ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
i-Registry Ltd v. Charleston Road Registry Inc.
Case No. LRO2013-0017

1. The Parties
The Objector/Complainant is i-Registry Ltd of Berlin, Germany, represented by Bettinger Schneider
Schramm of Germany.
The Applicant/Respondent to this Objection is Charleston Road Registry Inc., of Mountain View, the UnitedStates of America, represented initially by Steptoe and Johnson LLP and subsequently by Katten Muchin
Rosenman LLP of the United States.

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

3. Procedural History
The Legal Rights Objection (the “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”), which is set out in the Attachment to Module 3 of version 2012-06-04 of ICANN’s gTLD
Applicant Guidebook (“Module 3”).
In accordance with Article 9 of the Procedure, the WIPO Center completed its review of the Objection on
March 21, 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”).
The WIPO Center received a proposal from the Objector to consolidate LRO Objections LRO2013-0014,
LRO2013-0015, LRO2013-0016, LRO2013-0017 and LRO2013-0018 on April 23, 2013. The Respondent
opposed the Objector’s consolidation proposal. The WIPO Center subsequently determined not toconsolidate the cited LRO Objections for the purposes of Article 12(b) of the Procedure and Paragraph 7(d)of the WIPO Rules.
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 16, 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 16, 2013.

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The WIPO Center appointed Philip N. Argy as the Panel in this matter on June 14, 2013. The Panel findsthat 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.
On June 18, 2013 the Objector sought leave to file an answer to the Response in respect of issues that it
claimed were new or unforeseen and had taken it by surprise. The Respondent submitted that no answer
should be permitted and that there were no issues it had raised which should have taken the Objector bysurprise.
The Panel issued the following ruling in response to the foregoing exchange:“To enable the Panel to make a determination in relation to its request for a supplementary filing, theObjector is requested to identify what it claims are the “new or unforeseen arguments” and explain
why it says they could not have been foreseen and addressed in its original Objection. If the Panel issatisfied in that regard some supplementary submission may be permitted but not otherwise. If any
substantive submission in response to the new arguments is included with the reply to this request,
there will be no supplementary submission permitted. The Panel also does not concede that
permitting the Objector to make a supplementary submission in relation to new and unforeseenarguments in the Response would entitle the Respondent to a reply.”
The Objector subsequently filed a single-page document identifying the following arguments as new or
unforeseen:“First, the Respondent’s challenge to the Objector’s standing was certainly surprising, since CTM
trademarks (once granted) take effect as of the date of filing. Thus, the Objector’s trademark
protection commenced on November 22, 2011, and is afforded priority via German Trademark No.
3020110414564, valid from July 29, 2011. Since the Objector’s mark was clearly valid andenforceable as of the date of its Application the Respondent’s comments in this regard were
unexpected.
Secondly, the Respondent has elected to rely almost exclusively on precedent gleaned from the
USPTO and United States courts, despite the fact that the Objector’s marks are registered inEuropean jurisdictions, and therefore US case interpretation is not controlling law. The USPTO is
extremely unusual in disallowing the registration of “dot” trademarks, and has been historically hostile
to the registration of TLD extensions as marks. The cited case precedent is not highly relevant in thismatter, however, as the laws of the EU and of Germany control the validity of the Objector’s mark.
Thirdly, the Respondent has claimed that it will offer rights-protection mechanisms in any <.VIP>
space which would “minimize the potential” for harm based on its use of the TLD. The Respondent,
however, provided absolutely no evidence of these specific RPMs, and has offered no explanation as
to how it feels it could use the TLD for the provision of registry services without infringing the
Objector’s trademark.
Fourth, the Respondent has conflated (for its own purposes) the use of a generic term for theprovision of related goods or services with; on the other hand, the use of a dictionary word or phrase
as a trademark in connection with unrelated services. This line of argumentation, prevalentthroughout the Response, is both misleading and disingenuous. The Objector would kindly request an
opportunity to refute these claims in a brief supplemental submission, and to provide evidence of third
party marks which have been used in similar connotations (for example, the trademark SEVENTEEN
is protected in IC 41, for inter alia the publication of magazines, despite the fact that the target
audience of the Seventeen magazine is American teenagers – US Reg. No. 3188078). The
Respondent’s allegation that the use of “VIP” for the “connection and management of Internet
Domains” is “generic” was not foreseeable, since the target audience of a service is not relevant to thepage 3class for which the given service may be registered.
Fifth, the Respondent’s claims that third party use of the “vip” term is prevalent do not address the
specific issues in this case. There is no question that trademarks are valid and offer protection for the
specific classes of goods and services for which they are registered. In this case, the Objector’s markis registered specifically for registry services, whereas the examples provided by the Respondent
cover other types of goods. The Objector did not anticipate the Respondent’s submission of thesecomments, since they do not address the key issues of potential infringement and harm addressed inthis matter.”In the Panel’s view only the Respondent’s denial of the efficacy of the registered trademark on which the
Objector’s standing was based was a surprising and unforeseeable argument. The Panel therefore
permitted the filing of a brief submission by the Objector to answer that argument, of which permission the
Objector availed itself. Where relevant the submissions made are included in section 5 below.
In relation to each of the other four arguments referred to by the Objector the Panel took the view that they
were either entirely foreseeable, or that the Objector had transgressed the direction not to include
substantive submission in relation to the arguments in question. In any event, pursuant to Articles 4(e) and
17 of the Procedure, the Panel determined that it would not be assisted by further submission from the
Objector in relation to those four issues and was satisfied that the parties had been treated with equality inhaving a reasonable opportunity to present their position. The Panel does not view Article 4(e) as always
entitling an opposing party to a further submission. If that were the case the Procedure would quickly
become entirely unworkable and easily gamed.
All other administrative requirements appear to have been met.

4. Factual BackgroundOn 29 July 2011 the Objector’s parent company, i-content Ltd (“ICL”), applied to the German Patents Office
to register the three letters “VIP” as a trademark. The language of that application was stated to be German,
with English specified as a second language. The application, which had a status of “Accepted” at the time
the Response was filed, was subsequently cited as the priority document in a November 22, 2011
application for <VIP> to the Office for Harmonization in the Internal Market (OHIM) under the European
Community Trademark system (CTM). This CTM application was successful, and VIP was registered on
April 11, 2012 as trademark No 010437051 (the “Principal Mark”) in classes 36, 41, 44 and 45. The class
45 goods and services claim included “Connection and management of Internet domains”.
On April 30, 2012 ICL licensed the Principal Mark exclusively to the Objector “in connection with and for the
goods and services it is registered for” in the European Union. ICL made subsequent trademark applicationsin other countries which are not material for present purposes, other than perhaps the Madrid Protocol
notification it made on November 29, 2012 for the United States of America in respect of the Principal Mark.
According to the evidence filed by the Objector, on December 27, 2012 the United States of America notified
ICL that protection under the Madrid Protocol was provisionally refused.
On May 30, 2012 the Respondent filed an application with ICANN for the string <.VIP> as a new gTLD. The
Respondent is a wholly-owned subsidiary of Google Inc, an American multinational corporation.
On June 13, 2012 the Objector filed its own application with ICANN for the string <.VIP> as a new gTLD.
There were four other applications made for <.VIP> as a new gTLD, and all five of the applications not madeby the Objector are the subject of a Legal Rights Objection filed on March 13, 2013 by the Objector. Threeof the other five applicants for the <.VIP> string opposed consolidation of their proceedings with this one.
The Panel presumes that they were all opposed on the basis that five different applicants would likely have
five different bases for their applications, that consolidation would affect no efficiencies, and that there maypage 4be prejudice to one or other of the applicants if consolidation resulted in a ‘strong’ application being
considered alongside a ‘weak’ one. Two applicants did not respond to the WIPO Center’s request forcomment. As noted above, the other proceedings were not consolidated with this one and therefore those
applications are not the subject of this determination.
The Objector applied for <vip-registry.com> as a domain name on June 28, 2012. It operates a website at“www.vip-registry.com” which details the proposed uses and features of its applied-for <.VIP> space.

5. Parties’ Contentions
A. Objector
The Objector claims standing as licensee of the Principal Mark which it submits is registered in connection
with “registry-related services, which are logically connected with the operation and management of a newgTLD space”. In SurReply to the Respondent’s challenge to the efficacy of the Primary Mark, the Objector
provided details of the application, examination and grant processes, and enforceability rights, under the
CTM system, including the five year grace period which an applicant has to commence use of a new markbefore it is vulnerable to being struck off for non-use.
It anticipates the Respondent’s submission that VIP is generic by arguing that VIP is not a term of art within
the domain name industry, has no inherent connection to the Internet space generally or to the registration or
licence of specific domain names. It says that the VIP Mark is completely arbitrary in relation to theconnection and management of Internet Domain’s services and has no inherent relation whatsoever todomain registration or any additional services reasonably offered by potential registry operators inconnection with the management of a TLD space. Thus, the Objector argues, the word VIP has an importantsource-identifying function in relation to “connection and management of Internet Domains”.
The Objector submits that it was making preparations for its new gTLD business venture well in advance of
the Respondent’s application for that TLD space and it nominates its above-referenced website in evidence.
It relies also on its own application for the gTLD in which it proposes to utilise VIP under an open-gTLD
model “to cater to the unique needs and interests of important people and public figures worldwide, such aspoliticians, artists, actors, musicians, athletes, aristocrats and wealthy individuals, as well as theirrepresentatives and service providers”.
By reference to the Respondent’s application for the VIP gTLD the Objector notes that the Respondent
proposes to use the gTLD to “provide a dedicated domain space in which registrants can enact second-leveldomains that positions content as specifically for VIP users”.
The Objector then submits that the potential use of the applied-for gTLD by the Respondent:(i) takes unfair advantage of the distinctive character or reputation of the Objector’s registered trademark;and/or(ii) unjustifiably impairs the distinctive character or the reputation of the Objector’s Mark; and/or(iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s Mark.
Standards (i) and (ii) are derived in large part from traditional trademark law provisions for the protection ofwell-known marks, which aimed to provide protection beyond the standard scope of likelihood of confusion.
However, according to the Objector, relief under the Procedure is not restricted to well-known marks
because the LRO was designed to prevent future trademark infringing activity which might result if a top-leveldomain space were to be delegated to an operator who is not the rightful holder of the relevant trademark
rights. According to the Objector, although the Uniform Domain Name Dispute Resolution Policy (“UDRP”) isavailable to redress trademark infringement at the second-level that requires action to be taken against
individual second-level domain registrants, and assumes that top-level domains do not comprise third-party

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trademarks. By contrast in the context of the new gTLD program, it has been long-foreseen that many of the
newly-registered top-level domain strings will comprise registered trademarks and therefore both the Legal
Rights Objection Procedure as well as the Trademark Post-Delegation Dispute Resolution Procedure(PDDRP) was introduced. As the Objector observes, the three elements of the PDDRP are virtually identicalto the three standards prescribed under the Legal Rights Objection Procedure.
Were the Respondent granted control of the VIP top-level domain it is self-evident, according to the Objector,
that the Respondent would be using VIP as a trademark in respect of domain name registration activities
rather than descriptively or generically, as a consequence of which the Objector’s rights would of necessity
be infringed. Customers would find it difficult to differentiate the offerings of the Objector and the
Respondent and the Primary Mark would cease to arouse an immediate association with the Objector’sbusiness endeavours. Where the Respondent, utilising the Objector’s Mark without authorisation, is
engaged in the same business, the same industry, and using a virtually identical sales and marketing model,
it is impossible to believe that the consuming public would be able to distinguish the Respondent’s activities
from those of the Objector.
In relation to the eight non-exclusive factors set out in Section 3.5.2 of Module 3, the Objector’s submissions
can be summarised as follows:(1) Comparing the VIP applied-for gTLD with the Primary Mark shows them to be entirely identical with noadditional or unique text or elements which would distinguish it from the Primary Mark or enable users todifferentiate any potential activities of the Respondent undertaken using the TLD from the Objector’s Markand business.
(2) The Objector’s acquisition and use of the Primary Mark in connection with its planned business activities
has been entirely bona fide. This was done with no foreknowledge of the Respondent’s existence or
activities and, since the Respondent took no steps to register VIP as a trademark, the Objector could notreasonably have been aware of the Respondent’s intent to use the VIP string. The Respondent, on the other
hand, would easily have been able to discover the Objector’s pre-existing trademark rights.
(3) So far as the Objector is aware, the Respondent has made no active or demonstrable use of the term
VIP other than in connection with its application for the gTLD string. Accordingly, the Objector is not awareof any sector of the consuming public that would associate that term in any manner with the Respondent.
Furthermore, any interested consumer research for the VIP string as a trademark would come across the
Objector rather than the Respondent, and the Objector’s website.
(4) The Respondent was on ‘constructive notice’ of the Objector’s rights, as it could and should haveconducted a due diligence trademark search prior to filing its application with ICANN.
(5) The Objector has not located any proof of the Respondent’s use of the term VIP in trade or commerceand suggests that the Respondent could have no unregistered or common law rights in that string as atrademark. It follows, according to the Objector, that the Respondent does not possess any rights in the
VIP string.
(6) Just because VIP has a dictionary meaning, once a dictionary word has been registered as a trademark,the “generic meaning” argument essentially ceases to be effective.
(7) The Respondent has never been commonly known as VIP.
(8) It is certain that the Respondent’s use of VIP would create a likelihood of confusion with the Primary Markas to the source, sponsorship, affiliation, or endorsement of that gTLD.
The Objection concludes by seeking a determination that the Respondent’s application for the VIP gTLD
“constitutes a violation of these LRO rules”, seeking an opinion advising ICANN to refuse delegation for the
Respondent’s application and asking the Panel to issue a statement declaring that the Respondent’s

page 6intended use of the VIP gTLD would constitute an infringement of the Objector’s trademark rights.
B. Respondent
In summary the Respondent submits that its application is based on the right to use the string <.VIP> in its“common everyday generic sense that is guaranteed under the principles of free expression set forth in the
Paris Convention for the Protection of Industrial Property, the Universal Declaration of Human Rights and theInternational Covenant on Civil and Political Rights”. By this the Respondent means it wishes to offer
domain names for website owners that want to immediately indicate to Internet users that the information orservices at their website are related to VIP goods, services and/or information. For the most part it uses theterm “VIP“ as an abbreviation for “very important person” by which it intends to signify “a person of great
influence or prestige” or “a high official with special privileges”. It positions its application for the <.VIP>
string as being “to provide a dedicated domain space in which registrants can enact second-level domainsthat position content specifically for VIP users”.
The Respondent denies any intention to trade off the goodwill of any trademark of any third party, including
ICL and the Objector, in applying for the gTLD and notes that it has proposed a full suite of protection
mechanisms above and beyond those mandated in the new gTLD program, “to minimise the potential for any
domain names granted within that gTLD to infringe, dilute or otherwise abuse third-party trademarks”.
It also accuses the Objector of attempting to subvert the new gTLD evaluation process by asserting
trademark rights obtained in bad faith.
Addressing in particular the Standards for a Legal Rights Objection (see Section 6 below), the Respondent
submits that none of the three elements of the Standards have been proven by the Objector.
The Respondent claims that its mission is to help make information universally accessible by extending theutility of the DNS while enhancing the performance, security and stability of the Internet for users worldwide.
It apparently aspires to create unique web spaces where users can learn about products, services andinformation in a targeted manner and in ways never before seen on the Internet.
The Respondent stresses that its proposed use of the VIP string is intended to invoke its “very important
person” denotation and its related connotations. It submits that the value of the proposed gTLD inheres inthat denotation and connotations.
When the LRO factors are properly weighed, the Panel is asked to find that the applied-for gTLD will not
infringe the existing legal lights of Objector and to uphold the Response.
The Respondent submits that the Objector has not sufficiently proven that it owned legal lights in the PrimaryMark at the time Respondent filed its application for the VIP gTLD. Whilst acknowledging the CTM
registration of the Primary Mark the Respondent says that there is no evidence in the record that Objector
used the mark in commerce before the Respondent filed its application, nor any evidence to establish that
the Objector was the owner of legal lights in the Primary Mark prior to the filing of the Respondent’s
application. Accordingly, so the Respondent argues, the Objection should be dismissed for lack of standing.
Turning to address the eight factors prescribed in the Standards, the Respondent’s main arguments can besummarised as follows:(1) The VIP gTLD is not identical or similar to the Primary Mark because VIP is a generic term meaning “veryimportant person” and the Objector therefore has no enforceable rights in VIP for domain name services.
When a trademark is composed, in whole or in part, of a domain name, neither the beginning of the URL nor
the top-level domain have any source-indicating significance. Instead, those designations are merely
devices that every Internet site provider must use as part of its address.
Even if Objector was able to establish that it had acquired some rights in VIP, such rights would be extremely

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limited in scope due to the numerous users of VIP in the marketplace and as trademarks. Moreover, VIP is
widely used in active domain names. If all these different trademarks can coexist without confusion, theRespondent’s generic use of VIP a top-level domain can coexist with whatever alleged rights Objector may
have. Thus, even if VIP is similar in appearance and pronunciation to Objector’s alleged trademark, thatfactor should be of minimal weight due to the limited scope of protection a generic term like VIP is entitled toand the numerous users of VIP in the marketplace indicating that consumers are capable of distinguishing
between different uses of VIP. Accordingly, the potential for confusion is extremely small, and there is no
likelihood of confusion between Respondent’s use of the proposed top-level domain and Objector’s
trademark rights.
(2) Objector admits that it sought and obtained its trademark rights solely in anticipation of obtaining the
VIP gTLD through ICANN’s new gTLD program. Acquiring and using a mark solely to obtain or maintainrights in the trademark is considered “token use” of the mark, and not bona fide. Objector cannot gain
market share or maintain its trademark rights if it is not using the mark for the services covered by theregistration. If it is not granted the VIP gTLD it cannot provide the services covered by the registration andtherefore will have no entitlement to the mark.
(3) The Respondent notes that Objector is not the registrant of the second-level domain VIP.com, making it
most improbable that the public would recognise the Respondent’s VIP gTLD as the Objector’s trademark.
(4) Respondent’s intent in applying for the VIP gTLD is entirely in good faith. The “g” in gTLD signifies“generic” and the new gTLD program was intended to create broader consumer choice for generic terms as
top level domains. In line with those goals, Respondent applied for the VIP gTLD so that consumers could
register domain names that signal to Internet users content related in one way or another to “very important
person” goods, services or information. Respondent could not have known or been reasonably aware of thePrimary Mark because it was not in use before Respondent filed its gTLD application. No evidence has
been filed to suggest that Respondent has engaged in a pattern of conduct whereby it applied for oroperates TLDs which are identical or confusingly similar to the trademark of others.
(5) The Respondent has made demonstrable preparations to use VIP in connection with a bona fide offeringof goods or services in a way that does not interfere with the legitimate exercise by Objector of its trademark
rights. Objector has pointed to no evidence that Respondent intends to use VIP as a trademark or in any
other way likely to interfere with Objector’s use of its trademark rights. It is well-settled that a term used in its
generic sense does not interfere with a third party’s trademark rights. Moreover, Respondent has promised
to adopt rights protection mechanisms above and beyond those required by ICANN in the Guidebook and toact in good faith to minimise the interference with the legitimate exercise by the Objector and others of theirtrademark rights. Respondent’s parent company, Google, has a long history of using generic terms with thebona fide provision of various services that has not interfered with the legitimate exercise by the Objector or
any other rightsholder of its trademark rights.
(6) VIP is a commonly used generic term and Respondent intends to use it in its generic sense. It would bevery difficult if not impossible for Respondent to obtain intellectual property rights in the VIP string.
Respondent’s intended use of the gTLD in its generic sense is consistent with it having no intellectual
property rights in the gTLD.
(7) VIP is a commonly used generic term that consumers understand refers to “very important person”
information, goods or services.
(8) Respondent submits that Objector has not satisfied its burden of demonstrating that it had existing legal
rights in VIP at the time of Respondent’s application filing, or that there is any recognition of the PrimaryMark by the consuming public. Certainly there is not sufficient recognition of the Primary Mark to satisfy anyof the claims of the Objection, and the Objection should be denied and the Response upheld for thesereasons alone. Generic use of a term is a complete defence against all of the harms alleged by the
Objector.

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Even if non-trademark use of a term could cause a likelihood of confusion, Objector cannot satisfy its burdenof proving this claim. According to Respondent, courts have identified several factors to determine whether
consumers would be likely to be confused by a new mark. Some of the important factors include strength ofthe mark, proximity of the goods, similarity of the marks, evidence of actual confusion, marketing channels
used, type of goods and degree of care likely to be exercised by the purchaser, defendant’s intent inselecting the mark, and the likelihood of expansion of the product lines.
The ultimate test of the strength of trademark is the distinctiveness of that mark in the mind and perception of
the relevant consumer group. Here VIP is a generic term commonly used in the marketplace and there is noevidence that consumers associate VIP with the Objector. Indeed, there are over 1000 other marks thatconsist of or contain VIP and numerous domain names.
The Respondent contends that the goods and services of it and the Objector will not be related because only
one of them will achieve delegation of the VIP gTLD. If it is the Respondent, the Objector will not be able touse the VIP gTLD and therefore will unlikely offer the class 45 services in respect of which ICL registered thePrimary Mark.
The Respondent has already demonstrated good faith intent, promises to enact extensive rights protection
mechanisms, and the majority of “likelihood of confusion” factors weigh strongly in Respondent’s favour.
There is no evidence in the record that Respondent intends to use the VIP gTLD in any way other than as a
generic top-level domain and generic uses of a term such as in a gTLD are a defence to unfair advantage
claims. Furthermore, Objector’s reference to the PDDRP is misguided and irrelevant. Unless a registry
operator holds itself out as a beneficiary of a trade mark, there is no action under the PDDRP. There is noevidence to demonstrate that Respondent applied for the VIP gTLD to take advantage of any alleged
goodwill in Objector’s marks.
Nor has Objector provided any evidence or analysis to show that the VIP gTLD would unjustifiably impair the
distinctiveness or reputation of any of Objector’s trademarks. VIP is a generic term and Objector has notestablished any legitimate trademark rights. Generic terms are not primarily understood as source
identifiers, so their generic use cannot impair the distinctiveness of a third party’s trademark. Consumers do
not associate the term VIP with Objector, and there is no significant recognition or reputation to support anunjustified impairment claim. Objector cannot show that Respondent intended to create an association
between the applied-for gTLD and Objector’s trademarks, nor any actual association. Accordingly, there isno evidence that the VIP gTLD would unjustifiably impair the distinctiveness of any of Objector’s trademarks.
In conclusion, the Respondent claims to be within its rights to apply for a gTLD comprising the generic term
VIP for generic use and submits that the Objection should be denied.

6. Discussion and Findings
The Respondent has challenged the Objector’s standing to file the Objection. Section 3.2.2.2 ofModule 3 states that a “rightsholder” has standing to file a legal rights objection and that the “source anddocumentation of the existing legal rights [which] the objector is claiming … are infringed by the applied-for
gTLD must be included in the filing”.
Clause 2 of the April 13, 2012, trademark licence agreement referred to in section 4 above (the “trademark
licence”) grants the Objector the right to use the Primary Mark “in connection with and for the goods andservices it is registered for” in the European Union. It also indicated that ICL had no objection to the
Objector using the Primary Mark outside the area of its protection although, of course, the Objector could not
be authorised by ICL to use a mark which ICL itself could not lawfully use outside the CTM territory or forgoods or services other than those in respect of which it was registered.
By clause 3 ICL disclaims any warranty that the Primary Mark will continue to exist, or that it does notpage 9infringe earlier rights of third parties.
Clause 5 of the trademark licence permits the Objector to “pursue acts of infringements of third parties
concerning the [Primary Mark] in its own name. This includes the right to lodge court actions”.
Clause 7(a) of the trademark licence provides for it to be “governed and interpreted under the laws of theFederal Republic of Germany” with the District Court of Berlin having “sole jurisdiction”. The Panel disavows
any knowledge of the laws of the Federal Republic of Germany and is self-evidently not the District Court ofBerlin.
On March 1, 2013 ICL executed a document by which it purported to “confirm”:(i) that ICL “is the legal owner of” the Primary Mark;(ii) that the Objector is the “authorised licensee of our registered VIP trademark”;(iii) that the Objector is authorised to apply for the VIP gTLD;(iv) that ICL is “further aware of [Objector’s] intent to file Legal Rights Objections with regard to some or all of
the competing applications for the .VIP space”; and(v) that ICL consents to these actions undertaken by [Objector] and confirms the filing of the said Objections
by [Objector] and its operation of the VIP gTLD is and would be “within the scope and bounds of its rights
granted to it under its trademark license agreement”.
Under Section 3.2.1 of Module 3, a Legal Rights Objection is made out if “the applied-for gTLD string
infringes the existing legal rights of the objector”.
In the Panel’s view “existing legal rights” means rights that exist at the time that the application for the gTLD
under objection is filed. In this case that means those legal rights that the Objector had as at May 30, 2012.
The Panel is satisfied, by reason of the trademark licence if nothing else, that the Objector is a “rightsholder”
within the meaning of Section 3.2.2.2 of Module 3. While noting clause 7(a) of the trademark licence, thePanel determines that the Objector held “rights” in relation to the Primary Mark (and perhaps also in other<.VIP> word mark registrations owned by ICL) as at May 30, 2012. That merely gives the Objector standing
to bring this proceeding, and says nothing about the extent to which those rights are impacted by the
Respondent’s application for the VIP gTLD. It was always open to ICL to bring this proceeding in its own
name as “legal owner of” the Primary Mark and its other registrations for <.VIP>. To the extent the
Objector’s rights differ in time and/or scope to those of ICL, both the Objector and ICL have to live with any
consequences.
Under Article 20(c) of the Procedure, the Objector “bears the burden of proving that its Objection should besustained in accordance with the applicable standards”. The applicable standards are prescribed in Section
3.5.2 of Module 3 (the “Standards”), which relevantly require the Panel to 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 registered or unregistered trademark orservice mark (“mark”) … or unjustifiably impairs the distinctive character or the reputation of theobjector’s mark … or otherwise creates an impermissible likelihood of confusion between the appliedfor gTLD and the objector’s mark.
In the case where the objection is based on trademark rights, the panel will consider the following nonexclusive factors:(i) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the objector’s existing mark.
(ii) Whether the objector’s acquisition and use of rights in the mark 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 applicant or of a third party.

page 10(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.
(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 ora bona fide provision of information in a way that does not interfere with the legitimate exercise by theobjector of its mark rights.
(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, has been
bona fide, and whether the purported or likely use of the gTLD by the applicant is consistent with suchacquisition or use.
(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.
(viii) Whether the applicant’s intended use of the gTLD would create a likelihood of confusion with theobjector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD”.
The Panel must therefore address each of these factors, noting that they are “non-exclusive” and that, as the
Respondent has observed, there are three material qualifications embodied in the Standards in the threephrases “unfair advantage”, “unjustifiably impairs” and “impermissible likelihood of confusion” (emphasis
added).
(i) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the objector’s existing mark.
The proposed .VIP gTLD differs only from the Primary Mark by the “.”, and that is simply a function of therules that have been put in place for the orderly operation of the DNS. The current line of thinking (asexplained in SAC053, the February 23, 2012 ICANN Security and Stability Advisory Committee Report on
Dotless Domains) is that, because so-called “dotless” domains are generally assumed by browsers to be
intranet sites or even non-domain search terms, and the former usually behind the same firewall as the user,
it would be imprudent to permit dotless gTLDs. Despite such technical, functional and security importance of
the “.”, it is not sufficient to deprive the <.VIP> string of its visual and phonetic similarity to the Primary Markand the Panel so finds.
The language used in factor (i) requires, if read literally, that the relied upon mark is that of the Objector.
Since the Primary Mark belongs to ICL, it is plainly not the Objector’s mark and the exclusive trademark
licence does not make it so. Unlike the UDRP first limb reference to a mark “in which the [complainant] has
rights”, much narrower “ownership” by the Objector appears at first blush to be required. But, in the Panel’sview this interpretation would be inconsistent with the grant of standing to “Rightsholders” and the Panelconcludes that this factor should be interpreted as if requiring no more than that the relied-upon mark is one“in which the Objector has rights”. This interpretation would achieve consistency with the UDRP (andderivatives) approach to second-level domain names under existing gTLDs and to third-level domain names
under ccTLDs. It would also be consistent with the reference in factor 2 to the Objector’s rights in the subject
mark. Usefully for comity purposes, it happens to co-incide with the view taken by the learned panel in
relation to another of the Objector’s objections to a gTLD application for <.VIP>, namely proceeding
LRO2013-0013.
Accordingly, the Panel determines that the applied-for gTLD <.VIP> is both visually and phonetically similar
to the Primary Mark in which the Objector had rights as at May 30, 2012, being the Respondent’s application
date for that gTLD string.

page 11(ii) Whether the objector’s acquisition and use of rights in the mark has been bona fide.
This factor requires an assessment of the Objector’s bona fides in acquiring the rights it has in the PrimaryMark. Despite the aspersions cast by the Respondent, to the point of alleging a lack of good faith, the Panelcan discern no conduct of the Objector deserving of such approbation. Indeed the only difference between
the Objector and the Respondent is that the Objector’s parent decided to apply for a trademark inanticipation of the business use pursuant to which it filed its own application for <.VIP> as a gTLD. On therecord before the Panel there is no basis for impugning the Objector’s bona fides.
(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.
It is difficult for the Objector to make good an argument that any use by the Respondent of <.VIP> as agTLD, or even in connection with the operation of a gTLD registry and related business activities, isnecessarily use of that string as a trademark. Use of the string in any generic or descriptive sense is often
described as a ‘defence’ to a trademark infringement action but, in truth, there is no need for a defence
unless the string is used as a trademark in the first place. The record suggests that the Respondent’s sole
motivation in choosing the <.VIP> string was what that term connotes to the majority of the English-speaking
world. It is almost universally recognised as an acronym of “Very Important Person” but, it is equally
identified with the trappings and accoutrements of such people, and with prestigious or important goods,
services, people and matters of all kinds. Independently of the strength of the Respondent’s submissions on
this factor, and the complete lack of evidence about the extent to which the public has the faintest idea that
the Objector has rights in the Primary Mark, the Panel would have concluded that the gTLD use of <.VIP>
being proposed by the Respondent is not use of <.VIP> in a trademark sense. Even associating that gTLD
with supporting commercial activity does not detract from the proposition that the Primary Mark would mostunlikely be infringed simply by its use as a gTLD. This is especially the case with a gTLD that is to bepromoted for its generic meaning and positioned vis à vis prospective registrants as enabling them to attract
consumers looking for very important or prestigious products or services, or any other subject matter inrespect of which the term VIP has a legitimate adjectival use. Finally, no relevant information is in the recordin relation to any third-party rights.
(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 has already determined that the Respondent selected the VIP string for use as a gTLD in reliance
upon its denotation and related connotations. Consistently with that determination the Panel determines that
the Respondent selected the VIP string in good faith.
(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
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.
Each of the parties has made clear in its application for the <.VIP> gTLD that it has made advanced
business plans in anticipation of being successful. It is sufficient for the Panel to determine that neither
party’s planning and preparations to use the gTLD are sufficiently well advanced to have created any
material public awareness of that proposed use of the VIP string and, accordingly, this factor must be given
little weight.
(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page 12with such acquisition or use.
Unlike the Objector, the Respondent had not taken any steps to register VIP as a trademark prior to lodging
its application with ICANN. That is not surprising given its assertion that it intends only to use the string in a
generic sense. For that reason this factor also has little weight.
(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.
Similarly, there is nothing to suggest that the Respondent has been commonly known as VIP and the
Respondent has not suggested otherwise.
(viii) Whether the applicant’s intended use of the gTLD would create a likelihood of confusion withthe objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
Whilst the Panel is quite satisfied that, to date, there is almost no likelihood of confusion between use of VIP
as a gTLD and the Primary Mark, it is more difficult to predict the extent to which that state of affairs will bemaintained going forward as much depends on what use is made by the Objector of the Primary Mark should
it not receive the gTLD delegation for VIP. Nevertheless the Panel is confident that for so long as the
Respondent continues to use the VIP string as a gTLD positioned in the way foreshadowed in its application
to ICANN, assuming its application were to be successful, there would be little likelihood of confusion
between the VIP gTLD and the Primary Mark. In particular, in the Panel’s assessment, use of the VIP stringby the Respondent as a gTLD would be neutral in terms of suggesting any sponsorship endorsement oraffiliation by the Objector of the gTLD or the Respondent’s business.
Beyond the eight factors discussed above, an additional factor in the Panel’s view is the fact that five otherorganisations have made an application to ICANN for a delegation of <.VIP> as a gTLD. Whilst each of
those applications is made on a different basis, and in some cases an applicant has registered a trademark
as part of its preparatory steps, it is striking that all intend to use the gTLD as a virtual marketplace forpeople, products and services in respect of which the “VI” in “VIP” signifies “very important”, and the “P” mayor may not reflect a person, a product or a service. In some cases the mere connotation is regarded as
sufficient to create a viable virtual marketplace.
Another matter taken into account by the Panel is the wide range of phrases which the Objector has shown
are, sometimes to the public but more often to special classes of professional people, known by theshorthand form “VIP”. Some of the more esoteric examples include “ventral intraparietal sulcus in the lateralparietal lobe”, “vasoactive intestinal peptide”, “The Vanilla Ice Posse” (a band), “Voices in Public” (a band),“vacuum insulated panel”, “variable information printing” and “Virgin Islands Party” (a political party). In the
Panel’s view such uses, even by a small minority, further narrow the scope for the Primary Mark to grow andthrive so as to become a valuable property. In the Panel’s view if it survives the strike out action which islikely to be made after five years if the Objector is not successful in its application for delegation of the VIPgTLD, the Primary Mark will remain extremely weak and unable to support many infringement actions except
in blindingly clear cases which knowingly fit squarely and unambiguously into ICL’s statement of goods andservices for which the Primary Mark has been registered.
The fact that the United States has notified the Objector that it proposes to refuse United States protection
for the Primary Mark under the Madrid Protocol is of some significance given that the Respondent is basedin United States and proposes to maintain its business there.
In conclusion, the Panel has determined that the Response is valid and should be upheld because thepotential use of the applied-for gTLD <.VIP> by the Respondent does not:(i) take unfair advantage of the distinctive character or the reputation of the Primary Mark; orpage 13(ii) unjustifiably impair the character or reputation of the Primary Mark; or(iii) create an impermissible likelihood of confusion between the applied-for gTLD and the Primary Mark.
Pursuant to Article 21(d) of the Procedure, the only permissible outcomes of an Objection are its success or
dismissal. The Objector’s request that the Panel make declarations that the Respondent’s conduct infringes
its trademark rights, provide an opinion to ICANN, and find the Respondent to have “violated the LRO Rules”
does not apply even if the Panel’s determination had grounded such remedies, which in this case it does not.

7. Decision
For all of the foregoing reasons, the Panel dismisses the Objection.

[signed]Philip N Argy
Sole Panel Expert
Date: July 30, 2013