ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Defender Security Company v. Merchant Law Group LLP
Case No. LRO2013-0036

1. The Parties
The Objector/Complainant is Defender Security Company of Indianapolis, Indiana, United States of America(“US”), represented by Maginot, Moore & Beck, US (“Objector”).
The Applicant/Respondent is Merchant Law Group LLP of Regina, Saskatchewan, Canada represented byRodenbaugh Law, US (“Respondent”).

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

3. Procedural History
The Legal Rights 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 the review of the Objection
on March 26, 2013 and has determined that the Objection complies with the requirements of the Procedureand the World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the WIPO Rules for New gTLD Dispute Resolution).
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Respondent of the
Objection, and the proceedings commenced on April 17, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center on
May 17, 2013.
The WIPO Center appointed Andrew D. S. Lothian as the Panel in this matter on June 14, 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 with
Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.

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4. Factual Background
The Objector is Defender Security Company, an Indiana corporation. The Objector notes that it wasincorporated in 1998 to market, sell and install residential security systems and has since grown to become
the second largest provider of such systems in the US. The Objector states that it also markets, sells andinstalls residential heating, cooling, ventilation and plumbing products and offers domain name registry andregistrar services through the site “www.dothome.net”. The Objector says that it serves customers from
more than 140 locations across the US and annually makes some 8 billion marketing impressions in print
media together with millions of outbound sales and marketing calls. The Objector states that it benefits frommillions of visitors to its various websites and millions of inbound customer calls to its three call centers.
The Objector is the owner of US Trademark Registration Number 3404246 for the standard character (word)
mark TRUE HOME (“the US Mark”). The US Mark was filed on December 21, 2006 and registered on
April 1, 2008 in international class 42. The registrant and original owner of the US Mark was an individual
named Mr. Carl Simpson. According to the entry for the US Mark on the United States Patent andTrademark Office (“USPTO”) website, Mr. Simpson assigned his entire interest in the US Mark to the
Objector by assignment executed on August 26, 2012 and recorded by the USPTO on August 29, 2012.
The Objector states that it is also the owner of US Trademark Registration 4093921 for the word mark TRUE
BLUE. According to the USPTO website, the said trademark was registered on January 31, 2012 ininternational class 11.
The Objector states that it is also the owner of European Community Trademark Registration Number
010535201 (“the European Mark”) for a figurative mark consisting of a graphic representation of a housewithin a speech bubble which in turn is attached to the stylized word “.HOME”. The European Mark is
however owned by an organization named DotHome Limited of Limassol, Cyprus. An online query made on
the website of the Department of Registrar of Companies and Official Receiver, Cyprus, produced by the
Respondent, specifies that DOTHOME LIMITED, company number HE 303807, was registered on March 28,
2012. The European Mark was filed on December 30, 2011 and registered on June 22, 2012 in internationalclasses 35, 42 and 45. It is currently subject to a pending cancellation application filed by the Respondent
dated May 15, 2013.
The Objector has made further applications for US trademarks which are still pending, namely Serial
Numbers 85588370 and 85588382, both filed on April 3, 2012, for figurative marks containing a design plus
the words TRUE.HOME; Serial Number 85721544, filed on September 5, 2012, for the standard character(word) mark TRUE HOME; and Serial Number 85721554, filed on September 5, 2012, for the standard
character (word) mark TRUE.HOME.
The Respondent is Merchant Law Group LLP, a Canadian limited liability partnership with its principal placeof business in Canada. The Respondent has applied to the Internet Corporation for Assigned Names andNumbers (“ICANN”), in terms of ICANN’s New gTLD Program, for permission to operate the gTLD string<.home>.

5. Parties’ Contentions
A. Objector
The Objector contends that it has standing under the Procedure and that the potential use of the applied-for
gTLD by the Respondent (i) takes unfair advantage of the distinctive character or the reputation of the
Objector’s registered trademarks; (ii) unjustifiably impairs the distinctive character or the reputation of the
Objector’s said marks; and (iii) creates an impermissible likelihood of confusion between the applied-for
gTLD and the Objector’s said marks.

page 3The Objector asserts that its basis for standing under the Procedure is that it is the owner of various
registered trademarks and applications for registered trademarks in respect of the marks TRUE HOME,
TRUE.HOME and .HOME, as noted in the Factual Background section above. With regard to the European
Mark, the Objector states that the owner, DotHome Limited, is a wholly owned subsidiary of the Objector andthat therefore the Objector is authorized to represent the interests of DotHome Limited in the present
proceedings.
The Objector submits that the <.home> gTLD string is identical or similar to the Objector’s trademarks andwould be identified by a consumer with such marks, contending that an assessment of similarity should takeaccount of the overall commercial impression created by the marks in question. The Objector notes that asimilarity in sight, sound, and meaning will often denote a similarity in commercial impression. The Objector
states that the <.home> gTLD is identical to the “primary formative” of the European Mark and that although
the European Mark is a composite mark, the verbal element “.HOME” is dominant in the overall commercial
impression of the mark. The Objector adds that the relevant public looking to reserve, register, maintain or
manage an Internet domain name would focus on the verbal element “.HOME”, which element is identical to
the <.home> gTLD in sight, sound and meaning.
The Objector asserts that the <.home> gTLD shares the “.HOME” formative with the Objector’s US
trademark applications for TRUE.HOME and that the verbal element “.HOME” of such applied-for marks isdominant in the overall commercial impression of the marks and identical to the <.home> gTLD in sight,
sound and meaning. The Objector submits that the Respondent’s application for the <.home> gTLD should
be denied because it will necessarily trade upon the goodwill in the Objector’s marks promoted by the
Objector’s significant marketing efforts; creating a strong likelihood of confusion should the Respondent’s
application for the <.home> gTLD be approved.
The Objector states that its acquisition and use of the trademarks on which it relies for the purposes of thisproceeding occurred in the ordinary course of trade, is a natural extension of its branding strategy and assuch is bona fide and not merely token use. The Objector adds that the said marks continue to be critical toits growth as a leading home goods and services provider and that the Objector markets itself heavily using
all channels of media. The Objector states that the said marks evidence its history of actual and bona fideuse of the “HOME” and “.HOME” formative in association with home and domain name services.
The Objector states that .HOME is its brand for Internet registry and registrar services. The Objector assertsthat since December 2011 it has been a reseller of domains through its wholly owned subsidiary, DotHome
Limited, and has used the European Mark to brand its domain reservation website “www.dothome.net.” The
Objector submits that consumers have grown to identify the .HOME name with the Objector’s domain
reservation services and that the Objector continues to receive unsolicited requests from the general public
to pre-register .HOME domain names. The Objector states that its .HOME brand has at least 20,793
individuals that follow its more than 9,700 “Twitter” account posts under the .HOME trademark with theusername “@dot_home”, and over 2,700 relative “Facebook” followers. The Objector notes that its “Twitter”
and “Facebook” followers include followers in the US, the European Union, and numerous other territories
throughout the world. The Objector states that this demonstrates that consumers associate the Objector’s.HOME marks with the Objector’s services.
The Objector submits that further examples of its bona fide use of the HOME and .HOME marks are found inits use of its TRUE HOME trademark, which was in use by December 21, 2006, and its TRUE.HOME mark(application pending) since April 30, 2012, both in the US. The Objector asserts that it has spent in excessof USD 500,000 for expert brand research and analysis to develop its brand recognition strategies using the.HOME and .TRUE.HOME marks since early 2011 and that such marks are bona fide natural extensions of
the Objector’s branding strategy typified both by its earlier use of its TRUE HOME and TRUE BLUE
trademarks.
The Objector asserts that the Respondent’s use of the <.home> gTLD will relate to registry services and theopen registration of domain names thereunder. The Objector contends that the Respondent’s target for
domain name registrants will include the home services industries and that the relevant sectors for thepage 4<.home> gTLD are domain registry services and home services. The Objector states that it has been a
prominent and well-known entity within the home services industry since 1998 and that its trademarks are allused within the home services and domain name industries. The Objector submits that the recognition of.HOME in the domain registry sector is attested by the number of its “Twitter” and “Facebook” followers,
while in excess of 8 billion pieces of print media and millions of inbound customer calls also attest to the
Objector’s recognition.
The Objector submits that if the Respondent is granted the <.home> gTLD this will allow the Respondent toimpermissibly trade on the Objector’s goodwill in the European Mark. The Objector states that the
Respondent specifically intends to target the <.home> gTLD to the sectors in which the Objector’s marks are
already known. The Objector asserts that there appear to be no applications or registrations for any .HOME
trademarks or similar marks by the Respondent, and that the Objector is not aware of the Respondent
having engaged in any use of, or demonstrable preparations to use a sign corresponding to the <.home>gTLD. The Objector also submits that it is not aware of the Respondent having been commonly known by aname including the <.home> gTLD and is unaware of any circumstances by which the Respondent’s use of
the <.home> gTLD can peacefully co-exist with the Objector’s prior rights.
The Objector asserts that the Respondent’s use of the <.home> gTLD will create a likelihood of confusion
with the Objector’s trademarks as the marks are identical and the services closely related. The Objector
submits that a determination of the likelihood of confusion should involve an examination for similarities inappearance, sound and connotation, together with comparison of the goods or services offered under themarks to identify if they are related or if the activities surrounding their marketing may lead to confusion as toorigin. The Objector contends that actual confusion will result if the Respondent is granted the <.home>gTLD because the European Mark is already recognized in the relevant public sector and that evidence ofactual confusion is also strong proof of a likelihood of confusion. The Objector asserts that the continuing
unsolicited approaches which it receives regarding pre-registration of <.home> domain names strongly
argues that granting the <.home> gTLD to the Respondent would result in actual confusion between theservices offered by the Parties.
The Objector submits that if the Respondent is granted the <.home> gTLD, the Respondent will trade upon
the recognition which the Objector has achieved in the relevant sectors due to all of the Objector’s efforts toestablish its brand since early 2011 through its extensive marketing activities, the results of which areillustrated by the Objector’s “Twitter” and “Facebook” followers. The Objector asserts that its rights will be
impaired and the Respondent unjustly enriched at the Objector’s expense should the Respondent be granted
the <.home> gTLD and that as there is no indication that the Respondent has made any prior use of .HOME
or HOME in the sale of any products or services cancellation of the Respondent’s application for the<.home> gTLD will not harm any rights it may allege therein.
B. Respondent
The Respondent submits that its potential use of the <.home> gTLD neither takes unfair advantage of the
distinctive character or the reputation of the Objector’s registered trademarks, nor unjustifiably impairs suchcharacter or reputation, nor otherwise creates an impermissible likelihood of confusion between the <.home>gTLD and the Objector’s marks.
The Respondent asserts that the Objector is attempting to perpetrate a sham based upon bad-faithtrademark registration efforts, and that the Objection is frivolous and must be dismissed. The Respondent
submits that “plain common sense” is all that is needed to dismiss the Objection. The Respondent statesthat the Objector has provided no proof of any distinctive character to the word “home” as used in the
Objector’s purported trademark filings. The Respondent notes that the Objector admits that its primarybusiness is to sell home security systems and products and submits that in consequence the Objector isunable to provide any proof that the Respondent’s operation of the <.home> gTLD could take unfair
advantage of, or unjustifiably impair, any such distinctive character. The Respondent asserts that the
Objector owns nothing distinctive that can be impaired by the <.home> gTLD.

page 5The Respondent notes that the Objector has provided no evidence that DotHome Limited is a wholly owned
subsidiary of the Objector or that the Objector is entitled to assert any rights based upon the European Mark.
The Respondent submits that there is no evidence to show the Objector’s standing to assert rights in thesaid trademark and notes the grounds of the Respondent’s petition to cancel it, namely that the logomark as
a whole and particularly the “.home” word portion of the logomark, is generic or merely descriptive, and thus
incapable of functioning as a trademark for the services described; that the application is void ab initio as it
was filed by a non-existent entity, DotHome Limited having been incorporated in March 2012, some threemonths after the filing of the European Mark; and that the application to register the trademark was filed inbad faith, solely in an effort to provide advantage in the new gTLD process.
The Respondent submits that the word “home” cannot function as a trademark for goods and services
related to any dictionary definition of the word, such as the vast majority of the services listed in theEuropean Mark. The Respondent submits that it is the essence of trademark law that all competitors offering
similar goods or services must also be able to use the word to describe their products and accordingly the
Objector cannot have exclusive rights in the word “home”, by itself. The Respondent contends that this isparticularly true for the service of offering domain name registrations in that “.home” is the sole generic term
used to describe such services and US law, by which the Objector is bound, prohibits exclusive rights insuch terms for such services. The Respondent quotes the US Patent & Trademark Office Trademark
Manual of Examination Procedure section 1215.02(d), which states that registration should be refused if amark is composed solely of a TLD for domain name registration services on the ground that the TLD would
not be perceived as a mark. The Respondent asserts that this rule follows precedent of the US Federal
Circuit Court of Appeals and of the Trademark Trial & Appeal Board holding that TLD strings have no
trademark significance because a TLD does not indicate the source of services but instead the type ofservices. The Respondent submits that the Objector as a US company is subject to the various authorities
which it cites and that this explains why it has not sought registration of any .HOME trademark in the US.
The Respondent submits that even if the European Mark were valid, it is insufficient to support the broadrights claimed by the Objector. The Respondent states that figurative mark claims involving an otherwise
generic word do not give rights in that generic word. The Respondent asserts that the Objector shows norelation to the registrant of the European Mark and that the European Mark is subject to cancellation for lackof distinctiveness and bad faith. The Respondent concludes that there is no basis by which the Objector
should benefit from the European Mark and submits that it should be entirely disregarded by the Panel.
The Respondent contends that the Objector cannot be allowed to claim exclusive rights in the word “home”
by virtue of the US Mark. The Respondent submits that the US Mark is for a narrow description of services,namely environmental/HVAC services, and that the Objector does not attempt to explain how such rights
might be offended by the Respondent’s use of the <.home> gTLD. The Respondent states that it does notoffer environmental/HVAC services and that it does not intend to do so. The Respondent notes that it
intends to offer domain name registration services as set forth in its gTLD application and that the Objector
provides no proof that any such services are related to environmental/HVAC services. The Respondent
submits that there can be no infringement even if the marks were identical. The Respondent takes issue
with the Objector’s assertion that the word HOME is dominant in the US Mark and submits that the generalrule is that the first element of a composite mark is usually considered the dominant portion. The
Respondent submits that this is particularly true whereas in the US Mark the second element is descriptive of
the associated services, and the first element is suggestive or arbitrary. The Respondent notes that the
specimen of use provided to the trademark registry in 2007 in respect of the US Mark, consisting solely of acopy of a business card, shows the words TRUE and HOME in equal prominence.
The Respondent states that the Objector has attempted to mislead the Panel regarding the TRUE.HOME
logomark registrations by providing partial records from the relevant trademark registry and that the complete
records indicate that the word HOME is disclaimed, such that the Objector cannot claim any exclusive rights
therein. The Respondent notes that the specimen submitted in support of the registration, shows “home”
used descriptively within the phrase “true home security”. The Respondent adds that there are 9,328 live
trademark records and pending trademark applications in the US alone of marks that include the word“home”. The Respondent states that 3,745 of the said marks and applications contain a disclaimer of thepage 6
word from the mark and that many more of the pending marks will require to enter such a disclaimer during
the registration process, while the marks also include 543 Supplemental Register records, which the
Respondent states further indicates the descriptiveness of “home” across a broad array of goods andservices.
The Respondent produces dictionary definitions of the word “home” and states that this word has many
popular meanings as it is a fundamental aspect of life for all humans and is the subject of 21 billion results on
the Google search engine. The Respondent notes that a Google search for “true home” produces 4.5 billion
search results, with no indication of the Objector on the first page. The Respondent submits that many US
courts and the US Trademark Trial and Appeal Board have found that “home” formative marks are too
common and descriptive to be afforded protection, citing examples of HOME ENTERTAINMENT,ISLANDHOME.INFO, FARM & HOME, LOG CABIN HOMES, HOME-MARKET.COM and HOME TOWNBANK.
The Respondent submits that the website at “www.dothome.net” only markets domain name registration
services and notes that the applicable domain name was only registered on December 29, 2011. The
Respondent asserts that the Objector appears to have no connection to the said website. The Respondent
notes that the WhoIs of the associated domain name utilizes a proxy service, such that no registrant isdisclosed. The Respondent states that it appears the domain name and website have no relationship to the
Objector in that the nameservers refer to a third party named Roussos Group; the terms of service publishedthereon state that the said site is owned and operated by “MUSIC -Music.us -CGR, an AZ individual”; andthe published privacy policy contains an “About Us” link showing a particular email address and a Cyprus
physical address. The Respondent adds that the domain name associated with the email address is owned
by a private individual at that same Cyprus address, which is the address listed as the address for DotHome
Limited.
The Respondent states that even if the Objector had established a connection to the European Mark, it
would not have such substantial trademark rights which could preclude anyone else from operating the<.home> gTLD. The Respondent states that the Objector has provided no evidence to prove that its marks
have achieved any goodwill in the marketplace or that any marketing efforts of the Objector have related tothe purported “.home” formative marks. The Respondent indicates that it is unable to assess the Objector’sargument without such evidence and notes by way of example that the specimens of use submitted to theapplicable trademark registry do not indicate any use of the marks on websites.
The Respondent submits that the <.home> gTLD has always been a popular generic private TLD and that
ICANN reports state that it is the most frequently observed invalid TLD from observed root name servers
between 2006 and 2009. The Respondent also notes that other parties have invested significant resourcesin applications to operate the <.home> gTLD.
With regard to the question of the Respondent’s intent in applying for the gTLD, the Respondent avers that it
had no knowledge of the Objector’s purported trademark rights at the time of the application and notes that
the European Mark did not issue until after the TLD application window had closed, in June 2012. The
Respondent states that the Objector, as itself an applicant for the <.home> gTLD, was presumed to know
about the ICANN reports regarding the popularity of private <.home> domains. The Respondent states that
the Objector made its most potentially pertinent trademark filing in December 2011 in Europe, immediately
before the TLD application window opened, and in April 2012, when the application window was about toclose. The Respondent submits that such timing of indicates bad faith on the part of the Objector, which wasseeking to gain an advantage in the new gTLD process.

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6. Discussion and Findings
A. Preliminary issue: Suspension or Termination
The Respondent has disclosed that there is an active trademark cancellation proceeding between the
Respondent and the owner of the European Mark. Paragraph 13(b) of the WIPO Rules for New gTLD
Dispute Resolution provides that in the event of any legal proceedings initiated prior to or during aproceeding conducted under the Procedure, the Panel shall have the discretion to decide whether tosuspend or terminate such proceeding under the Procedure, or to proceed to an Expert Determination.
Paragraph 13(b) borrows its wording in large part from paragraph 18 of the Rules for Uniform Domain Name
Dispute Resolution Policy (“UDRP Rules”), including to the extent that the respective paragraphs are bothheaded “Effect of Court Proceedings”. It seems appropriate to the Panel therefore to approach the questionof suspension or termination along similar lines to those of panels under the UDRP. The panel inMetropolitan Life Insurance Company v. HLP General Partners Inc., WIPO Case No. D2005-1323, noted thatthe text of paragraph 18 of the UDRP Rules refers more broadly to “legal proceedings” notwithstanding theheading “Effect of Court Proceedings”. As such, the panel considered that trademark opposition
proceedings could be reviewed in the context of that rule. Following this approach in the present case, thePanel is content to treat the cancellation proceeding as “legal proceedings” within the meaning of paragraph13(b) of the WIPO Rules for New gTLD Dispute Resolution and to consider whether a suspension or
termination is appropriate.
The Panel notes that neither of the Parties has requested suspension or termination of the proceeding.
Furthermore, the cancellation proceedings relate only to the European Mark, which, while it is cited by the
Objector in the Legal Rights Objection, does not constitute the exclusive right upon which it relies.
Accordingly, while a decision to cancel the said trademark might restrict the extent of the rights claimed by
the Objector, it would neither leave the Objector without a right upon which to rely for present purposes, norwould it mean that the Objector would cease to have standing in the present proceeding. In short, thecancellation proceedings would not be determinative of the present proceeding. The Panel further notes thatthe record discloses that the owner of the European Mark is not the Objector. As such, arguably, the legal
proceedings are not between the Parties to this case.
In all of these circumstances, the Panel has reached the view that it does not consider it appropriate toexercise its discretion to suspend or terminate the present proceeding. That said, this Expert Determination
should not be regarded by either of the Parties as having any influence or bearing on the trademark
cancellation proceedings themselves.
B. Preliminary issue: Standing
To have standing to file a Legal Rights Objection, the Objector must be a “rightsholder” in terms of Section
3.2 of Module 3 to the gTLD Applicant Guidebook (Version 2012-06-04) “the Guidebook”. The wording ofSection 3.2.2.2 of the Guidebook makes it clear that a “rightsholder” is an entity claiming to have existing
legal rights which are infringed by the applied-for gTLD (which may include either registered or unregisteredtrademarks) the source and documentation of which must be included in the filing. In the present case, theObjector claims rights in a variety of registered trademarks and trademark applications and has provided
appropriate information as to source and documentation with the exception of the TRUE BLUE trademark in
respect of which it presumably does not claim standing.
First, on this topic, the Panel must deal with the Respondent’s challenges to the Objector’s standing in thepresent proceedings as derived through the European Mark. The Respondent notes that the Objector does
not appear to be the owner thereof. The Respondent also challenges the Objector’s entitlement to represent
the named owner, DotHome Limited, in the present proceedings. The Respondent furthermore questions
whether DotHome Limited itself is entitled to hold the European Mark, given that this entity does not appear
to have been incorporated as at the date when the mark was filed. For its part, the Objector’s position is that
it is entitled to cite and rely upon the European Mark for the purposes of a Legal Rights Objection on thepage 8basis that DotHome Limited is a wholly owned subsidiary of the Objector and that the Objector is authorized
to represent its interests in the present proceedings.
It is clear to the Panel that the essence of standing in respect of a Legal Rights Objection, as set out within
the wording of the Guidebook, is that an objector must own the rights in respect of which it claims to be a“rightsholder”. Section 3.5.2 of the Guidebook refers consistently to “the objector’s registered or
unregistered trademark or service mark” [Panel’s emphasis] in describing the relevant rights. There are noprovisions in the Guidebook which contemplate an objector bringing a Legal Rights Objection on behalf of,jointly with, or as authorized by a third party, whether such third party may be wholly owned by such objector
or not. In any event, the Objector in the present case has singularly failed to provide any evidence of its links
to the owner of the mark concerned, nor has the Objector demonstrated any alternative rights in the marksuch as, for example, an exclusive licence. Accordingly, the Panel finds that the Objector does not havestanding in respect of the European Mark. Nevertheless, while the Objector may not rely upon the rights inthe European Mark for the purposes of the Objection, the Panel considers that it is appropriate, particularlyon the question of the bona fide acquisition of rights, to consider further the nature and effect of theEuropean Mark in the discussion on the merits below. Based upon that discussion, the Objector may
perhaps take comfort from the fact that even if the Panel had treated the European Mark as “the objector’sregistered trademark” for the purpose of Section 3.5.2 of the Guidebook, this would not have affected theoutcome of the case.
Turning to those trademark applications cited by the Objector which had not yet proceeded to grant at thedate of filing of the Objection, including those marks which had been allowed but not yet registered, thePanel considers that in the context of registered rights these could not on any sensible view be described as“the existing legal rights” of the objector [Panel’s emphasis] as required by Sections 3.2.1 and 3.2.2.2 of the
Guidebook. That said, the Guidebook accommodates both registered and unregistered trademarks, andaccordingly the Panel is also competent to review the Objector’s trademark applications in the latter context.
However, as the Objector has failed to provide any evidence demonstrating that the marks contained in theapplications have achieved any goodwill in the marketplace, such applications cannot be regarded as
unregistered trademarks as contemplated by the Guidebook. In these circumstances, the Panel finds that
the Objector does not have standing in respect of its cited trademark applications. It is therefore
unnecessary for present purposes to address the Respondent’s contention that the TRUE.HOME logomark
applications contain a disclaimer of the exclusive right to use “HOME” apart from the mark as shown,
although the Panel will return to that matter on the question of bona fide acquisition of rights below.
With regard to the US Mark, the Panel has had the benefit of reviewing the Expert Determination in Defender
Security Company v. Charleston Road Registry Inc., WIPO Case No. LRO2013-0032, a Legal Rights
Objection case involving the same objector claiming the same rights as in the present case and in which thelearned panel found that the objector did not have standing based upon the US Mark. The learned panel
relied upon the fact that under US law, a trademark cannot be assigned apart from the goodwill that is
associated with it. The learned panel noted that the objector had obtained the US mark by assignment
however also determined that the objector had not demonstrated that any goodwill, products or services
associated with the mark were transferred along with it. Consequently, the learned panel decided that theobjector had failed to establish that it was a rightsholder and thus that the objector did not have standing inrespect of that mark.
In the present case, the Panel takes a somewhat less restrictive approach on the question of the Objector’s
standing based upon the US Mark. The Panel is presented with a US registered trademark on the USPTO
Principal Register which is ex facie valid and for which the Objector is the named owner, albeit an owner byassignment. The Panel does not consider that it should treat such an ex facie valid mark as itself invalid
and/or incapable of conferring standing upon the Objector simply because it is unaccompanied by evidence
that the assignment or transfer included a transfer of the goodwill associated with the mark. Rather, thepresent Panel’s view is that such an assigned mark should be treated as competent for the purposes ofstanding unless evidence has been presented, for example by the other party to the proceedings, casting
doubt on the validity of the assignment. No such challenge has been raised by the Respondent in thepresent case, nor did either of the Parties discuss the terms of the assignment in their pleadings. In thesepage 9circumstances, the Panel finds that the Objector has standing in respect of the US Mark.
C. General
In order to succeed in a Legal Rights Objection pursuant to the Procedure, the Objector bears the burden of
proof to demonstrate that the potential use of the applied-for gTLD by the Respondent (i) takes unfair
advantage of the distinctive character or the reputation of the Objector’s registered or unregisteredtrademark 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 appliedfor gTLD and the Objector’s mark.
Section 3.5.2 of the Guidebook sets out eight non-exclusive factors to be considered by the Panel. The
Panel will review each of these in turn.
(i). Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the Objector’s existing mark.
The applied-for gTLD is <.home>. This is not identical to the US Mark, but is it similar, in appearance,phonetic sound, or meaning? The Panel considers that the leading “dot” is of no particular significance,
being required in a top level domain for technical reasons only, and accordingly the remaining portion of thegTLD represents the word “home”. As the Respondent notes, and as the dictionary extract which it produces
demonstrates, this word has a vast array of popular meanings. Of these, the domestic connotation isperhaps strongest, and, as the Respondent states, this is one of the fundamental aspects of humanexistence. A second and similarly strong meaning of “home” is as the place where something is native, mostcommon or has its origin, such as in the phrase “Nashville is the home of country music”. The word is, in the
Panel’s opinion, a ubiquitous, generic and non-distinctive term. The Objector argues that the US Mark issimilar to the <.home> gTLD because of the overall commercial impression created by the mark together
with the fact that the HOME element is dominant. The Respondent denies the dominance of the HOME
element and argues that usually the first element of a composite mark is considered to be dominant and that
this is particularly true of the present mark which consists of a first element that is suggestive or arbitrary anda second element that is descriptive of the associated services.
The Panel notes that the US Mark consists of two words in common usage, TRUE and HOME. Taking the
US Mark as a whole, the Panel considers that the presence of both elements, neither of which is particularly
dominant, demonstrates that the mark is intended from a conceptual point of view to be taken as a phrase,and should not necessarily be treated as two individual elements for the purposes of comparison with the<.home> gTLD simply because it suits the Objector's case to do so. That said, the Panel does accept thatthe second element is similar to the <.home> gTLD in appearance and phonetic sound, merely missing the“dot”, such that the Panel may find similarity in that respect alone. This similarity, while it is undoubtedly
present, is not particularly strong given that it requires the severance of the word HOME from the phrase in
the trademark. Furthermore, the Panel does not consider that the Objector has established that there isnecessarily any similarity in meaning between TRUE HOME and the <.home> gTLD. Nevertheless, thePanel finds it established that the US Mark is similar in appearance to the <.home> gTLD.
Turning to the European Mark, which is considered for completeness notwithstanding the Panel’s finding
above on the Objector’s standing in respect of this mark, the Panel reminds itself that the mark is figurative
and therefore consists of a logo within which the word .HOME is depicted. The difficulty with comparing such
figurative marks to a domain name or, in this case, to the <.home> gTLD, is that the latter is an exclusively
textual creature whereas the former by its nature contains graphical elements. This inevitably presents a
problem for the comparison exercise in that one is not comparing like with like. In the UDRP, which also
requires a comparison between a trademark and a domain name to determine identity or confusing similarity,
the approach that has generally been taken is to compare only alphanumeric components of a figurative
mark with the domain name in question; see paragraph 1.11 of the WIPO Overview of WIPO Panel Views
on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). If a comparison is made on this basis
in the present case, the alphanumeric component of the trademark .HOME could be regarded as identical topage 10the <.home> gTLD in appearance, and phonetic sound. When the meaning of the mark is factored into thecomparison, the Panel finds that the word .HOME in the mark is purely descriptive, given that it does notconvey any meaning other than the descriptive one, and accordingly it must be considered to be similar inmeaning to the <.home> gTLD, which is itself generic or descriptive. In all of these circumstances, the Panelfinds that the <.home> gTLD is similar to the European Mark.
(ii). Whether the Objector’s acquisition and use of rights in the mark has been bona fide.
While the US Mark was filed in December 2006, well before the recent new gTLD application window hadcommenced, the Panel identified from the print from the USPTO website produced by the Objector that the
US Mark was the subject of an assignment. Neither of the Parties had discussed this in their pleadings. The
date of the assignment was not recorded on the Objector’s print and the Panel considered that it was
sufficiently material to the present issue that it was appropriate for the Panel to review the assignment historyof the US Mark on the USPTO’s website. The site states that the assignment of the US Mark to the Objector
was executed on August 26, 2012 and was recorded on August 29, 2012. To place this into context, theapplication window for the present round of new gTLD applications opened on January 12, 2012 and closed
on May 30, 2012. Accordingly, the timing of the assignment provides an indication that the Objector may
have set out to acquire rights in the US Mark in the context of the new gTLD process. The consequences ofthis are discussed below.
Turning to the European Mark, the Respondent makes a case that the Objector has concocted trademark
rights therein with bad-faith intent. In support of that submission, the Respondent relies upon the fact that
the European Mark was filed on December 30, 2011, in other words shortly before the new gTLD application
window opened. The Respondent also questions the timing of the two pending US trademark applications
which were filed in April 2012 when the said application window was about to close. The Objector’s positionis that the European Mark was acquired in the ordinary course of trade, was a natural extension of its
branding strategy and as such is bona fide and not merely token use.
The timing of the Objector’s alleged subsidiary’s application for the European Mark and the purpose forwhich it has allegedly been used also point in the direction of a link with the New gTLD Program. The
Objector does not in fact deny that the European Mark has as its object services related to the operation of a<.home> registry and indeed, the use classes of the European Mark appear to contemplate this directly,
given that the associated services include “domain name registry services, namely co-ordinating theassignment of domain names and address space” in international class 45. The manner in which theEuropean Mark has apparently been used, as demonstrated by the screenshot of the website at“www.dothome.net” produced by the Respondent, is somewhat curious. The screenshot shows that preregistration enquiries for “the new web address for homes” are invited by the operator of the said site, to besent to a particular email address, and that existing generic and some country code top level domains arebeing offered for registration. The WhoIs output for the <dothome.net> domain name as produced by the
Respondent shows that it was created on December 29, 2011 and lists the registrant as a so-called “proxy”
or “privacy service”. The copyright statement on the site says “© 2009-2012 dotHOME (.HOME) Generic
Top-Level Domain Name (gTLD) Extension Web Address - dot.HOME TLD”.
The Respondent describes the Objector’s actings in claiming rights in and use of the European Mark as “asham based upon bad faith trademark registration efforts” and “shameless scheming”. The Panel howevermust consider the Objector’s acquisition of rights on a less impassioned basis. The Panel has therefore
reviewed the materials provided by the Respondent, many of which are the only evidence of actual use of
the rights relied upon by the Objector, to identify whether these inform the background to the acquisition of
those rights. The Panel notes several circumstances in the present case, aside from the timing issue noted
above, which are particularly suggestive of a rather hastily concocted plan on the part of the Objector toacquire new gTLD-related rights around the period of the application window. The Panel considers it more
likely than not that this plan exclusively entailed improving the Objector’s position, or that of its alleged
subsidiary, vis-à-vis other applicants for the <.home> gTLD, rather than for any bona fide business purpose.

page 11For example, there is the fact that the Objector’s alleged subsidiary does not even appear to have been
incorporated as at the filing date of the European Mark or the registration date of the <dothome.net> domainname. Alternatively, there is the fact, identified by the Respondent, that the “www.dothome.net” website’s
Universal Terms of Service Agreement neither mention the Objector nor its alleged subsidiary and instead
state that the associated domain name registrar is “.MUSIC - Music.us - CGR, an AZ individual”. There isalso the fact that the registrant of the <dothome.net> domain name is hidden behind a “privacy” or “proxyservice” on the WhoIs, a perfectly legitimate exercise in itself but in the present case leading to further doubt
as to who or what is really behind the said website. Finally, with regard to the US Mark, there is the fact that
the Objector, perhaps too conveniently, chooses to overlook its somewhat recent assignment and provides
absolutely no detail as to the background to this or as to the relative business in which it is engaged.
A reasonable inference made on the basis of the timing and/or other circumstances suggesting that rights
might have been acquired on something other than a bona fide basis could have been easily andunequivocally addressed and disposed of by the Objector. A wide variety of possible evidence might havebeen presented, such as for example information detailing the background to the assignment; the founding
and/or purchase of the Objector’s alleged subsidiary; and moreover the nature of the Objector’s use of theacquired rights. The Objector however provides the Panel with nothing beyond the details of its registeredtrademarks and a series of limited assertions. Accordingly, the distinct lack of evidence of the circumstances
surrounding the Objector’s alleged acquisition or use of the rights concerned in the European Mark, or via
the assignment of the US Mark, is somewhat suspicious to say the least.
What the Objector’s pleadings do show is that it believes that its trademark portfolio alone is capable ofevidencing the fact that it “has a history of actual and bona fide use of the… ‘.HOME’ formative…”. This is asomewhat circular argument given that the Panel is being called upon to consider whether the acquisition of
those trademarks is itself bona fide. The Objector has not demonstrated to the Panel’s satisfaction a clear
link in its submissions or evidence to the business operating the “www.dothome.net” website and/or the
alleged owner of the European Mark. The Objector has not indicated the extent of the associated customer
base or number of domains under management. The Objector has not provided any financial information for
its businesses whatsoever. The Objector’s averments relating to its “Twitter” and “Facebook” activities, bareas they are and lacking any evidence of what is allegedly being followed or by whom, do not assist the Panelin its assessment. In short, there is nothing before the Panel which would indicate that the rights cited by the
Objector are backed by a genuine bona fide commercial endeavor.
The Panel also feels compelled to note on this topic that the Objector’s reliance upon trademark applications
which have not yet proceeded to grant along with its failure to specifically identify and address in its
pleadings the key fact that several of these applications contain express disclaimers of exclusive rights in
respect of the word “HOME” does not fill the Panel with much confidence as to the Objector’s bona fides inconnection with the acquisition and use of rights cited in the Objection.
In the absence of suitable evidence explaining the Objector’s acquisition of the rights concerned, the Panel is
at a loss to understand how the European Mark and the US Mark can be said to be “a natural extension” of
the Objector’s branding strategy as the Objector claims. Fundamentally, the Objector fails to explain why it,
as an Indiana, US corporation whose business seems to be focused upon serving customers in the US
suddenly and urgently decided to base an alleged subsidiary’s domain name registry and registrar business
in Cyprus and in that context apply for the European Mark. The Panel is left with the distinct impression thatin making the unsupported claim that its use of the US Mark and the European Mark is “not merely tokenuse”, the Objector is perhaps protesting too much.
In all of the above circumstances, the Panel considers that the Objector has failed to prove on the balance of
probabilities that its acquisition and/or use of rights upon which it relies has been bona fide.

page 12(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 Respondent or of a third party.
The Panel considers that the sign corresponding to the <.home> gTLD is not recognized by the relevant
sector of the public as the mark of either party. The <.home> gTLD consists of the word “home” preceded bya dot. “Home” is a non-distinctive and generic word which has a wide variety of connotations for the public.
In terms of domain name registration or registry services in particular, the Panel considers that a “home” is a
descriptive concept denoting an online location which the public can obtain through the registration of adomain name. It is possible for a secondary meaning to be established in a descriptive term, however the
Panel does not find that either of the Parties has established such a secondary meaning in the sign
corresponding to the gTLD, nor is there any evidence before the Panel of a third party having done so. In
particular, the Panel considers that the relevant sector of the public will not recognize the <.home> gTLD as,
or identify it with, the Objector’s US Mark. The Panel does not require to consider the question of theEuropean Mark claimed by the Objector as the Objector has failed to prove to the Panel’s satisfaction that it
has rights therein.
(iv). The Respondent’s intent in applying for the gTLD, including whether the Respondent, at the timeof 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 Respondent has engaged in a pattern ofconduct whereby it applied for or operates TLDs or registrations in TLDs which are identical or
confusingly similar to the marks of others.
The Respondent submits a formal declaration made by its managing director stating that the Respondent
had no knowledge of the Objector’s purported trademark rights at the time the Respondent filed its
application in respect of the <.home> gTLD. This of course is what the Panel would expect the Respondent
to say but the Panel must look wider than the declaration in order to address this topic fully.
The first question for the Panel is whether there are any facts or circumstances present which indicate that
the Respondent had knowledge of the Objector’s mark when it filed the application for the <.home> gTLD.
The Panel considers that the most appropriate way to deal with this is to consider the statements made to
ICANN by the Respondent in its said application, an extract of which has been produced by the Respondent.
The Respondent’s stated goal, and thus its apparent intent in applying for the <.home> gTLD is “to provide a
distinct online presence for all individuals, families, groups, businesses, organizations, and entities toestablish personal websites, commercial websites, or any other website or information resource intended for
the World Wide Web”. The Panel finds nothing in this statement, or in the portions of the application
produced by the Respondent, which indicates knowledge of the Objector’s marks and/or intent to target
these. This is not entirely surprising to the Panel given that the Respondent’s position is that its intended
use for the <.home> gTLD correlates with the generic meaning of the word “home”.
While the Objector states that the Respondent specifically intends to target the <.home> gTLD to therelevant sectors in which the Objector’s marks are already known, the Panel does not find this to be borneout by the evidence in this case. On the contrary, the Respondent clearly and demonstrably sees theexpression “home” as having a wide range of meanings and connotations and the wording of its applicationshows that it does not intend the <.home> gTLD to be targeted to any specific sector. Furthermore, theRespondent points out, reasonably in the Panel’s view, that the European Mark did not issue until June
2012, after the gTLD application window had closed and as such the Panel finds that the Respondent isextremely unlikely to have had knowledge of it.
Secondly on this topic, the Panel must consider whether the Respondent could not have reasonably been
unaware of the Objector’s marks. The issue date of the European Mark also applies to this question on thesame basis as discussed earlier. With regard to the US Mark, however, it is notable that the Objector does
not provide the Panel with any information as to why the Respondent, a Canadian limited liability partnership,
might be expected to have had knowledge of this. While the Objector states that it has extensive businessinterests in the US relative to the US Mark, it does not say that it has any such interests in Canada and does
not provide any evidence showing or tending to show that the Respondent could not reasonably have been

page 13
unaware of it or the US Mark. For its part, the Respondent simply relies upon its denial of knowledge, which
it is entitled to do. In any event, the date of the assignment of the US Mark demonstrates conclusively that
the Respondent could not have been aware of the US Mark as the mark of the Objector at the time of the
Respondent’s application for the new gTLD as the Objector did not own the mark at that date.
Thirdly, no evidence has been presented by the Objector that indicates that the Respondent has engaged inany pattern of conduct whereby it has applied for or operates TLDs or registrations in TLDs which are
identical or confusingly similar to the marks of others.
In all of these circumstances, the Panel finds on the balance of probabilities that the Respondent did nothave knowledge of, and could reasonably have been unaware of, the Objector’s marks at the time of
application for the <.home> gTLD. The Panel also finds there to be no indication on the record before it that
the Respondent had any intent to target the Objector’s rights or any third party rights in applying for the<.home> gTLD.
(v). Whether and to what extent the Respondent has used, or has made demonstrable preparations touse, 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.
There is no evidence before the Panel that the Respondent has used the sign corresponding to the gTLD
other than in the course of its application to ICANN. As with all such applicants, however, the Respondent’s
preparations to use the sign are detailed in the extract from the application to ICANN, which the Respondent
has produced. The Respondent notes that it proposes to use the sign in connection with the provision of
domain name registry and registrar services, such services to be open to all who wish to register a domainname with the <.home> TLD. The Panel notes that it is to be expected that such preparations as the
Respondent has made will be limited pending the evaluation of its application. Nevertheless, the question
for the Panel on this topic is whether such use does or does not interfere with the legitimate exercise by the
Objector of its mark rights.
What is the extent of the Objector’s mark rights as far as the proposed gTLD <.home> is concerned? The
Respondent’s position is that the Objector has no relevant rights which could prevent a widely used wordsuch as <.home> from becoming a generic TLD. The Panel agrees in light of its earlier analysis of the marks
cited by the Objector. In particular, the Objector has failed to demonstrate to the Panel’s satisfaction that it
has rights in the European Mark, and has also failed to demonstrate that the US Mark for TRUE HOME
provides it with rights over the HOME element for present purposes. It is a corollary of such failures that the
Respondent’s proposed use of the <.home> gTLD would not interfere with the legitimate exercise of the
Objector’s marks.
(vi). Whether the Respondent 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 Respondentis consistent with such acquisition or use.
There is no evidence before the Panel that the Respondent has any intellectual property rights in the sign
corresponding to the gTLD and indeed, had it attempted to acquire and cite any such rights in the present
proceedings, this would have run contrary to the Respondent’s own argument that the word “home” cannot
function as a trademark for goods and services related to any dictionary definition of the word. As the Panel
has already found, the concept of a domain name being an online “home” is well understood andappreciated by the public.

page 14(vii). Whether and to what extent the Respondent 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
Respondent is consistent therewith and bona fide.
There is no evidence on the record of this case that the Respondent has been commonly known by the sign
corresponding to the gTLD. The Respondent has not selected the sign because it has been commonly
known by it but rather because it is a generic word which it considers will allow the public to create distinct
online presences. As such, while the Respondent cannot claim to have been commonly known by the sign“.home” there is no evidence before the Panel that the Respondent’s use of such a sign would not be bonafide.
(viii). Whether the Respondent'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.
The Respondent’s position is that it intends to use the <.home> gTLD in the generic sense of the word“home” and it cites the wide variety of different meanings that can be ascribed to this word. The Objector
however argues that there will be a likelihood of confusion, first, based upon a comparison of the Objector’smarks and the <.home> gTLD, and secondly, in light of the alleged recognition of the European Mark in therelevant public sector.
The Panel cannot see any way in which the Respondent’s proposed use of the <.home> gTLD could create
a likelihood of confusion with the Objector’s marks. The Panel has already dealt with the fact that even if theEuropean Mark was registered to the Objector the word “home” is arguably descriptive of the services inrespect of which the mark has been registered and there is no evidence before the Panel of any acquired
secondary meaning. With regard to the US Mark, the issue of confusion is brought into sharper relief if the
Panel asks itself the following question: Can the Panel see any prospect that consumers of the Objector’s
TRUE HOME branded heating, ventilation and plumbing products or services would be confused by the
Respondent’s operation of a <.home> gTLD as to its source, sponsorship, affiliation or endorsement? The
Panel cannot. Would such consumers believe the <.home> gTLD to be in some way connected to the
Objector, if operated by the Respondent in line with its intended use? The Panel considers that suchconsumers would no more make such an assumption than they would think that the use of the word “home”
in a sign indicating a “home for sale” was a reference to the Objector or its mark. In short, the Panelconsiders that such consumers may be regarded as entirely capable of differentiating between the use of
HOME in the trademark sense of TRUE HOME and the generic use of “home” by the Respondent in a<.home> gTLD.
D. Conclusion
The general intent behind the Guidebook and Procedure is to provide the holder of registered or
unregistered trademark rights, which have been acquired and used on a genuine and bona fide basis, with
an opportunity to object to an applied-for gTLD on the ground that such gTLD would infringe those existing
legal rights (Section 3.2.1 of the Guidebook). The Procedure is not intended to provide a facility whereby
existing or prospective applicants for a new gTLD may attempt to gain an advantage over other applicantsfor the same gTLD by way of the deliberate acquisition of trademark rights for no purpose other than to bringa Legal Rights Objection. It has not escaped the Panel’s notice that the evidence before it indicates that thepresent Objection might have been motivated by just such an attempt. Whether or not that indication isaccurate, the manner of the acquisition of the rights concerned together with the Objector’s distinct inability
to provide any case of substance that those rights would be negatively affected by the Respondent’s
intended operation of the applied-for gTLD leads to the failure of the present Objection.

page 15
7. Decision
The Panel finds that the potential use of the applied-for gTLD by the Respondent does not:(i) take unfair advantage of the distinctive character or the reputation of the Objector’s registered or
unregistered trademarks (“marks”), or(ii) unjustifiably impair the distinctive character or the reputation of the Objector’s marks, or(iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s marks.
Accordingly, the Panel rejects the Objection.

[signed]Andrew D. S. LothianSole Panel Expert
Date: July 16, 2013