ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
United States Postal Service v. WhitePages TLD LLC
Case No. LRO2013-0048

1. The Parties
The Objector/Complainant (“Objector”) is United States Postal Service of Washington, D.C., United States ofAmerica (“United States” or “U.S”), represented by Lewis and Roca LLP, United States.
The Applicant/Respondent (“Respondent”) is WhitePages TLD LLC of Seattle, Washington, United States,
represented internally.

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

3. Procedural History
The Legal Rights Objection (“Objection”) was filed by with the WIPO Arbitration and Mediation Center (the“WIPO Center”) on March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure (“theProcedure”).
In accordance with Article 9 of the Procedure, the WIPO Center completed the review of the Objection on
March 26, 2013 and determined that the Objection complies with the requirements of the Procedure and theWorld 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 18, 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 received on April 25, 2013 a proposal from the Objector to consolidate the Objection withthe objections in cases LRO2013-0043 to LRO2013-0048. The Applicant expressed a willingness toconsolidate, however other affected parties expressed opposition to aspects of the Objector’s consolidation
proposal. In accordance with Article 12 of Procedure and Paragraph 7(d) of the WIPO Rules for New gTLD
Dispute Resolution, the WIPO Center did not make a decision to consolidate the referenced LRO Objections

page 2for purposes of Article 12(b) of the Procedure.
The WIPO Center appointed William R. Towns, Maxim H. Waldbaum, and the Honorable Neil Brown Q.C as
the Panel in this matter on June 14, 2013. The Panel finds that it was properly constituted. Each member of
the Panel has submitted the Statement of Acceptance and Declaration 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.
The Objector on May 29, 2013 submitted to the Center an unsolicited Request for Additional Submissions to
Supplement Legal Rights Objection (“Request for Additional Submissions”), seeking to submit survey
evidence directed to the primary meaning of “mail” in the minds of the U.S. public and its association with the
Objector. The Respondent on June 5, 2013 lodged with the Center an objection to the Objector’s Request
for Additional Submission on various grounds. Subsequently, on July 10, 2013, the Objector submitted to
the Center a Request for Hearing, asserting, inter alia, that the case involves novel issues and that the Panelwould benefit from a further explanation of the Parties’ positions. The Respondent has submitted an
objection to such request.

4. Factual Background1

The Objector is the United States Postal Service (“USPS”). The Objector, an independent establishment of
the Executive Branch of the United States Government, is one of the world’s largest mail carrier, delivering
40% of the world’s mail. The Objector and its predecessor have delivered mail to residences andbusinesses in the United States for more than 235 years. Currently this includes 152 million homes,
businesses, and Post Office boxes.
The Objector owns a considerable number of composite trademark registrations in the United States andnumerous other countries comprised in part of the word “mail”. Public documents available on the USPTOTESS database indicate that the Objector is the owner of forty-eight (48) current United States registrations
for composite “mail”-containing trademarks in International Classes 35 and 39 covering mail delivery andother related postal services. These include trademark registrations for U.S. MAIL & Design, U.S. MAIL MR.
ZIP & Design, and UNITED STATES POSTAL SERVICE U.S. MAIL & Design (hereinafter collectively
2
referred to as the “U.S. MAIL” marks). The Objector owns registrations for more than twenty othercomposite marks containing the word “mail”, including: AIR MAIL; BECAUSE THE MAIL MATTERS;BUSINESS REPLY MAIL; CERTIFIED MAIL; CRITICAL MAIL; EVERY DOOR DIRECT MAIL; EXPRESS
MAIL; EXPRESS MAIL INTERNATIONAL; FIRST-CLASS MAIL; FIRST-CLASS MAIL INTERNATIONAL;FRIEND-TO-FRIEND MAIL; GLOBAL EXPRESS MAIL; GLOBAL PRIORITY MAIL; INTELLIGENT MAIL;
MEDIA MAIL; PRIORITY MAIL; PRIORITY MAIL INTERNATIONAL; STANDARD MAIL; TODAY’S MAIL;
and MAIL MOMENT.
Public documents available through the USPTO TESS database reflect that the Objector has disclaimed“the exclusive right to use ‘MAIL’ apart from the mark as shown” in all but eight (8) of the forty-eight (48)
United States registrations referred to above. A “disclaimer” is a statement in the trademark application
1

This factual recitation is based on the parties’ allegations, the documentary evidence submitted by the parties, and the Panel’s

independent review of public documents available through the United States Patent and Trademark Office (“USPTO”) Trademark
Electronic Search System (“TESS”) database, and of the Objector’s website.
2(i) U.S. MAIL & Design, US Reg. No. 1,150,641 (consisting of a figure holding a letter and carrying a small bag bearing words U.S.

MAIL); (ii) U.S. MAIL & Design, US Reg. No. 2,431,839 (consisting of a stylized eagle mounted above the words U.S. MAIL within adouble border); (iii) U.S. MAIL MR. ZIP & Design, US Reg. No. 3,170,355 (identical design for Reg. No. 1,150,641 with addition ofwords MR. ZIP below figure); (iv) U.S. MAIL & Design, US Reg. No. 3,720,179 (consisting of a mounted horse rider carrying bag
bearing words U.S. MAIL within a double border); (v) UNITED STATES POSTAL SERVICE U.S. MAIL & Design, US Reg. No.
4,031,772 (consisting of a stylized eagle mounted above words U.S. MAIL surrounded by a border comprised of UNITED STATESPOSTAL SERVICE and nine five pointed stars).

page 3
record that the applicant does not claim exclusive rights to an unregistrable component of a mark, which
includes wording that is merely descriptive or generic with respect to the claimed goods and services. See
Defender Security Company v. Lifestyle Domain Holdings, Inc., WIPO Case No. LRO2013-0035. The
3
trademarks and pending applications in which such disclaimers have been made include U.S. MAIL ,CERTIFIED MAIL, EXPRESS MAIL, PRIORITY MAIL, CRITICAL MAIL, INTELLIGENT MAIL, STANDARD
MAIL, GLOBAL EXPRESS MAIL, GLOBAL PRIORITY MAIL, and FIRST-CLASS MAIL. The Objector has
not applied for and does not own a trademark registration for MAIL alone.
The Objector submitted definitions of the word “mail” derived from various online dictionaries as an annex to4
the Objection. Dictionary definitions provide an indication of how words are used by the public in everyday
situations. In many instances a word may have multiple meanings, and dictionaries often list each meaning
in order of most common usage. The dictionary definitions proffered by the Objector indicate that “mail” iscommonly used as a noun in reference to letters and packages conveyed by the postal service, in reference
to the postal service, to the delivery of mail, and to email, generally in that order. “Mail” also is used as averb in relation to sending a letter or package through the postal system, or sending email.
The Respondent is a limited liability company organized and existing under the Laws of the State of
Delaware, with its principal place of business in Seattle, Washington, United States of America. The
Respondent’s new gTLD application for the string <.mail> was originally posted on June 13, 2012, under
Application ID: 1-1906-88399. The Respondent states that its mission for the applied-for gTLD is “to createa recognizable, viable, and profitable extension to bring individuals and companies that are passionate about
self-identifying themselves in the mail community.” The Respondent further explains that it is creating theopportunity for Internet users to identify websites that operate in or around mail in a “highly descriptive TLD”,
without needing “to identify to the left of the dot they are working primarily with email (or mail).”
The Respondent indicates its expectation that the gTLD <.mail> extension will be used primarily byorganizations that send and receive email, but given “the expansiveness and diversity of what constitutes
mail” the Respondent will adopt an open registration policy. To address abusive second level registrations,
the Respondent represents that it will fully implement all protection mechanisms developed by ICANN for the5
new gTLDs. The Respondent submits that the applied-for gTLD <.mail> extension, “though broadly definedby the wide spectrum of what constitutes mail, is largely self-explanatory and its content readily apparent toboth potential registrants and end-consumers.”

3

U.S. Reg. No. 4,031,772 issued Sept. 27, 2011; U.S. Ser. No. 85867833 filed on March 5, 2013, and published for opposition on July2, 2013.
4

Objection, Annex 9.

5Fourteen new measures have been developed by ICANN for new gTLDs:
1. Controls to ensure proper access to domain management functions;2. 24⁄7⁄365 abuse point of contact at registry;
3. Procedures for handling complaints of illegal or abusive activity, including remediation and takedown processes;
4. Thick WhoIs;
5. Use of the Trademark Clearinghouse;
6. A Sunrise process;7. A Trademark Claims process;8. Adherence to the Uniform Rapid Suspension system;
9. Adherence to the Uniform Domain Name Dispute Resolution Policy;
10. Adherence to the Post Delegation Dispute Resolution Policy;
11. Detailed security policies and procedures;
12. Strong security controls for access, threat analysis and audit;
13. Implementation DNSSEC; and14. Measures for the prevention of orphan glue records.

page 4
5. Preliminary Issues
A. Objector’s Request for Additional Submissions and Evidence
As noted above, the Objector on May 29, 2013 submitted to the Center a Request for Additional
Submissions, seeking the admission of survey evidence to supplement its Objection, directed to the primarymeaning of “mail” in the minds of the U.S. public and its association with the Objector. The Objector assertsthat the Panel should accept the survey and accompanying report of the Objector’s marketing researchexpert as “rebuttal” evidence with respect the Respondent’s “incorrect assumption” that “‘Mail’…is not asource, but a word to describe a means of communication … not associated exclusively with the Postal
Service.” The Respondent objected to the Request for Additional Submissions on grounds, inter alia, that
the Objector’s survey evidence should have been included with its Objection, and that no good cause,
necessity, or extraordinary circumstances support the Objector’s additional submission in the absence of arequest by the Panel.
The Procedure envisages the submission of an objection and a response, with the possibility of additional
written submissions and additional evidence addressed in Article 17 and 18 of the Procedure, respectively.
No party has a right to insist upon the admission of additional arguments or evidence. See TLDDOT GmbHv. InterNetWire Web-Development GmbH, WIPO Case No. LRO2013-0052. Section 3.4.5 of the gTLD
Applicant Guidebook (v. 2012-06-04) (“Guidebook”) underscores that the process is intended “to achieve thegoal of resolving disputes rapidly and at reasonable cost.” Article 17 of the Procedure provides that thePanel “may decide whether the parties shall submit any written statements in addition to the Objection andResponse.” Article 18 of the Procedure specifically limits the authority of the Panel to require a party tosubmit additional evidence to “exceptional cases”, in order to achieve the goal of resolving disputes over new
gTLDs rapidly and at reasonable cost. In all cases, it is incumbent on the Panel to “ensure that the parties
are treated with equality, and that each party is given a reasonable opportunity to present its position.”
Article 4(e) of the Procedure.
The Panel concurs that no party to a Legal Rights Objection has an unfettered right to insist upon theadmission of additional arguments or evidence. The Panel nonetheless considers it within an expert panel’s
discretion under Article 17 to accept or reject a supplemental submission made by a party, regardlesswhether the panel has specifically requested that submission. See Express, LLC v. Sea Sunset, LLC, WIPO
Case No. LRO2013-0022. In the exercise of such discretion, the expert panel should consider whether theadmission of an unsolicited additional submission sought by a party will unduly or unnecessarily frustrate
ICANN’s clearly stated goal of resolving disputes over new gTLDs rapidly and at reasonable cost. Further,
before accepting an unsolicited additional submission the expert panel ordinarily should consider whether,
after review of the objection and response, each party has been afforded a reasonable opportunity to present
its position. In a situation such as here, where a party’s unsolicited additional submission is primarily
directed to additional evidence, this Panel considers that the moving party bears the burden to meet the“exceptional case” requirement of Article 18. See United States Postal Service v. Amazon EU S.à.r.l, WIPO
Case No. LRO2013-0044.
Applying these concepts, the Panel finds that the Objector has not met the “exceptional case” requirement of
Article 18 respecting the proffered survey evidence. As noted earlier, the Objector’s survey is directed to theprimary meaning of “mail” in the minds of the U.S. public and its association with the Objector. In its
Objection the USPS presented arguments in support of its position, and submitted evidence as to theprimary meaning of the term “mail”, including dictionary definitions. To the extent that the Objector may wish
to rely on the survey as evidence that “mail” has secondary meaning as a distinctive identifier of its services,
the Objector was required to submit the source and documentation of any existing legal rights the Objector
6claims are infringed with the Objection. The Objector had the opportunity at first instance to obtain and
6

As discussed further below, in order to establish standing as a “rightsholder” within the meaning of Section 3.2 of the Guidebook, thesource and documentation of the existing legal rights the Objector is claiming are infringed must be included with the Objector’s filing,i.e., the Objection.

page 5submit with its Objection a survey, if so desired. In view of the foregoing, the Objector’s characterization of
the survey as “rebuttal” evidence is unpersuasive.
In sum, the Panel finds that the Objector has been afforded a reasonable opportunity in this proceeding topresent its position, and to identify the source of and document its existing legal rights. Further, the Panelconcludes that the Objection and Response provide the Panel with sufficient evidence and argument todetermine the nature and source of the Objector’s existing legal rights. See United States Postal Service v.
7
Amazon EU S.à.r.l, supra. In light of the foregoing, the Panel considers that granting the Objector’sRequest for Additional Submissions would unduly and unnecessarily impede the expressed goal of theProcedure to resolve new gTLD disputes rapidly and at a reasonable cost. Accordingly, the Objector’srequest is denied.
B. Objector’s Request for Hearing
Article 19 of the Procedure provides that the Panel may decide, on its own or at the request of a party, tohold a hearing only in “extraordinary circumstances”. Nothing in the record of this case suggests to the
Panel that such extraordinary circumstances are present. The Objector’s averments that the issues in thisproceeding are novel and that the Panel would benefit from conducting a hearing carry little weight with thisPanel. It appears that the primary impetus for the Objector in requesting a hearing was a desire to present
arguments and testimony to explain the meaning of the Objector’s survey. The Panel, even had it accepted
the Objector’s proffered survey evidence, would find nothing extraordinary about the circumstances of thiscase justifying a hearing, which clearly would build significant delay and further cost into this proceeding. As
noted earlier, the Objector had an opportunity to undertake its survey and submit the report of its expert withthe filing of its Objection. The Objector’s Request for Hearing is denied.

6. Parties’ Contentions
A. Objector
The Objector maintains that the string for which the Respondent has applied will take unfair advantage of the
distinctive character and reputation of the Objector’s marks, unjustifiably impair the distinctive character or
reputation of the Objector’s marks, and create an impermissible likelihood of confusion between the appliedfor string and the Objector’s marks. The Objector claims ownership of more than 240 trademark registrations
worldwide for marks that include “mail” together with other terms. The Objector submits that awarding the<.mail> gTLD string to the Respondent would interfere with its rights in each and every one of these marks,
but for sake of brevity the Objection refers primarily to its U.S. MAIL mark. The Objector asserts that theapplied-for gTLD <.mail> string is confusingly similar to the Objector’s U.S. MAIL mark, which the Objector
represents has been used since at least as early as 1819, is a famous mark, and is also part of the USPS’
terofficial seal, which is protected as a state emblem by Article 6 of the Paris Convention.
The Objector argues that “mail” cannot be viewed as a simple common term in the context of the applied-for
gTLD string. The Objector maintains that in this context “mail” will have a source-indicating meaning andthat U.S. consumers will expect the <.mail> gTLD to be controlled by the Objector, as the regulated entityand designated postal operator entrusted to deliver mail in the United States. While the Objector
7

The panel in United States Postal Service v. Amazon EU S.à.r.l, WIPO Case No. LRO2013-0044 determined that there were no

exceptional circumstances to justify the admission of the objector’s survey evidence at issue here. The panel concluded the survey
evidence addressed a matter raised in the original objection. The panel further found that the survey did not directly address theobjector’s legal rights or recognition of its trademarks, but rather concerned an alleged association of the word “mail” with the objector in
the United States. The panel observed: “[i]t does not necessarily follow that the fact that consumers associate ‘mail’ with the Objectormeans that the Objector has any legal rights in the word ‘mail’”. The panel concluded that both parties had an equal opportunity topresent their positions on the association of the objector with “mail” in the United States, and that the objection and response provided
sufficient evidence and argument to identify the nature of the objector’s legal rights.

page 6
acknowledges that the term “mail” has several different meanings in English, the Objector submits that
dictionary definitions demonstrate that the primary meaning of “mail” is hard-copy correspondence delivered
through a postal service, which in the United States is the Objector. This is reinforced, according to the
Objector, by encyclopedia entries for “mail” reflecting the common understanding of the term, and byreferences in one or more state statutes to “mail” as “use of the United States Postal Service for delivery ofletters, packages or other containers.”
The Objector also asserts that the <.mail> gTLD is likely to be seen as source-indicating by comparison to
the sponsored TLDs <.gov>, <.int>, and <.post>. The Objector submits that each of these sponsored TLDs
is known by the public to be regulated and accordingly is afforded a greater level of trust than are generic
TLDs. According to the Objector, given consumer association of “mail” with the Objector, consumers arelikely to view the <.mail> gTLD as controlled by the Objector, especially since mail delivery is an essential
government service. The Objector argues that the risk of confusion will be increased because the <.mail>gTLD is likely to be viewed as the equivalent of the <.post> sponsored TLD sponsored by the Universal
Postal Union (“UPU”), a specialized agency of the United Nations that represents the world’s postal
community. The Objector notes that the United States is a member of the UPU.
The Objector maintains that protection of seemingly common terms such as mail has been internationallyrecognized in certain circumstances, citing to a 2010 ruling of the German Federal Patent Court that “post” issource-indicative to German consumers, who associate it with Deutsche Post. According to the Objector,
the public’s association between the Objector and “mail” is further heightened by the Objector’s ownership oftrademark registrations in more than twenty variations that include the word “mail.”
The Objector argues that the <.mail> gTLD string will create an impermissible likelihood of confusion for U.S.
consumers, and that such confusion will be impermissible because of the severity of harm such confusion
may generate in various forms. First, the Objector submits that the <.mail> gTLD will create impermissible
confusion in the form of a false sense of privacy and security in <.mail> domains and emails. According to
the Objector, U.S. consumers rely on well-known standards of privacy and security for their “mail” because
the USPS, a quasi-governmental entity, is subject to government regulation and its handling of the nation’s
mail is governed by federal statutes and regulations. The Objector maintains that the U.S. public’s trust isreflected in its consistently high rankings in Ponemon Institute’s “20 Most Trusted Companies for Privacy”
surveys. The Objector concludes that awarding the <.mail> gTLD application to the Respondent or any
other private sector applicant is likely to confuse the U.S. public into giving <.mail> domains and emails asimilar level of trust as they afford their “mail.”
Equally concerning to the Objector is the possibility that the Objector’s numerous trademarks that contain“mail” could be reflected in corresponding second level domain names or email addresses. The Objector
asserts these could include <us.mail>, <certified.mail>, <priority.mail>, <express.mail>, to name a few.
According to the Objector, it would have no control over the content of these domains or the quality of any
goods and services offered through them. The Objector asserts that the Respondent intends to use the<.mail> gTLD primarily for email addresses. The Objector warns that unregulated <.mail> email addresses
will be prime tools for fraudulent and criminal activity, citing as an example of such possible email address“info@us.mail”. The Objector argues that consumers are vulnerable to such schemes because they expect
to receive email communications from the USPS, and that the existing gTLD Rights Protection Mechanisms
are completely inadequate to prevent such confusion.
The Objector contends that the Respondent’s purported or intended use of the applied-for gTLD string willinterfere with the Objector’s legitimate exercise of its rights. According to the Objector, the Respondent’s
intended use of the gTLD <.mail> string to create an extension to bring together individuals and companies
that are passionate about self-identifying themselves in the “mail community” will create a false association
between Respondent and the Objector, since the Objector is viewed as the source of “mail,” and the
Respondent is not a member of the “mail community.” According to the Objector, the “mail community”
consists of the Posts authorized by the 192 Member Countries of the Universal Postal Union todeliver the “mail.”page 7The Objector submits that nothing will prevent third parties from registering second level domain names inthat applied-for <.mail> gTLD that directly infringe the Objector’s marks, and email addresses created inconnection with any of these domain names would also directly infringe the Objector’s marks. The Objector
submits the Respondent’s operation of the <.mail> gTLD will open the door to fraud, scamming, phishing,and other false or misleading schemes directed at consumers who will mistakenly believe these infringing
domain names and/or email addresses are associated with the USPS.
The Objector expresses particular concern with the Respondent’s intended use of the applied-for gTLD<.mail> string with the creation of email accounts. The Objector states that the Respondent intends to target
the <.mail> gTLD at email service providers and their customers. Although the Objector maintains that theterm “mail” is primarily used and recognized to refer to hard-copy correspondence rather than email, theObjector acknowledges “[w]ithout question, in the current climate of electronic correspondence, electronic
communications via email are services that are closely related to hard copy correspondence.” The Objector
asserts that such services are a natural area of expansion for the USPS and that the Respondent should beprohibited from trading on the Objector’s reputation built over the course of almost 200 years. The Objector
further submits that email is an integral part of the USPS’ business because it communicates with customers
via email in connection with a variety of its services.
The Objector contends that the applied-for gTLD string, if delegated, is likely to dilute the Objector’s rights in
its U.S. MAIL marks, which the Objector asserts are famous in the United States as household words.
Further, the Objector reiterates its view that domain names and emails associated with the <.mail> gTLD are
more open to fraud and phishing schemes because they are not regulated, and may mistakenly be attributed
to the Objector, resulting in tarnishment of its U.S. MAIL marks.
The Objector represents that to its knowledge the Respondent does not have marks or other intellectual
property rights in the term “mail”, and is not commonly known by “mail” or a name including the word “mail.”
B. Respondent
The Respondent submits that its intended use of the applied-for gTLD <.mail> will not take unfair advantageof the distinctive character and reputation of the Objector’s marks, unjustifiably impair the distinctive
character or reputation of the Objector’s marks, or create an impermissible likelihood of confusion between
the applied-for string and the Objector’s marks. The Respondent maintains that, despite the Objector’s
assertions to the contrary, the public does not associate the term “mail”, when used in the context of theInternet, primarily with the USPS. Accordingly, the Respondent submits that the public is unlikely to expect
the <.mail> gTLD to originate from the Objector.
While the Respondent acknowledges that the term “mail” traditionally refers to “matter physically delivered by
the Postal Service”, the Respondent argues this is only true because for much of its history the Objector was
the primary means of sending such communications. The Respondent asserts that times have changed,that email is displacing physical mail as the primary means of communicating, and that private maildeliverers are challenging the USPS’ position as the primary deliverer of physical communications in the
United States. The Respondent asserts that in the last decade first-class mailings through the USPS have
dropped by half, which is confirmed by information made available on the Objector’s website. According to
the Respondent, it is not a coincidence that this decline has been coextensive with the rise of the Internet,
and electronic mail specifically, as a means of communication.
The Respondent acknowledges that many dictionaries continue to provide a definition of “mail” as material
sent using a postal system, but observes that most dictionaries, including dictionaries relied on by the
Objector, also define “mail” to include electronic mail (or email). The Respondent argues that the Objector’s
attempt to dismiss such definitions “as a less common meaning of ‘mail’” completely ignores the context inwhich the gTLD <.mail> string will be used – namely, the Internet. According to the Respondent, when theterm “mail” is used in the context of the Internet (and therefore domain names and email addresses), there
can be no doubt that consumers associate “mail” with electronic mail and not physical mail.

page 8The Respondent submits that the association of “mail” with electronic mail in an Internet context isdemonstrated in a number of ways. First, the Respondent observes that many popular electronic mailservice providers use the term “mail” within their names, including Gmail, Hotmail, Yahoo! Mail, AOL Mail,ZOHO Mail, Mail.com, and GMX Mail. In addition, the Respondent argues that the Objector’s provision of
postal services to roughly “152 million homes, businesses and Post Office boxes” pales in comparison to thenumber of users of electronic mail service worldwide. Relying primarily on statistics compiled by web
8analytics company comScore, the Respondent submits that Gmail’s unique monthly visitors in June 2012,9
totaled 289 million (Google claimed 425 million active monthly users), that Hotmail had 325 million uniquemonthly visitors, and that Yahoo! Mail totaled 298 million monthly users.
Given the presence of Gmail, Hotmail, Yahoo! Mail, AOL Mail, ZOHO Mail, Mail.com, GMX Mail, and othersimilar electronic mail services, the Respondent maintains that the public has become accustomed tothinking of electronic mail as “mail” when the term is used in the context of the Internet. The Respondent
also maintains that online search engine results for “mail” demonstrate that in the Internet context electronic
mail is the relevant topic, in that the search engine results are dominated by electric mail service providers,10
and not the Objector or other physical delivery services.
The Respondent further argues that the word “mail” is not primarily associated with the Objector evenoutside the Internet context. According to the Respondent, there are many businesses that provide “privatemail” services. The Respondent notes that the United States Census Bureau recognizes the existence of
11“private mail centers”, and that the United States Department of Commerce refers in publications to “private
mail carriers”, which are defined as “any vendor providing courier services except the United States Postal
12
Service.”
The Respondent represents that a search of the USPTO TESS database reveals nearly four hundred (400)registrations for trademarks that include the word “mail” owned by persons or entities other than the
Objector. The Respondent asserts that the Objector’s ownership of a number of registrations of mark that
include the word “mail” is not evidence of “the public association between the Postal Service and ‘mail’”. The
Respondent also observes that the majority of the Objector’s trademark registrations disclaim the exclusive
right to use the word “mail.” The Respondent submits this is an acknowledgment by the Objector that theword “mail” is a generic or descriptive term, available for use by anyone, and not associated exclusively with
the USPS, citing Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560 (Fed. Cir. 1991) (“Once a
disclaimer is effected an applicant has no exclusive rights to the disclaimed component apart from thecomposite mark”).
The Respondent contends that none of the Objector’s numerous composite marks that combine the term
“mail” with other terms, including the Objector’s U.S. MAIL marks, alter the fact that the word “mail”, standing
alone and unqualified by other words or designs, cannot be monopolized by the USPS. The Respondent
submits that while U.S. MAIL may call to mind for consumers the Objector, this does not mean that the<.mail> gTLD will be associated with the Objector. The Respondent argues that the possibility that its use of
the <.mail> gTLD might result in domains and emails that correspond to any of the Objector’s registeredmarks is not relevant to the likelihood of confusion issue as framed in in Module 3 of the Guidebook, and thatmultiple levels of rights protection mechanisms will be available to address second level domain nameregistrations that potentially might infringe the Objector’s registered marks.
8

Response, Annex 4 (Gmail finally blows past Hotmail to become the world's largest email service, Venture Beat,“http://venturebeat.com/2012/06/28/gmail-hotmail-yahoo-email-users”).
9

Response, Annex 3 (Chrome & Apps@ Google I/O: Your web, everywhere, “http://googleblog.blogspot.com/2012/06/chrome-apgs-

google-io-yourweb.html”).
10

Response, Annex 5 (Search engine results for “mail”).

11

Response, Annex 7 (NAICS 561431: Private Mail Carriers, U.S. Census Bureau Website),“http://www.census.gov/epcd/ec97/def/561431.HTM”).
12

Response, Annex 8 (U.S. Department of Commerce, “http://www.osec.doc.gov/ofm/Standard Accounts Payable Business Rules/Revised%20Version/Private Mail Carrier Matching.pdf”)

page 9In view of this, the Respondent dismisses as a “straw argument” the Objector’s assertion that “unregulated”<.mail> email addresses will be prime tools for fraudulent or criminal activity. Similarly, the Respondentdismisses the Objector’s reliance on the sponsored TLD <.gov> for the proposition that the gTLD <.mail> will
be seen as an indicator of source, asserting that any such recognition arises from the exclusive use
limitations for <.gov> as established under federal law. Finally, the Respondent notes that the United States
13
Department of Commerce, in a letter to ICANN dated April 2, 2013, represented that the U.S. Government
does not share the Objector’s position regarding any of the pending applications for the <.mail> gTLD. This
revelation, according to the Respondent, should dissipate any uncertainty as to whether the Objection in thiscase is well founded.

7. Discussion and Findings
As set forth in Module 3 of the Guidebook, the new gTLD Dispute Resolution Procedure is triggered by aformal objection to a gTLD application by a third party. A formal objection can be filed on one of four
enumerated grounds described in Section 3.2.1 of the Guidebook. A Legal Rights Objection is one of thosegrounds. Under Article 2(e)(ii) of the Procedure, a Legal Rights Objection is defined as an objection that thestring comprising a potential new gTLD infringes existing third-party legal rights that are recognized orenforceable under generally accepted and internationally recognized principles of law.
Objectors must satisfy standing requirements to have their objections considered. Section 3.2.2.2 of the
Guidebook provides that only a “rightsholder” has standing to object on the grounds that its existing legal
rights are infringed by the applied-for gTLD. The source and documentation of the existing legal rights theobjector is claiming are infringed must be included in the filing. Id. Such legal rights may include rights
asserted in either registered or unregistered trademarks. Id. The expert panel presiding over the case isresponsible under Section 3.2.2 of the Guidebook for determining whether the standing requirements havebeen met.
As provided for in Section 3.5.2 of the Guidebook, an expert panel presiding over a Legal Rights Objection
will consider whether, under generally accepted and internationally recognized principles of law, the appliedfor gTLD takes unfair advantage of or unjustifiably impairs the distinctive character of the objector’sregistered or unregistered mark, IGO name or acronym, or otherwise creates an impermissible likelihood ofconfusion between the applied-for gTLD and the objector’s mark, IGO name, or acronym. In reaching adetermination respecting trademark rights, the expert panel is to be guided by eight non-exclusive factors set
out in Section 3.5.2 of the Guidebook. Pursuant to Section 3.5 of the Guidebook, the Objector bears theburden of proof as to all elements of its legal rights objection.
A. Objector’s Standing Requirement
1. MAIL as a Stand-Alone MarkThe Objector does not own word or design trademark registrations consisting solely of MAIL, and noevidence of the Objector’s use of MAIL as a stand-alone mark for its services has been presented to the
Panel. As noted earlier, the Objector has disclaimed exclusive rights in “mail” in the vast majority of its U.S.
registrations for composite marks that include the term. While the Objector urges that the U.S. public
overwhelmingly recognizes the primary meaning of “mail” as hard-copy correspondence and associates itwith the Objector, “mail” is a generic term for letters and packages conveyed by a postal service, andsending letters and packages through a postal system. As such, any public association of the term “mail”
with the Objector does not demonstrate that the public recognizes “mail” as the mark of the Objector. “[N]omatter how much money and effort the user of a generic term has poured into promoting the sale of its
merchandise and what success it has achieved in securing public identification, it cannot deprive competing
manufacturers of the product of the right to call an article by its name.” Abercrombie & Fitch Co. v. Hunting
13

Response, Annex 13 (“http://www.icann.org/en/news/corresgondence/strickling-tocrocker-02agr13-en.pdf”)

page 10World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
The survey evidence sought to be admitted by the Objector does not establish otherwise. The report of the
Objector’s expert concluded that the primary meaning of the term “mail” to a majority of adults in the UnitedStates is hardcopy correspondence related to the USPS. As discussed above, the Panel has decided not to
accept the Objector’s Request for Additional Submission and Evidence. Nevertheless, the Panel finds that
the Objector’s survey evidence does not establish that “mail” has secondary meaning as the mark of the
Objector for purposes of the proceeding. See Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 12:11) (4th ed. 2012) (hereinafter “McCarthy”) (that a particular service provider is called tomind by consumer when prompted by the name of a service does not infuse the generic term with trademark
14significance). A claim by the Objector to exclusive rights to use “mail” is inconsistent with the Objector’s
disclaimer of “mail”, as well as with coexisting U.S. registrations of composite “mail” marks owned by third15
16
17
parties such as Federal Express , the United Parcel Service , and DHL , in which exclusive rights to “mail”
also are disclaimed.
Accordingly, the Panel finds that the Objector has not demonstrated existing legal rights in MAIL as a standalone mark for purposes of this proceeding.
2. U.S. MAIL and Other Composite MAIL Marks
The Objector has submitted evidence of United States trademark registrations for U.S. MAIL. These aremarks in which the text U.S. MAIL is part of composite designs including other elements. The Objector also
has submitted evidence of United States registrations for other composite marks including “mail”. The Panelfinds that the Objector has demonstrated existing legal rights in U.S. MAIL and in other composite marks
other composite marks that include the word “mail” sufficient to establish standing for purposes of its
Objection.
Accordingly, the Panel finds that the Objector has standing to bring this Objection.
B. The Panel’s Multi-Factor Analysis
Where the Objection is based on trademark rights, Section 3.5.2 of the Guidebook directs the Panel toconsider eight non-exclusive factors in connection with the determination of whether the objection should besustained. It is to be noted that the eight factors are not a scorecard and that a panel’s view on them does
not, by itself, determine the outcome of the Objection, but, rather, that they are factors to be considered. The
Panel addresses these factors below.
14

The Panel in United States Postal Service v. Amazon EU S.à.r.l, supra, also came to this conclusion after considering substantiallythe same arguments and evidence advanced by the Objector in this proceeding. Refer to Note 8 supra.
15

Federal Express Corporation owns United States trademark registrations for FED EX INTERNATIONAL MAILSERVICE, U.S. Reg.

No. 2,912,878, issued December 21, 2004, for “transportation of mail by airplane and truck” in International Class 39, and FEDEXINTERNATIONAL MAIL VIEW, U.S. Reg. No. 4,123,018, issued April 3, 2012, for “cargo services, namely, pick up, transportation anddelivery of documents and packages by truck and plane.”
16

United Parcel Services of America, Inc. (UPS) owns United States trademark registrations for UPS MAIL LOGIC, U.S. Reg. No.

2,671,437, issued January 7, 2003, for “parcel and personal property sorting services” in International Class 35 and services including“transportation and delivery of packages and personal property by air, rail, boat and motor vehicle” in International Class 39, and UPS
MAIL INNOVATIONS, U.S. Reg. No. 2,971,164, issued July 19, 2005, for services including “preparing online status reports regarding
the tracking of mail and packages” in International Class 35 and services including “expedited document, package and personal
property delivery by air, rail, boat and motor vehicles” in International Class 39.
17

Deutsche Post AG (DHL) owns United States trademark registrations for GLOBAL MAIL PARCEL, U.S. Reg. No. 2,808,405, and

GLOBAL MAIL BUSINESS, U.S. Reg. No. 2,808,406, both issued on January 27, 2004, for services in International Class 39 including“postal services, namely, transport and delivery of letters, parcels, and small packets for third parties.” Federal Express, UPS and DHL
have disclaimed the exclusive right to use “mail” apart from the marks as shown. The Objector maintains that Federal Express and UPS
use these marks only in connection with partnering arrangements with USPS, and only with mail originating from USPS.

page 11(i) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the Objector’s existing mark.
The Panel finds that the applied-for gTLD string <.mail> is similar to appearance to the Objector’s U.S. MAIL
word and design marks and to other composite MAIL marks held by the Objector to the extent the text of theapplied-for gTLD string appears in its entirety in the Objector’s marks.
(ii) Whether the Objector’s acquisition and use of rights in the mark has been bona fide.
The Panel finds from the evidence in the record that the Objector’s acquisition and use of its trademark rights
in its U.S. MAIL marks and in various other composite MAIL marks has been bona fide.
(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 finds no indication in the record that that the Objector, the Respondent, or any third party haveacquired recognizable or enforceable trademark rights in the term “mail” in itself through registration or by
virtue of public recognition of “mail” as a distinctive indicator of the source of the party’s goods or services.
The Panel’s search of public documents available on the USPTO TESS database disclosed no existingregistrations for MAIL (i.e., as a stand-alone mark).
(iv) Respondent’s intent in applying for the gTLD, including whether the Respondent, at the time of
application for the gTLD, had knowledge of the Objector’s mark, or could not have reasonably been
unaware of that mark, and including whether the Respondent has engaged in a pattern of conduct
whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly
similar to the marks of others.
The Respondent’s expressed intent in applying for the <.mail> gTLD string is to operate an open registrybased on a descriptive or dictionary use of “mail”, primarily in relation to email, and there is no indication in
the record that the Respondent’s intent is otherwise. The Respondent has not indicated whether it had
knowledge of the Objector’s marks, but the Panel considers it unlikely that the Objector would have been
unaware of the Objector and its U.S. MAIL marks. As noted by the Panel in United States Postal Service v.
Amazon EU S.à.r.l, supra, an applicant for a new gTLD can be assumed to have made a trademark searchon the proposed string, which in this case would have revealed the Objector’s U.S. MAIL marks and other
MAIL-containing composite marks. Regardless, the Panel finds no evidence in the record indicating that the
Respondent has engaged in a pattern of applying for new gTLD strings that are identical or confusingly
similar to the marks of others.
(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 indication in the record that the Respondent, either before or since applying for the <.mail> gTLD
string, has used or made demonstrable preparation to use the sign corresponding to the applied-for gTLD.
The Panel notes that the Respondent has invested time, money, technical and other resources in planningand preparing to use <.mail>. The Respondent submits that its use of the dictionary word “mail” as a gTLD
will not interfere with the Objector’s legitimate exercise of its trademark rights. The Panel further notes, as
discussed earlier, the additional rights protection mechanisms mandated by ICANN respecting all new
18
gTLDs.

18

Refer to Note 5 and accompanying text supra.

page 12(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 indication in the record that the Respondent has marks or other intellectual property rights in any
sign corresponding to the applied-for gTLD <.mail> string.
(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 indication in the record that the Respondent has been commonly known by a sign corresponding
to the applied-for gTLD <.mail> string.
(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 Panel in assessing this non-exclusive factor considers whether the Respondent’s intended use of theapplied-for gTLD string would create a likelihood of confusion between the gTLD and the marks in which the
Objector has demonstrated existing legal rights. The issue as framed is whether the Respondent’s
prospective use of the gTLD <.mail> is likely to cause confusion with the Objector’s marks as to the source,sponsorship, affiliation, or endorsement of the gTLD.
As noted above, the Respondent’s expressed intention is to use the <.mail> gTLD string in the context of anopen registry, based on the descriptive or dictionary meaning of “mail”, primarily in association with email.
While the Panel may accept for purposes of its present analysis that some members of the U.S. public
associate the term “mail” with the Objector (although not necessarily residents in countries other than the
United States), the Panel does not accept as tenable the Objector’s position that the Respondent’s use of
the <.mail> gTLD string as described above will be systematically misperceived as an indicator of source for
the Objector’s services. The Panel considers the term “mail” to be merely descriptive generic respectingsome of the Objector’s services, and likely incapable of serving by itself as a distinctive indicator of source.
The Panel considers that the prospective use of the applied-for gTLD string with an open registry admits ofthe possibility for second level domain name registrations and email addresses corresponding to the
Objector’s trademarks. Nevertheless, in the absence of evidence that the potential for such second level
name registrations is likely to result in systemic trademark abuse, the Panel does not find that the mere
possibility of such a risk demonstrates a likelihood of confusion between the applied-for gTLD string and the
Objector’s marks. The Panel further notes that the rights protective mechanisms mandated by ICANN for all
new gTLDs, largely overlooked by the Objector, afford an additional degree of protection against abusive
second level domain registrations. See Defender Security Company v. Baxter Pike LLC, WIPO Case
No. LRO2013-0031.
In the final analysis, “mail” is a descriptive or generic term when used in relation to the Objector’s services,and the Objector does not have an exclusive right to use “mail” in a descriptive or generic sense. Given the
Respondent’s stated intention is to use the applied-for gTLD <.mail> in connection to the descriptive or
dictionary meaning of “mail” as email, the Panel finds that the intended use of the applied-for gTLD <.mail> isunlikely to cause confusion with the Objector’s marks as to the source, sponsorship, affiliation or
endorsement of the gTLD. As the United States Supreme Court noted in KP Permanent Make-Up, Inc. v.
Lasting Impression I, Inc., 543 U.S. 111, 122 (2004): "If any confusion results, that is a risk the plaintiff
accepted when it decided to identify its product with a mark that uses a well-known descriptive phrase." Seealso Park `N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U. S. 189, 201 (1985) (noting safeguards in Lanham Act
to prevent commercial monopolization of language); Car-Freshner Corp. v. S. C. Johnson & Son, Inc., 70 F.
3d 267, 269 (2d Cir. 1995) (noting importance of “protect[ing] the right of society at large to use words orimages in their primary descriptive sense”). As the Supreme Court explained in KP Permanent Make-Up,page 13543 U.S. at 121, “some possibility of consumer confusion must be compatible with fair use, and so it is.”C. Panel’s Findings
As has already been noted, the eight factors discussed above are not exclusive, and are not intended as arote checklist. The relative importance of individual factors may vary with the particular facts andcircumstances of each case, and it is possible that not all factors will be applicable in every case. The Panelconsiders these factors, along with any others factors the Panel deems relevant, in deciding the ultimate
issue: whether the proposed string takes unfair advantage or unjustifiably impairs the distinctive character or
the reputation of the Objector’s marks, or whether it otherwise creates an impermissible likelihood ofconfusion.
The language used in Section 3.5.2 of the Guidebook makes this dichotomy clear, for while the Panel isdirected to “consider” the eight non-exclusive factors, it is mandated that the Panel “determine whether the
potential use of the applied-for gTLD by the applicant takes unfair advantage of the distinctive character or
the reputation of the objector’s ... trademark or service mark (“mark”) ... or unjustifiably impairs the distinctive
character or the reputation of the objector’s mark or otherwise creates an impermissible likelihood ofconfusion between the applied-for gTLD and the objector’s mark or IGO name or acronym.”
Several panels have considered that for an objector to prevail, “there must be something more than mere
advantage gained, or mere impairment, or mere likelihood of confusion.” See e.g., Right at Home v.
Johnson Shareholdings, WIPO Case No. LRO2013-0030; Defender Security Company v. Lifestyle Domain
Holdings, Inc., WIPO Case No. LRO2013-0035. In the view of these panels, while the terms “unfair”,“unjustifiably,” and “impermissible” are not uniformly defined or understood in the trademark context, theiruse in this context of Section 3.5.2 of the Guidebook suggests that, in order to sustain the Objection, thePanel must find something untoward about the Respondent’s behavior or something intolerable about the
Respondent being permitted to keep the string in dispute, even if the Respondent’s conduct or motives do
not rise to the level of bad faith. Similar views have been expressed by several other Panels. See Defender
Security Company v. Baxter Pike LLC, WIPO Case No. LRO2013-0031; AC Webconnecting Holding B.V. v.
19
United TLD Holdco Ltd, WIPO Case No. LRO2013-0006.
Based on the Panel’s consideration of the totality of the evidence and submissions in this proceeding, and assummarized below, the Panel concludes that the potential use of the applied-for gTLD by the Respondent
does not take unfair advantage or unjustifiably impair the distinctive character or the reputation of the
Objector’s marks, or otherwise create an impermissible likelihood of confusion between the applied-for gLTD
and the Objector’s marks.
(i) takes unfair advantage of the distinctive character or the reputation of the Objector’s registered or
unregistered trademarks or service markAs discussed above, the Objector does not have enforceable trademark rights in “mail” standing alone. The
record before this Panel reflects that the word “mail” is a generic term in relation to hard copy
correspondence delivered by a postal service, postal services, and email. As was noted by the Panel in
United States Postal Service v. Charleston Road Registry Inc., WIPO Case No. LRO2013-0045, under19

In Defender Security Company v. Baxter Pike LLC, WIPO Case No. LRO2013-0031, the panel concluded that the terms “unfair”,“unjustifiably” and “impermissible” imply some malfeasance on the part of the respondent or an obvious adverse impact upon theobjector’s mark. The panel in AC Webconnecting Holding B.V. v. United TLD Holdco Ltd, WIPO Case No. LRO2013-0006, concluded
that the terms “unfair advantage” and “unjustifiable impairment” in concern acts that have a commercial effect on a trademark which are
undertaken in bad faith. The panel looked to the meaning given these concepts in WIPO’s Joint Recommendation Concerning
Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet; and Joint Recommendation
Concerning Provisions on the Protection of Well-Known Marks. The panel concluded that a likelihood of confusion that is“impermissible” in the sense that it cannot be justified.

page 14
United States trademark law very little weight is given to generic terms, citing Banff, Ltd. v. Federated Dep't
Stores, Inc., 841 F.2d 486, 491 (2d Cir. N.Y. 1988); American Cyanamid Corp. v. Connaught Laboratories,
Inc., 800 F.2d 306, 308 (2d Cir. N.Y. 1986); Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1,
21 (1st Cir. Mass. 2008). Even assuming the potential use of the applied-for gTLD might result in thecreation of second-level domain names by registrants seeking in some manner to exploit the Objector’smarks, the evidence and submissions in their totality do not support the conclusion that the potential use of
the applied-for gTLD <.mail> by the Respondent will take unfair advantage of the distinctive character or
reputation of the Objector’s marks. Objector has not met its burden of proof under this element of Section
3.5 of the Guidebook.
(ii) unjustifiably impairs the distinctive character or the reputation of the Objector’s markFor similar reasons, even assuming that the potential use of the applied-for gTLD might result in the creationof second level domain names by registrants that in some manner could tarnish the Objector’s marks, theevidence and submissions in their totality do not support the conclusion that the potential use of the applied
for gTLD <.mail> by the Respondent will unjustifiably impair the distinctive character or reputation of the
Objector’s marks. Objector has not met its burden of proof under this element of Section 3.5 the Guidebook.
(iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s markThe Panel has concluded as discussed earlier that the Respondent’s use of the applied-for TLD <.mail> is
not likely to create confusion with the Objector’s marks as to the source, sponsorship, affiliation or
endorsement of the gTLD. Even assuming some confusion might arise from the potential use of the appliedfor gTLD, for the Objector to prevail under this heading something more than a mere possibility that the
Objector’s legal rights will be infringed by the Respondent’s use of the applied for gTLD string is required.
The Objector has not met its burden under this element of Section 3.5 of the Guidebook to show that thepotential use of the applied-for gTLD will create an impermissible likelihood of confusion.

7. Decision
In view of the foregoing, the Objection is rejected by the Panel.

[signed]William R. Towns
Presiding Panelist[signed]Maxim H. Waldbaum
Panelist[signed]The Honourable Neil Brown Q.C
Panelist
Date: August 8, 2013