ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Scripps Networks, LLC v. Charleston Road Registry Inc.
Case No. LRO2013-0019

1. The Parties
The Complainant/Objector (the “Objector”) is Scripps Networks, LLC of Knoxville, Tennessee, United Statesof America, represented by Wolfe, Sadler, Breen, Morasch & Colby, LLC, United States.
The Respondent/Applicant (the “Respondent”) is Charleston Road Registry Inc. of Mountain View, California,
United States, represented by Katten Muchin Rosenman LLP, United States.

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

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 (theProcedure).
On March18, 2013, the Center sent an email communication to the Objector, with a copy to the Respondent,
noting that two email submissions of the Objection were received and attaching the email submission it was
intending to use for compliance review purposes. On the same day, the Objector confirmed that two email
submissions of the Objection were sent due to a bounce back notification.
In accordance with Article 9 of the Procedure, the WIPO Center has completed the review of the Objection
on March 21, 2013 and has determined that the Objection complies with the requirements of the Procedureand the World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the WIPO Rules for New gTLD Dispute Resolution).
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Respondent of the
Objection, and the proceedings commenced on April 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 15, 2013.
The WIPO Center appointed W. Scott Blackmer as the Panel in this matter on June 14, 2013. The Panelpage 2
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance with
Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.

4. Factual Background
The Objector is a limited liability company established under the laws of the State of Delaware, UnitedStates, and headquartered in the State of Tennessee, United States. The Objector is a wholly owned
subsidiary of Scripps Networks Interactive, Inc. (“SNI”), a publicly traded company on the NASDAQ stock
exchange, and holds trademarks on behalf of the SNI group.
SNI develops “lifestyle-oriented content” for television and for online, mobile, and print media. SNI’s portfolio
includes media brands such as DIY Network, Food Network, HGTV, Travel Channel, and Cooking Channel.
Since 1999, the SNI group has produced “DIY Network” television programming on home-improvement,
design, and self-help projects for subscription cable and satellite television distribution. According to theaffidavit of an SNI executive, DIY-branded programming currently reaches 58 million television subscribers,
and the associated website at “www.diynetwork.com” has 2.7 million unique visitors per month. The
Objector states that the DIY brand generates more than USD 120 million in annual revenue and that SNI has
invested “hundreds of millions of dollars” in “building the brand” since 1999.
The Objector holds numerous registered trademarks consisting of, or including, the acronym “DIY”, in 32
jurisdictions. These are summarized below under Section 6.B. “The Objector’s Existing Legal Rights”.
Another subsidiary of SNI, Lifestyle Domain Holdings, LLC, filed an application to ICANN for the identicalnew gTLD string <.diy>, with the purpose (as expressed in the application) of using it to create “an enhanced
online experience from the existing family of SNI’s lifestyle branded .coms and diynetwork.com”, consistent
with the brand’s reputation as a “trusted source for fun and interesting edutainment for do-it-yourself lifestyle
related activities”. The Objection states that the new gTLD string <.diy> is meant to extend SNI’s “current
online channel of distribution through the use of the brand top level domain.” As this string is identical to theone for which the Respondent applied, ICANN has placed both applications in a “string contention set”. As
explained in Module 4 of the ICANN Applicant Guidebook (version 2012-06-04) (the “Guidebook”), string
contention may be resolved in several ways, including an auction as a last resort.
The Respondent is a business corporation established under the laws of the State of Delaware andheadquartered in the State of California, United States. It is a wholly owned subsidiary of Google Inc.
(“Google”), a publicly traded American multinational company listed on the NASDAQ stock exchange.
Google, founded in 1998, is an international leader in Internet search and related services. In
December 2012, Alexa.com listed “www.google.com” as the most visited website in the world. The
Respondent has applied for more than 100 new gTLD strings, most if not all of which consist of dictionary
words, acronyms, or generic terms. The Respondent’s stated intention is to make the new gTLD string<.diy> available for domain names with content relevant to the “do-it-yourself” market:“As stated in its Application, the proposed gTLD will provide the marketplace with direct association to
the term, ‘diy,’ a common acronym for the phrase ‘do-it-yourself.’ The mission of this open registry is
to provide a dedicated domain space in which registrants can enact second level domains that provide
content relating to do-it-yourself activities, including but not limited to home improvement or arts andcrafts.”

5. Parties’ Contentions
A. Objector
The Objector asserts that the new gTLD string <.diy> is identical to its registered DIY mark and confusinglypage 3similar to its other marks that incorporate the acronym “DIY”. The Objector argues that the Respondent“knew or should have known” of these marks and intends to use the new gTLD string <.diy> “in a way that
explicitly intends to interfere with the existing rights of the Objector”, as the Respondent states that it “aspires
to become an authoritative online resource for content related to do-it-yourself activities.”
The Objector contends that the Respondent does not currently use the acronym “DIY” in connection with abona fide offering of goods or services and has not made demonstrable preparations to use the new gTLD
string <.diy> “in a way that does not interfere with the legitimate exercise by Objector of its trademark rights.”
The Objector points out that its trademark rights cover “the field of operating a web site, computer network,
content and information”, concluding that “any use of DIY by Respondent as a top level domain operator
would inherently infringe upon Objector’s exact class of goods and services for which protection has been
granted in more than thirty-two jurisdictions.”
The Objector foresees harm to consumers as well as to the Objector if the Respondent’s application for the
new gTLD string <.diy> is granted:“Should Respondent operate .diy as an open system, consumers will be confused and misled into
believing that second string domains on the top level domain. DIY are somehow related or connectedto the famous DIY brand. They will be damaged when they trust content that is not of the same qualitythat Objector promises. Not only will consumers be misled and potentially harmed as a result, but thiserosion of the DIY brand will cause irreparable harm to Scripps Networks by devaluing and diluting the
integrity of its brand which it has built over many years and as the result of substantial investment.”
The Objector concludes that the Respondent’s use of the applied-for <.diy> string would take unfair
advantage of the reputation associated with the Objector’s marks, impair the distinctive character andreputation of the marks, create a likelihood of confusion with the marks, and harm Internet users by
misleading them in believing that this new gTLD string is related to the Objector.
B. Respondent
Citing dictionaries and the Wikipedia entries for “DIY” and “Do-it-yourself”, the Respondent argues that “DIY
is a common, everyday generic word that means ‘do-it-yourself’, i.e., the activity of doing or making
something (as in woodworking or home repair) without professional training or assistance.” According to the
Wikipedia article on “DIY”, the term has been in use since the 1950s but has expanded beyond home
improvements and crafts:“Subsequently, the term DIY has taken on a broader meaning that covers a wide range of skill sets.
DIY is associated with the international alternative rock, punk rock, and indie rock music scenes;
indymedia networks, pirate radio stations, and the zine community. The abbreviation DIY is also
widely used in the military as a way to teach commanders or other types of units to take responsibility,
so that they'd be able to do things themselves just as a preparation for their own future.”
The Respondent acknowledges the Objector’s registered DIY mark but observes that the Objector uses theterm in the marketplace only in a stylized form with NETWORK or another term, as reflected in the mostrecent trademark use specimen submitted to the United States Patent and Trademark Office (“USPTO”) for
the DIY mark. The Respondent concludes that the applied-for new gTLD string <.diy> “should be considereddifferent in appearance from Objector’s Marks because based on how Objector uses the term in themarketplace, consumers solely associate the unitary mark ‘DIY NETWORK,’ and not DIY alone, with
Objector.”
The Respondent argues that confusion is unlikely because the public associates DIY NETWORK with the
Objector’s television programming and recognizes the “DIY” acronym as generic. The Respondent argues
that “because of the generic nature of DIY, Objector is entitled to only a limited scope of protection andcannot prevent others from using DIY as a generic term. The use of DIY as a TLD for domain names is a
generic use.” The Respondent points out that third parties currently own “DIY” domain names, including

page 4<diy.com>, <diy.net>, <diy.org>, <diy.biz>, and <diy.info>. The Objector itself uses <diynetwork.com> for its
website relating to the DIY NETWORK, not any domain name consisting of “DIY” alone.
The Respondent denies any intention to use the “DIY” acronym as a trademark associated with goods orservices and cites authorities for the proposition that using a term in its generic sense does not interfere witha third-party’s trademark rights.
The Respondent contends that an open registry using the generic term would increase consumer choice andcompetition in the marketplace for “DIY” goods, services, and information, and would do so without
infringing, impairing, or taking unfair advantage of the Objector’s trademarks.

6. Discussion and Findings
A. Standards for Decision
Section 3.2.1 of the Guidebook provides that before ICANN approves an application to operate a new gTLD,
trademark owners are allowed to submit a Legal Rights Objection on the ground that “the applied-for gTLD
string infringes the existing legal rights of the objector”.
As provided in Section 3.2.2.2 of the Guidebook, a rights holder must establish its standing to file a Legal
Rights Objection by furnishing “the source and documentation of the existing legal rights”, which may include
either registered or unregistered trademarks. The rights holder must then establish that the proposed newgTLD would infringe or impair those rights.
Decisions on Legal Rights Objections are based on the evidence introduced by the parties, the standards set
forth in Module 3 (“Objection Procedures”) attached to the Guidebook, the Procedure, the WIPO Rules for
New gTLD Dispute Resolution, and applicable substantive law.
Section 3.5.2 of Module 3 of the Guidebook, provides this direction for panels evaluating Legal Rights
Objections:“In interpreting and giving meaning to GNSO Recommendation 3 (‘Strings must not infringe theexisting legal rights of others that are recognized or enforceable under generally accepted andinternationally recognized principles of law’), a DRSP panel of experts presiding over a legal rights
objection will 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 unregisteredtrademark or service mark (‘mark’) […], or unjustifiably impairs the distinctive character or the
reputation of the objector’s mark […], or otherwise creates an impermissible likelihood of confusion
between the applied-for gTLD and the objector’s mark […].”
This section of Module 3 continues by instructing panels to consider eight non-exclusive factors when Legal
Rights Objections are based on trademark rights, as they are in the current proceeding. Other potentiallyrelevant factors are not precluded in assessing the Objections, and the Guidebook does not indicate what
relative weight should be placed on each of the listed factors. The Panel addresses each of these factors in
the discussion further below.
B. The Objector’s Existing Legal Rights
The Objector holds United States Registration No. 2457989 (registered June 5, 2001) for DIY. The mark is
registered in International Class 042 as a standard-character service mark for “providing a website of
information about television programming; news and weather; gardening and landscaping; crafts andhobbies; sewing and quilting; furniture and antiques; interior design and decorating; home building,
improvement, repairs and renovation; and similar projects and topics.”

page 5The Objector also holds numerous other trademark registrations in the United States and some 32 otherjurisdictions for word or design marks incorporating DYI with other relevant words, such as DIY NETWORK,DIY DOMINATOR, DIY DO IT, DIY DO IT YOURSELF, DIY KIDS, DIY ON DEMAND, DIY TO THE
RESCUE, ASK DIY, DISASTER DIY, and DIY DO IT YOURSELF NETWORK.
The Panel concludes that these registered marks give the Objector standing to pursue a Legal Rights
Objection against the Respondent’s application for the new gTLD string <.diy>.
C. Potential Infringement of the Existing Legal Rights of the Objector
The applied-for string <.diy> is identical to the letters comprising the Objector’s registered DIY mark. The
record amply demonstrates, however, that “DIY” is a commonly used, generic acronym for the phrase “do it
yourself”, as found in dictionaries, online and print media, Internet domain names, retail industry market
reports, and Internet search engine results. The Objector concludes that the new gTLD string <.diy> could
not be used by the Respondent without infringing its existing legal rights.
The Panel does not agree with this conclusion. The acronym “DIY” has generic meanings that are notexclusively associated with the Objector’s television programming and associated website content. The
Objector’s DIY trademark, as described in the United States registration, is for use in connection with “awebsite”. As such, the Objector cannot displace all other uses of the generic term. Where a mark consistsof a dictionary word or acronym, as it does here, the scope of trademark protection must necessarily beconstrued narrowly to avoid giving a company exclusive rights to use a term in its generic sense. See Paris
Convention for the Protection of Industrial Property, Art. 6 (quinquies) (B)(2) (a sign registered in one country
may not be registered, or may be invalidated, in another country if it has become “customary in the current
language or in the bona fide and established practices of the trade” in that country); J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12: 2 (“Generic names are regarded by law as free
for all to use. They are in the public domain.”); 1 Anne Gilson LaLonde, GILSON ON TRADEMARKS § 2.02[1](“A generic name is free for use by anyone when applied to the products it signifies, is often a competitivenecessity, and can be used in its generic sense notwithstanding its registration for other products”).
The operation of a gTLD registry is not the same business as the operation of a commercial website, and ageneric gTLD would not normally serve as a source identifier for goods or services in any event. See
MCCARTHY ON TRADEMARKS § 7: 17.50; United States Patent and Trademark Office, TRADEMARK MANUAL OF
EXAMINING PROCEDURE 5th Ed. (2007) § 1215.02. The Respondent asserts that it has no intention of using
the <.diy> new gTLD as a trademark or service mark, and this is plausible given the stated purpose of theopen registry, which would not be limited to any particular DIY manufacturer, retailer, or content provider.
The Respondent itself and its parent company, Google, are not in the business of selling DIY products orprogramming. The Respondent proposes, in its application for the new gTLD string <.diy>, to use it for its
broadest generic signification. The Panel finds this is consistent with the Respondent’s application for morethan a hundred new gTLDs, most if not all of which are comprised of generic terms. One cannot rule out thepossibility that a second-level domain registered under the new gTLD string <.diy> may eventually be
1considered as misusing the Objector’s trademark but this does not mean that the use of this new gTLD assuch should itself be considered as infringing the Objector’s existing legal rights in the DYI trademark.
The Panel notes that the issue of the generic quality of the acronym “DIY” has arisen previously in thecontext of a dispute concerning the domain name <diy.biz>. In 2002, a UDRP panel dismissed thecomplaint brought by a United Kingdom company claiming rights in the unregistered mark DIY, remarking, “itis in practice impossible to run a business in do-it-yourself products without using the letters DIY in a wholly
generic, descriptive way.” B & Q Plc v. Jolyon Orme, WIPO Case No. DBIZ2002-00084. The Panel isinclined to find similarly that a new gTLD intended for use by DIY manufacturers, retailers, and enthusiasts
may appropriately, even necessarily, use the generic acronym for the very products and activities in which
they are interested.
1

The Panel notes that the Respondent has promised to adopt rights protection mechanisms in its plans for overseeing the second-leveldomains that would be registered under the new gTLD string <.diy>.

page 6
Apart from the DIY mark, the other registered marks held by the Objector all add words, and in some cases
design elements, to DYI. This distinguishes the marks more successfully from the generic “DYI” acronym –and also from the proposed new gTLD string. The Respondent points out that the Objector’s most recently
filed trademark specimens, found on the USPTO database, display DIY NETWORK, not DIY alone. The
Panel also found only the marks with an additional word or words, predominantly DIY NETWORK, displayedon the documents submitted in the record of this proceeding and, indeed, on the Objector’s website, which is
at “www.diynetwork.com”. It is not evident, on the present record, that the DIY mark alone is widely
recognized as relating to the Objector’s programming or website or that a significant segment of the public
2
associates the “DIY” acronym, standing alone, with the Objector. Moreover, the Panel does not find that the
Respondent’s intended use of the applied-for new gTLD – which is solely comprised of the generic acronym“DYI” – would necessarily create a likelihood of confusion with the Objector’s other marks.
The Panel cannot conclude, on this record, that the applied-for new gTLD string <.diy> infringes the
Objector’s existing legal rights.
D. Conclusions
The parent companies of both parties clearly have an interest in operating the new gTLD string <.diy>, fordifferent purposes. The Objection can only be upheld if it meets the Guidebook standards, and the Objector“bears the burden of proof in each case.” Section 3.5. of Module 3 of the Guidebook. With that in mind, thePanel’s conclusions follow, on each of the factors for which the Guidebook (Section 3.5.2 of Module 3)
requires consideration in a case based on trademark rights.
1. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or meaning,to the Objector’s existing mark.
The new gTLD <.diy> is identical to the Objector’s registered DIY mark. It is similar in appearance andsound to the Objector’s other marks that include DIY, and it is similar in meaning to the extent that all of themarks, like the string itself, appear to use the acronym “DIY”, which represents the phrase “do it yourself” toa large segment of the English-speaking population.
2. Whether the Objector’s acquisition and use of rights in the mark has been bona fide.
It is undisputed in this proceeding that the Objector has lawfully acquired and used the various marks
incorporating DYI. It is not established on this record that the Objector currently uses the DYI mark alone.
The Panel finds that the Objector’s acquisition and use of rights in the DIY marks has been bona fide.
3. Whether and to what extent there is recognition in the relevant sector of the public of the sign
corresponding to the gTLD, as the mark of the Objector, of the Respondent or of a third party.
The record supports the conclusion that the mark DYI NETWORK is widely recognized and associated with
the Objector in connection with the Objector’s television programming and the related website (as well as
events and contests promoted on the television programs and website). However, the record does notsupport a conclusion that the DYI mark alone is widely recognized as relating to the Objector’s programmingor website. To the contrary, the record indicates that the acronym “DYI” alone is predominantly associatedwith common, generic, dictionary meanings referring to a range of activities, products, and services rather
than to the Objector’s television programming and website. Accordingly, based on the present record, thePanel does not find that “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.”

2

The Panel notes that a “jpeg” image where the DIY mark alone is displayed is referenced in and attached to Annex 5 to the Objection.

In the Panel’s view, this image alone is insufficient to establish that the DIY mark alone is widely recognized as relating to the Objector’s
programming or website or that a significant segment of the public associates the “DIY” acronym, standing alone, with the Objector.

page 7
4. 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 thatmark, and including whether the Respondent has engaged in a pattern of conduct whereby it applied for oroperates TLDs or registrations in TLDs which are identical or confusingly similar to the marks of others.
The Respondent does not deny prior awareness of the Objector’s marks but challenges their relevance, as
the Respondent sought to operate a new gTLD concerned with “DIY” in its generic sense. The record amply
demonstrates that “DIY” has both a trademark and a generic sense. It is undeniably used in the Objector’smarks, but it is also undisputed that “DIY” refers, among other things, to an industry sector with products andservices catering to the needs of “do it yourself” consumers. As discussed above, the Panel agrees with the
Respondent that it is possible to use the new gTLD string <.diy> without necessarily infringing the Objector’s
existing legal rights.
The Respondent has applied for more than a hundred new gTLD strings, most if not all of which appear to becomprised of dictionary words and common acronyms or abbreviations. There is no evidence in the record,or from a perusal of this list of applications, that the Respondent has engaged in a pattern of seeking tooperate gTLDs that are identical or confusingly similar to the marks of others.
5. Whether and to what extent the Respondent has used, or has made demonstrable preparations to use,
the sign corresponding to the gTLD in connection with a bona fide offering of goods or services or a bonafide provision of information in a way that does not interfere with the legitimate exercise by the objector of its
mark rights.
The Respondent has not used a sign corresponding to the new gTLD string <.diy> as a mark for goods orservices and denies any intention of doing so. The Respondent has described, in its application for the newgTLD string <.diy> and the Response, a plausible plan to use the string in its generic sense for an open newgTLD available for the construction of websites associated with second-level domains that could be operated
by “DIY” vendors, consumers, and information providers. For the reasons discussed above in Section 6.C.
“Infringement of the Existing Legal Rights of the Objector”, the Panel concludes that it is likely this can beaccomplished without necessarily infringing the Objector’s existing legal rights. Moreover, the Respondent’s
parent company, Google, has relevant experience in operating Internet services and has introduced
mechanisms on its hosted platforms through which “trademark owners can contact Google and discuss third
party use of their marks”. The Respondent has promised to adopt rights protection mechanisms in its plansfor overseeing the second-level domains that would be registered under the new gTLD string <.diy>.
6. Whether the Respondent has marks or other intellectual property rights in the sign corresponding to thegTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, has been bona fide,
and whether the purported or likely use of the gTLD by the Respondent is consistent with such acquisition or
use.
The Respondent does not claim intellectual property rights in the sign corresponding to the new gTLD string<.diy>. It seeks instead to use the string only in its generic sense.
7. Whether and to what extent the Respondent has been commonly known by the sign corresponding to thegTLD, and if so, whether any purported or likely use of the gTLD by the Respondent is consistent therewith
and bona fide.
The Respondent is not known by the sign corresponding to the new gTLD string <.diy> and plans to use it
only for its broad, generic signification.
8. Whether the Respondent’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 concludes on the available record that confusion in the marketplace is not likely, for thesereasons:

page 8-It is not evident, on the present record, to find that the DIY mark alone is widely recognized as relating
to the Objector’s programming or website or that a significant segment of the public associates the“DIY” acronym, standing alone, with the Objector.

-“DIY” is a common, generic, dictionary term, referring to an industry and a range of activities beyond
the television programming and related website operated by the Objector.

-

Many third parties – including retailers, manufacturers, analysts, reporters, and consumers – use the“DIY” acronym in connection with an array of products, services, crafts, hobbies, music, and domainnames that have nothing to do with the Objector.

-

The abundance of generic uses of “DIY” suggests that the acronym alone is not distinctive to the
Objector. The Objector has not demonstrated otherwise. The Objection does not include evidence
showing that consumers associate the “DIY” acronym distinctly with the Objector. The Objector’s
evidence concerning website visitors and social media contacts relates to sites on which the DIY
NETWORK mark is used, or other marks adding words to the acronym.

-

The Respondent’s planned use of the new gTLD string <.diy> is concerned with “DIY” in its genericsense and not focused on the products and services of a single company or the interests of aparticular “DIY” community. It is possible that the second-level domains registered under this newgTLD might compete with the Objector as “DIY” content providers but without the inclusion in theapplied-for string of distinguishing elements traditionally used in the Objector’s brands, such as“network”, the Panel finds it unlikely that the new gTLD string <.diy> itself would mislead Internet users
as to source or affiliation.

7. Decision
For the reasons discussed above, the Panel concludes that the Respondent’s intended use of the new gTLD
string <.diy> does not:(i)take unfair advantage of the distinctive character or the reputation of the Objector’s registeredtrademarks, or(ii)

unjustifiably impair the distinctive character or the reputation of the Objector’s marks, or(iii)

otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s marks.

The Objection is accordingly rejected.

[signed]W. Scott Blackmer
Sole Panel Expert
Date: August 12, 2013