ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
DotMusic Limited v. Victor Cross
Case No. LRO2013-0062

1. The Parties
The Objector/Complainant (“Objector”) is DotMusic Limited of Lemesos, Cyprus, represented byConstantinos Roussos, United States of America.
The Applicant/Respondent (“Applicant”) is Victor Cross LLC of Bellevue, Washington, the United States ofAmerica, represented by the IP & Technology Legal Group, PC dba “New gTLDDisputes”, United States.

2. The applied-for gTLD string
The applied-for gTLD string is <.music> (“the String”).

3. Procedural History
The Legal Rights Objection (“Objection”) was filed with the WIPO Arbitration and Mediation Center (the“WIPO Center”) on March 14, 2013 (March 13, 2013 UTC) pursuant to the New gTLD Dispute Resolution
Procedure (the “Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center has completed the review of the Objection
on March 22, 2013 and determined that the Objection complied with the requirements of the Procedure andthe World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the “Rules”).
The WIPO Center received a proposal from a third-party to consolidate the Objections LRO2013-0057,
LRO2013-0058, LRO2013-0059, LRO2013-0060, LRO2013-0061, LRO2013-0062, and LRO2013-0063 on
April 25, 2013. The Objector indicated support to aspects of the consolidation proposal, which was opposedby other parties in the objections referred to in the consolidation proposal. In accordance with Article 12 ofProcedure and Paragraph 7(d) of the Rules, the WIPO Center did not make a decision to consolidate the
Objections for purposes of Article 12(b) of the Procedure.
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Applicant of the
Objection, and the proceedings commenced on April 19, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center on
May 20, 2013.

page 2The Objector had requested the appointment of a single-member Panel and the Applicant in its Response
requested the appointment of a three-member Panel to render the Expert Determination in this proceeding.
Since the WIPO Center did not receive any agreement to a three member Panel from the parties within thetime limit for the appointment of a three-member Panel, pursuant to paragraph 8(b) of the Rules and Article
13(b)(ii) of the Procedure, the Panel is to be decided by a single-member Panel.
The WIPO Center appointed Karen Fong as the Panel in this matter on June 20, 2013. The Panel finds that
it was properly constituted. 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.
On July 16, 2013, the Objector on its own accord submitted a Request for Leave to File Additional
Submissions in Light of New Case Law, and Additional Submissions in Light of New Case Law to the WIPO
Center, the Applicant and the Panel. The Panel made Expert Panel Order No. 1 on July 17, 2013 requesting
the Applicant if it so wishes to file a response to the Objector’s additional submissions, with the Panel’s
determination of the admissibility of the additional submissions reserved. On July 25, 2013, the Applicant
filed its Opposition to Objector’s Additional Submission.

4. Factual Background
The Objector is a Cyprus limited company formed in 2005, engaging in the business activities of ecommerce, affiliate marketing and domain name related activities. It is a subsidiary of CGR E-Commerce
Limited. It trades under the business names “.music”, “DotMusic”, “@dotmusic” and “music.us”.
The Objector relies on the following relevant European Community Trade Mark registrations in the Objection(‘the Trade Marks’):
Trade markCTM Registrationno.

Classes

Date ofRegistration

008139834

35,42,45

November 11, 2009008139792

35,42,45

November 3, 2009Class 35
Advertising; business management; business administration; office functions; management of databases,
management of a database for Internet domain names and projects, also containing Internet domain names
and other Internet addresses; administrative services provided in connection with registration and allotment
of Internet domain names and other Internet addresses, including renewal and assignment services.

page 3
Class 42
Design, installation, maintenance, updating and rental of computer software; technical assistance services
in the fields of telecommunications and IT; Computer services, namely research, reservation, recording andadministration of Internet domain names; design, creation, hosting, maintenance and promotion of Internet
web sites for others; Design of computer and telecommunications systems; engineering services forapplications on large and medium-sized computer systems; computer management services, namely
computer facilities management; technical support in the operation of computer, telecommunications anddata transmission networks; technical appraisals relating to the installation of telecommunications terminals;
technical expertise relating to Internet domain names and projects; engineering and administration(programming) of telecommunications networks; consultancy relating to electronic security and information
system security; surveying relating to the installation of telecommunications terminals, national orinternational database servers, centres providing access to a computer network; computer rental; among
other for worldwide (Internet) or private access (Intranet) telecommunications networks; computer
programming; research and development of new products; scientific research for medical purposes;
updating of databases and software; software maintenance services; creation of virtual and interactive
images; encryption and coding of computer language; Indexing of Internet sites; research and monitoringof Internet sites; computer load relief; conversion of data documents from physical to electronic media;
management of a web based commercial platform of Internet domain names and projects, surveying forInternet domain names and projects, design and development of Internet projects; consultancy andappraisals relating to computer security; monitoring of data, signals and information processed bycomputers or by telecommunications apparatus and instruments.
Class 45
Domain name reservation, registration, maintenance and management services; domain name searching
services; domain name registry services, namely co-ordinating the assignment of domain names andaddress space; technical and legal research relating to Internet domain names.
The Objector’s business was incorporated in 2005 to engage in e-commerce, affiliate marketing and domainrelated activities including domain name reservation services. The Objector and/or its affiliates
owns/operates a network of “.MUSIC” themed websites connected to the following domain names<music.us>, <music.fm>, <music.pro>, <music.mobi>, <music.mu>, <music.co> and <music.biz>. They also
own business names, trade name, company names encompassing the names “Dot Music” or “.music”. The
Objector therefore asserts common law rights in relation to the trademarks .MUSIC and DOT MUSIC.
The Objector is one of a number of other applicants who has also applied for the <.music> gTLD.
The Applicant is a subsidiary of Donuts Inc. The Applicant and its related entities have applied for 307 newgTLDs in total. It asserts that this represents the highest number of applications made for new gTLDs by any
applicant. The main purpose for this business model is to “expand consumer choice and specificity in thedomain name space”. The deliberate choice of common dictionary words is so that consumers are able to
make use of the gTLDs in accordance with the meanings they ascribe to these words. The selection ofthese new gTLDs was based on the belief that these are areas which will interest Internet users.
In section 18(a) of its application, the Applicant says this:“This TLD will be attractive to registrants with affinity for the term MUSIC. This is a broad and diverse
group: producers, performers, distributors, composers, authors, historians, publishers, merchandisers,
equipment manufacturers, reviewers, broadcasters, venue operators, and many others. Importantly, it
is also a place of expression for the people who make everything else about music possible – themillions of individual fans who love music and want to express their passion for it through an online
presence. These fans are typically not part of a formal, organizational structure exclusively related tomusic. But nevertheless have a critical place as registrants in the MUSIC TLD. The TLD will operate
in the best interest of ALL global music participants – in a legitimate and secure manner.”

page 4
5. Parties’ Contentions
A. Objector
The Objector’s case may be summarized as follows. It has rights in respect of a registered trade mark for.MUSIC and DOT MUSIC. It also has common law rights in respect of these two marks. The Applicant’s
stated intentions for the use of the applied for gTLD are within the services covered by the Trade Marks.
These are services for which the Objector has acquired substantial goodwill and reputation in relation to theTrade Marks. The granting of the applied-for gTLD to the Applicant will mean that the Objector’s rights in theTrade Marks will be impaired and also irreparably harm the Objector. There will be a likelihood that
consumers will be confused which means that the millions of dollars invested by the Objector in its business
relating to the Trade Marks creating substantial brand equity will unfairly benefit the Applicant. The tradingon the goodwill of the Objector and the unfair advantage which will be gained by the Applicant isimpermissible. The main points of the specific arguments raised under each of the eight non-exclusive
factors relevant to a determination under the Procedure will be set out below in the discussion of each of
those factors where appropriate.
For the above reasons, the Objector contends that the potential use of the applied for gTLD by the Applicant:a)takes unfair advantage of the distinctive character and reputation of the Trade Marks and the
Objector’s business; and/orb)
unjustifiably impairs the distinctive character and reputation of the Trade Marks and the Objector’sbusiness; and/orc)creates an impermissible likelihood of confusion between the applied for gTLD and the Trade Marksand the Objector’s business.
B. Applicant
The main grounds upon which the applicant opposes the Objection are as follows:•••

The Objector has failed to show that the applied for gTLD, <.music> in and of itself infringes any legal
rights of the Objector as the Objector has failed to demonstrate that it has legitimate trade mark rights
in the word “music”;
The Trade Marks have no distinctive character. In any event, the Applicant’s proposed generic nontrade mark use would not unjustifiably impair or take unfair advantage of these rights nor would there
be any impermissible likelihood of confusion arising between the Trade Marks and the use of the termin the proposed generic TLD.
The Application promotes free speech, competition and consumer choice on the Internet which are thevalues which underpin ICANN’s New gTLD Program. These goals are being thwarted by the Objection
as it would prevent the Applicant from offering the dictionary term “music” as a TLD. This would allow
the Objector to impose an Internet-wide monopoly over an English language word in which the public
has much greater rights than the Objector.

The Applicant’s main points of the specific arguments raised under each of the eight non-exclusive factors
will also be set out below in the discussion of each of those factors where appropriate.

6. Discussion and Findings
A. General
The ICANN New gTLD Applicant Guidebook (v.2012-06-04), Module 3 (“the Guidebook”) Section 3.5.2
provides that for this Objection to succeed in relation to the String, the Objector must prove that the potential
use of the String by the Applicant:page 5a) takes unfair advantage of the distinctive character and reputation of the Objector’s registered or
unregistered trademarks; orb) unjustifiably impairs the distinctive character and reputation of the Objector’s marks; orc) otherwise creates an impermissible likelihood of confusion between the String and the Objector’smarks.
This is to give effect to GNSO Recommendation 3 which states that “[s]trings must not infringe the existing
legal rights of others that are recognized or enforceable under generally accepted and internationallyrecognized principles of law.”
Where the objection is based on trade mark rights, Section 3.5.2 of the Guidebook states that eight nonexclusive factors have to be considered by the Panel. The Panel will deal with these eight factors inparagraph 6D below.
Section 3.5 states that the objector bears the burden of proof in each case.
B. Preliminary Procedural Issue
Article 17 of the Procedure provides that the Panel may decide whether the Parties shall submit any written
statements in addition to the Objection and the Response. Article 18 of the Procedure provides that in orderto achieve the goal of resolving disputes over new gTLDs rapidly and at reasonable costs, proceedings forthe production of documents shall be limited. In exceptional cases, the Panel may require a party to provide
additional evidence. These provisions reiterate Section 3.4.5 of the Guidebook.
There is no provision in the Guidebook, the Procedure or Rules which allows for either party to theproceedings to file additional submissions on its own initiative. Each party has one opportunity to put
forward its entire case. Articles 8(b) and 11(e) provide for a word limit for the both the Objection andResponse. This should not be circumvented by unsolicited additional filings unless requested by the Panel.
The Objector being the initiator of the proceedings has an obligation to anticipate the possible argumentsthat the Applicant may put forward as there is no other opportunity to file additional evidence. It is only in
exceptional circumstances that a Panel will request additional evidence to be filed. Article 20(b) of theProcedure provides that the Panel may refer to and base its findings upon any rules or principles that it
determines to be applicable. The approach taken by panels in proceedings under ICANN’s Uniform Domain
Name Dispute Resolution Policy (“UDRP”) is instructive here as the provisions in relation to additional
statements are similar. Panels under the UDRP have discretion whether to accept an unsolicited
supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation totreat each party with equality and ensure that each party has a fair opportunity to present its case. The
Panel is therefore of the view that under the Procedure, should parties make unsolicited filings, a panel has
the discretion to rule on their admissibility.
The Panel has considered the filings from both parties and determines not to admit the additional filed
evidence. The Objector has not demonstrated any “exceptional circumstances” which would have warranted
an additional submission. The Panel finds reference to new Legal Rights Objection decisions at this stage isof limited usefulness in terms of guidance and precedent on this matter. Further, the rest of the Objector’s
submissions consisted of matters that it could have included in the Objection, subject to the word limit set
under the Procedure. As such, it is not an appropriate case for any more additional evidence to beconsidered.
The Panel would also like to make clear that parties should never copy correspondence directly to the Panel.
All communications to the Panel should be made to the WIPO Center as provided for in the Procedure andRules.
C. Standing
Section 3.2.1 of the Guidebook provides four grounds of objection to an application for a new gTLD string,page 6one of which is a Legal Rights Objection where “[t]he applied for gTLD string infringes the existing legal
rights of the objector.” Section 3.2.2 of the Guidebook states that “Objectors must satisfy standing
requirements to have their objections considered. As part of the dispute proceedings, all objections will be
reviewed by a panel of experts designated by the applicable Dispute Resolution Service Provider todetermine whether the objector has standing to object.” Those objecting under the grounds of legal rights
have to be “rights holders”. Section 3.2.2.2 of the Guidebook states that a rights holder has standing to file alegal rights objection. The legal rights may include either registered or unregistered trade marks. It further
states that “the source and documentation of the existing legal rights the objector is claiming (which may
include either registered or unregistered trade marks) are infringed by the applied for gTLD must be includedin the filing.”
The Objector relies on the Trade Marks, common law rights in relation to trade marks “.MUSIC” and “DOTMUSIC” as well as the following registered trade marks:
Trade markCTM Registrationno.

Classes

Date ofRegistration

010535375

35, 42, 45

June 22, 2012

010535409

35, 42, 45

June 25, 2012

010544377

35, 42, 45

August 3, 2012

The Panel does not consider that the above three trade marks are sufficiently similar to the String to be
relevant for consideration in this Objection. The Objector has not provided any legal basis under any
principle of law which shows otherwise. The fact that because they are music-themed and therefore “similar
in connotation” to the String is not relevant for the purposes of the Procedure. The Panel will therefore notinclude these trade marks in arriving at its decision.
The Objection states that “DotMusic Limited, a subsidiary for CGR E-Commerce Limited, related entities
referred to as ‘DotMusic’” owns the Trade Marks. The Panel notes that all the registered Trade Marks reliedon are in the name of Constantinos Roussos who is the authorised representative of the Objector in theseproceedings. No evidence has been produced to show that the Objector has been granted a license by theowner of the Trade Marks to use the marks so that the Objector is regarded as the “rights holder”. There arecertificates to show that Mr. Roussos is a director of a company called Constantinos George Roussos (CGRpage 7
E-Commerce) Limited which the Panel presumes is one of the “related entities” referred to. Some of theevidence submitted which included invoices of various sponsorship events for “.music” are also in the nameof Mr. Roussos.
The domain names connected to the “music”-themed websites are not in the name of the Objector. No
evidence was filed to show ownership of these domain names. The Panel had to do its own WhoIs searches
which revealed CGR E-Commerce Limited to be the owner. Whilst it appears that Mr. Roussos, CGR
Commerce and DotMusic Limited are connected, the Objector is required under the applicable rules whichgovern the Objection to file the “source” and “documentation” of the legal rights that it is claiming. The
Objector had the option of filing the Objection in the names of all the related entities and individual, however,it chose not to.
Under the UDRP, in order to assert unregistered rights in a mark, a complainant must show that the namehas become a distinctive identifier associated with the complainant or its goods or services. Relevant
evidence of such “secondary meaning” includes length and amount of sales under the trade mark, the natureand extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law
or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of
the claimed mark supported by evidence as appropriate would be required. In cases where claimed
common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore
not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of
secondary meaning or distinctiveness.
The Panel is of the view that the evidence submitted is insufficient to prove common law rights particularly
since the marks comprise descriptive words. The Panel will therefore consider only the registered trade
mark rights in these proceedings.
The Objector has thus failed to prove for the purposes of this proceeding that it has the necessary rights tofile the Objection as it has failed to show that it is the “rights holder” as would be understood by the rules ofinternational law that the Panel is familiar with. The Objection therefore fails on this basis.
Notwithstanding the above, for completeness the Panel will consider the arguments by both parties inrelation to whether the legal rights (had they been proven to be owned by the Objector) would have been
infringed by the Applicant’s potential use of the String.
D. Legal Rights Infringement
In considering whether the existing legal rights in respect of which the Objector relies on is infringed by thepotential use of the String by the Applicant, the Panel needs to determine whether any one or all of the three
conditions stated in Section 3.5.2 of the Guidebook have been proven. In so doing, the Panel will consider
the following eight non-exclusive factors.
(i)Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound,or meaning, to the Objector’s existing markThe String is <.music>. The Objector’s relevant marks are two device trademarks, the first consisting of“.MUSIC” with a star and reversed treble clef in place of the letter ”S” and the second consisting of“DOTMUSIC” again with the star and reversed treble clef device. The Objector claims unregistered rights inthe marks .MUSIC and DOT MUSIC because of its extensive use of the trade marks.
The Panel is of the view that the evidence submitted is insufficient to prove common law rights particularly
since the marks comprise descriptive words. The Panel will therefore consider only the registered trade
mark rights in these proceedings.
The “.” in the String is present only because of a technical requirement. The comparison is therefore
between the “music” and the Trade Marks. The Trade Marks are device marks and therefore are clearly notpage 8identical in appearance, phonetic sound with the String. However they are similar in relation to the textual
element “music”.
(ii)

Whether the Objector’s acquisition and use of rights in the mark has been bona fide.

The Panel accepts that the Objector’s acquisition and use of the rights in the trade marks has been bonafide. There has been no argument raised to suggest otherwise.
(iii) Whether and to what extent there is recognition in the relevant sector of the public of the sign
corresponding to the gTLD, as the mark of the Objector, of the Applicant or of a third party.
The Objector has alleged a substantial global recognition in the relevant sector of the public of the sign
corresponding to the gTLD as the mark of the Objector as demonstrated by the Objector’s business, eventsand their associated sponsorships, marketing efforts, significant social media presence and following, highranks in search results for relevant domain-related keywords, pre-registration requests, domain-related trafficand e-commerce, the “.MUSIC” petition signed by over 1.5 million people in support of them.
The Applicant has questioned the extent to which the Objector has claimed to have spent on its business inconnection with the .MUSIC and DOT MUSIC trade marks as no evidence has been filed to substantiate the“millions of dollars” spent on acquiring, developing, and monetizing music-themed domain names. It also
alleges that insufficient evidence has been filed by the Objector to prove public recognition of the sign
corresponding to the String as the mark of the Objector. Such evidence that has been filed has been
misleading. The Applicant has produced evidence of a survey of 1,000 respondents in the United States andthe United Kingdom in which there were only 4% of respondents who spontaneously associated the word“music” with a brand, the brand being Apple in three of every four responses, with Pandora, Sirius, Song,
Spotify, Yahoo and YouTube making up the remainder. The conclusion of the survey is that the word“music” is significantly more likely to be a term primarily associated with generic things, and in particularintangible things, rather than a specific brand.
ICAAN’s New gTLD Program has attracted numerous applications for gTLD strings that consist of ordinary
dictionary words to be used for precisely the ordinary meanings accorded to these words. It is therefore
important that any trade mark an Objector wishes to rely on which consist of a common dictionary word isshown to be recognized by the relevant sector of the public as originating from the Objector.
The sign in question is “music” and the relevant sector of the public consists of domain name registrants withaffinity for the term “music”. Those falling within this group have been identified by the Applicant in the
Factual Background above. The Panel considers that the evidence submitted by the Objector has not in any
way demonstrated that the sign MUSIC, a generic word, is recognized by the relevant sector of the public as
the mark of the Objector or of any party.
(iv) Applicant’s intent in applying for the gTLD, including whether the applicant, at the time of
application for the gTLD, had knowledge of the Objector’s mark, or could not have reasonably been
unaware of that mark, and including whether the applicant has engaged in a pattern of conduct
whereby it applied for or operates TLDs or registrations in TLDs which are identical or
confusingly similar to the marks of others.
The Panel finds that it is more than likely that the Applicant would have been aware of the Trade Marks
especially since the Objector has been active in marketing and promoting the Trade Marks at ICANN
meetings. However, the Applicant’s parent company has applied for 307 gTLDS comprising of generic
dictionary words. The Panel accepts that the Applicant’s intent is to use the String for its generic meaning.
In the Panel’s view this does not indicate a pattern of conduct of applying for top-level domains orregistrations in top-level domains which are identical or confusingly similar to the marks of others.
(v)
Whether and to what extent the Applicant 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

page 9or a bona fide provision of information in a way that does not interfere with the legitimate exercise by
the objector of its mark rights.
The Applicant’s parent company has made a substantial investment in planning and preparing to use<.music> and its other applied-for gTLDs. There has been no evidence to suggest that the Applicant will not
operate the String in a manner which is not consistent with its stated objectives in its Application.
The Objector’s trademarks comprise device marks together with a descriptive word. These rights may belegitimately exercised even with a third party running a registry with the applied-for string <.music> in themanner the Applicant indicates.
(vi) Whether the Applicant has marks or other intellectual property rights in the sign corresponding
to the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, hasbeen bona fide, and whether the purported or likely use of the gTLD by the Applicant is consistent
with such acquisition or use.
The Applicant contends that it has rights in the sign corresponding to the gTLD only by virtue of its
Application.
(vii) Whether and to what extent the Applicant has been commonly known by the sign
corresponding to the gTLD, and if so, whether any purported or likely use of the gTLD by the
Applicant is consistent therewith and bona fide.
The Applicant contends that its proposed bona fide use of the sign corresponding to the gTLD is consistent
with the rights it has acquired by virtue of its Application.
(viii) Whether the Applicant’s intended use of the gTLD would create a likelihood of confusion with
the Objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
The Panel finds the Objector has acquired and used the Trade Marks to associate its trade mark rights with
the String as it had always been its intention to apply for and operate the String. Its trade mark rights are notfor the words “.MUSIC” or “DOT MUSIC” per se but as represented in the trade mark registrations. It has
failed to prove that it has unregistered rights in the word marks or indeed in the form covered by theregistered trademarks for the purposes of this Procedure. Any reputation and goodwill that it has is therefore
limited in any case to the form as represented in the registered trade marks. The String consists of a genericword “music” although it is likely that in use consumers are likely to refer to it as “Dot Music”. The Applicant’s
intended use of the String appears to be generic. In view of the above, the Panel is satisfied that it is unlikelythat the intended use of the gTLD would create a likelihood of confusion with the Objector’s marks as to thesource, sponsorship, affiliation, or endorsement of the gTLD.

7. Decision
The Objector has not proven that it has standing to make a Legal Rights Objection.
In any event, even if the Objector has been able to prove that it is the rights holder, the Panel finds that thepotential use of the applied-for gTLD by the Applicant does not:(i) take unfair advantage of the distinctive character or the reputation of the Objector’s registered or
unregistered trademark or service mark, or(ii) unjustifiably impair the distinctive character or the reputation of the Objector’s mark, or(iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s mark.

page 10For the foregoing reasons, the Panel rejects the Objection.
[signed]Karen Fong
Sole Expert Panel
Date: August 15, 2013