not shown a likelihood of confusion between the intended use of the<.mail> string and Objector’s marks. As discussed above, Objector does not have trademark rights in theword ‘mail,’ which retains generic meaning as a term relating to any postal system and any system of email”);
DotMusic Limited v. Charleston Road Registry Inc., WIPO Case No. LRO2013-0058 (One objective of the
Objector has been to obtain precisely the type of competitive advantage (in this case in the application
process for the <.music> gTLD string) that the doctrine of generic names is designed to prevent. However,as the Applicant proposes to use the <.music> gTLD string in a generic sense it is immune from thischallenge.); DotTunes Limited v. Amazon EU S.a.r.l., WIPO Case No. LRO2013-0065 (“Given the genericnature of the sign and the limited use of the Objector’s mark, the Panel finds that there is little or no
likelihood of confusion.”); and, of particular note as the companion case to this one for the <.food> gTLD,
Scripps Networks Interactive, Inc. v. Dot Food, LLC, WIPO Case No. LRO2013-0020 (“Such intended use of
the word would appear to be only for its dictionary meaning and not because of Objector’s trademark rights.
In other words, use of the word ‘food’ as a gTLD in connection with food is a generic usage of the term thatcannot, by itself, create a likelihood of confusion.”).
This factor strongly favors the Applicant.
The Procedure does not instruct a panel to weight each factor in any particular fashion; rather, theProcedure only requires that the panel consider and evaluate these factors in whatever manner it deems
most appropriate under the specific facts at issue. Consequently, under those facts here, the Panel views
this last factor, of all six non-threshold factors, as the most critical and decisive of all these factors, andhence one that is outcome-determinative in this case. In that regard and given the total lack of any evident
intention of the Applicant to create a likelihood of confusion emanating from a word, “food”, that will be usedin its generic sense across an entire industry, this Panel considers it basically impossible to find that use ofthat word as a gTLD by the Applicant would take unfair advantage of any of SNI’s marks, unjustifiably impair
the distinctive character or reputation of any of those marks or, obviously, create an impermissible likelihoodof confusion with any of those marks.
Hence, the Objector has failed to meet its burden under the Procedure.

7. Decision
Pursuant to Article 21(d) of the Procedure and for the foregoing reasons, the Objection is rejected.

[signed]Peter L. Michaelson
Sole Panel Expert
Date: September 11, 2013