ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Starbucks (HK) Limited v. Grand Turn LLC
Case No. LRO2013-0025

1. The Parties
The Objector/Complainant is Starbucks (HK) Limited of Hong Kong, China, represented by Dechert LLP of
the United Kingdom of Great Britain and Northern Ireland.
The Applicant/Respondent is Grand Turn LLC, of Bellevue, the United States of America, represented by
The IP & Technology Legal Group, P.C. dba New gTLD Disputes, of the United States.

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

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”).
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 Applicant of the
Objection, and the proceedings commenced on April 17, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center on
May 18, 2013, with Annexes A and B missing.
On May 22, 2013, the WIPO Center requested the Applicant to submit missing Annexes A and B to its
Response. On May 27, 2013, the Applicant submitted new Annexes which were not included in its original
filing.
On May 30, 2013, the Objector emailed the WIPO Center stating that the Annexes sent by the Applicant on
May 27, 2013 were a wholly new and different set of Annexes to the Annexes sent on May 18, 2013 as partof the filed Response. The Objector submitted that the new Annexes were filed out of time and should notpage 2be accepted by the WIPO Center to put before the Panel. The Applicant responded to the Objector’s
submission stating the original Annexes had been included in error and the new Annexes were submitted in
response to a request from the WIPO Center. The WIPO Center noted these submissions for the Panel.
The WIPO Center appointed Susanna H.S. Leong as the Panel in this matter on June 18, 2013. The Panelfinds that it was properly constituted. The Panel has submitted the Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance with
Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.

4. Factual Background
The Objector, Starbucks (HK) Limited, in this administrative proceeding has adduced evidence to show that
it is the registered trade mark owner of a number of trade marks which consist of or include the word NOW,
but not limited to NOW and NOW TV in Hong Kong, China, India, Canada, USA, Japan, Indonesia, Kuwait,
Philippines, Taiwan, Thailand and Saudi Arabia (“the Trade Mark”). The Objector is a member of the PCCW
Group of companies and is a wholly owned subsidiary of PCCW Limited which is also incorporated in
Hong Kong. The Objector is a non-trading, asset holding company within PCCW and owns all of PCCW’srights in and to the said trademarks whether registered, acquired through use or otherwise. As part of its
multimedia and entertainment offerings, PCCW operates an IPTV (Internet Protocol Television) operation in
Hong Kong called Now TV. The Objector has adduced evidence to show that PCCW’s Now TV platform, atleast up to 2007, was the world leader in IPTV and was publicly recognized as such. The Objector hasthadduced evidence to show that as of 2009, PCCW’s Now TV was the 8 largest IPTV operation in the worldin terms of users. The Objector has adduced further evidence to show that at present, Now TV is one of thelargest pay TV operator in Hong Kong and enjoys a subscription of more than 1,165,000 users.
The Applicant, Grand Turn LLC, is wholly owned by Donuts Inc., a company incorporated for the purpose of
acquiring and operating new generic top-level domains under ICANN’s New gTLD Program officiallylaunched in July 2011. Through subsidiary entities such as the Applicant, Donuts Inc. has applied for 307
new gTLDs and has paid more than USD 55 million in application fees.

5. Parties’ Contentions
A. Complainant
The Objector contends that its Objection is valid and should be upheld as the potential use of the applied-for
gTLD by the Applicant (i) takes unfair advantage of the distinctive character or the reputation of the Trade
Mark; and (ii) unjustifiably impairs the distinctive character of the reputation of the Objector’s Trade Mark;and (iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s Trade Mark.
(i) Takes unfair advantage of the distinctive character or the reputation of the Trade MarkThe Objector contends that the use of the applied-for gTLD by the Applicant will take unfair advantage of the
distinctive character of the Trade Mark because it will be associated with the Objector’s well recognized andremembered Trade Mark. The Objector has adduced evidence to show that the Objector’s Trade Mark is
globally recognized as one of the leading Trade Mark in the global IPTV market and thus, enjoys a massive
reputation. The Objector further contends that the services which the Applicant will be providing in relation to
the applied-for gTLD are Internet related and are therefore highly similar, if not identical to the IPTV services
provided by PCCW under the Trade Mark. In view of the overlap of the services, the Objector contends that
the Respondent’s proposed used of the applied-for gTLD will draw business to the Applicant’s gTLD platform
as a result of the goodwill and reputation in the Trade Mark and consequently taking unfair advantage of the
Objector’s rights in the Trade Mark. The Objector further contends that it will be open for third parties toregister second-level names on the applied-for <.now> gTLD for words such as TV, IPTV, Sports and News

page 3
which are readily associated with the Trade Mark and PCCW’s Now TV service. This will in turn draw
Internet users to these domain names as a result of the goodwill and reputation in the Trade Mark taking
unfair advantage of the Objector’s rights in the Trade Mark.
(ii) Unjustifiably impairs the distinctive character of the reputation of the Objector’s Trade MarkThe Objector contends that the applied-for gTLD is identical to the Trade Mark and the services to beprovided by the Applicant in relation to the applied-for gTLD are highly similar, if not identical to the IPTV
services provided by PCCW under the Trade Mark. As such, the Objector contends that the Applicant’s useof the applied-for gTLD will lessen the Objector’s ability to identify and distinguish its services from its
competitors and prejudices the distinctive character of the Objector’s Trade Mark. The Objector further
contends that the mere registration of the applied-for gTLD by the Applicant and not the Objector will render
the Objector’s Trade Mark not as unique as it was prior to the registration by the Applicant. This results in
detriment to the Trade Mark by dilution of the distinctive character of the Trade Mark and thus unjustifiably
impairs the distinctive character of the Objector’s Trade Mark. The Objector also contends that PCCW
enjoys an excellent reputation as a result of the very high quality services it provides under the Trade Mark.
However, there is no assurance that the Applicant will provide the same high quality of service which therelevant public have come to expect from and associate with the services provided under the Trade Mark.
Therefore, any use of the applied-for gTLD which does not meet the very high standards expected under the
Objector’s Trade Mark will unjustifiably impair the reputation of the Trade Mark which PCCW has worked
hard to establish. Finally, the Objector contends that the fact the Applicant will manage the registration of
second-level names in the applied-for gTLD will result in the Objector losing a significant amount of control
over its Trade Mark because it will not be able to prevent the registration of words as second-level names
nor control the content of the websites at those domains which the Objector felt would tarnish the reputationof the Trade Mark or otherwise impair its distinctive character.
(iii) Otherwise creates an impermissible likelihood of confusion between the applied-for gTLD andthe Objector’s Trade MarkThe Objector contends that the identity between the Trade Mark and the applied-for gTLD and the identity or
high similarity between the services provided under the Trade Mark and the services to be provided by the
Applicant in relation to the applied-for gTLD leads to an inevitable likelihood of confusion between theapplied-for gTLD and the Objector’s Trade Mark as to the source, sponsorship, affiliation or endorsement of
the gTLD. The Objector contends that given the international reputation of the Objector’s Trade Markparticularly in the IPTV sector, it is inevitable that Internet users will be confused into believing that theapplied-for gTLD is registered to, operated, endorsed, sponsored or authorized by, or affiliated to the
Objector. The Objector further contends that this likelihood of confusion is significantly elevated given theenhanced distinctiveness of the Trade Mark which has been acquired through extensive use over more thana decade.
B. Applicant
The Applicant contends that the Objection is invalid and should be overruled as the potential use of theapplied-for gTLD by the Applicant (i) does not take unfair advantage of the distinctive character or the
reputation of the Trade Mark; and (ii) does not unjustifiably impair the distinctive character of the reputationof the Objector’s Trade Mark; and (iii) does not otherwise create an impermissible likelihood of confusion
between the applied-for gTLD and the Objector’s Trade Mark.
The Applicant contends that the Objector fails to satisfy its burden of proof under the standards required set
out in the Attachment to Module 3 of the New gTLD Applicant Guidebook, the Procedure, and the WIPO
Rules for New gTLD Dispute Resolution. The Applicant contends that the Objector’s Trade Mark has no
distinctive character and there is no evidence of infringement. The Applicant contends that its proposed useof the <.now> gTLD would not infringe any legitimate right of the Objector because the Objector employs its“NOW TV” trade mark on a limited basis in connection with its provision of television services in Hong Kong.
The Objector has provided little, if any, real evidence that consumer confusion will occur and the Objector’spage 4contentions are based on the possibility of infringement which the Applicant argues is not sufficient to meet
the burden of proof under this administrative proceeding. The Applicant contends that the ICANN New gTLD
program opens more avenues of communication and consumer choice and brings competition to registries.
In summary, the Applicant contends the following:
1.
2.
3.
4.
5.

6.
7.
8.

The applied-for gTLD is not similar in appearance, sound or meaning to the mark claimed by the
Objector;
The Objector has used its mark on a limited basis;
The Objector fails to prove public recognition of the sign corresponding to the applied-for <.now>
gTLD as the mark of the Objector as opposed to third parties;
The Objector is unable to demonstrate improper intent on the Applicant’s part in applying for the<.now> gTLD;
The Applicant has prepared to use the sign corresponding to the applied-for <.now> gTLD inconnection with providing bona fide access to information on the Internet that does not interfere withany legitimate rights of the Objector;
The Applicant has rights in the sign corresponding to the applied-for <.now> gTLD by virtue of its
application to ICANN;
The Applicant’s proposed bona fide use of the sign corresponding to the applied-for <.now> gTLD isconsistent with the rights it has acquired by virtue of its application to ICANN;
The Applicant’s intended use of the applied-for <.now> gTLD creates no likely confusion with the
Objector’s claimed mark as to the source, sponsorship, affiliation or endorsement of the gTLD.

6. Discussion and Findings
According to New gTLD Applicant Guidebook (v.2012-01-11) (the “Guidebook”) Module 3, Article 3.5, eachpanel will use appropriate general principles (standards) to evaluate the merits of each objection. It is also
stated that the Objector bears the burden of proof in each case.
The Objector has elected the Legal Rights Objection standards in its Objection to the applied-for <.now>gTLD. Accordingly, the standards to be applied by the Panel are set out in Article 3.5.2 of the Guidebook
Module 3, whether potential use of the applied-for gTLD by the Applicant (i) takes unfair advantage of the
distinctive character or the reputation of the Objector’s registered or unregistered trademark or service mark(“mark”); and/or (ii) unjustifiably impair the distinctive character or the reputation of the Objector’s mark;and/or (iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s mark. It is further stated in Article 3.5.2 that reference is made to “general accepted andinternationally recognized principles of law” in the determination of whether the Objection or the Response is
to be upheld based on the standards stated therein.
After considering the evidence adduced by both the Objector and the Applicant, the Panel concludes that the
Objection should be dismissed given that that the potential use of the applied-for gTLD by the
Applicant/Respondent does not:(i)take unfair advantage of the distinctive character or the reputation of the Objector’s registered or
unregistered trademark or service mark (“mark”), and/or(ii)

unjustifiably impair the distinctive character or the reputation of the Objector’s mark, and/or(iii)

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

The Panel has considered the following non-exclusive factors.

page 5(i) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the objector’s existing mark.
In assessing whether the Applicant’s applied-for <.now> gTLD is similar to the Objector’s Trade Mark, thePanel has considered the visual, aural or phonetic and conceptual similarities between them and whether the
Objector’s Trade Mark is distinctive. Whether the Applicant’s applied-for <.now> gTLD is similar to the
Objector’s Trade Mark is considered from the viewpoint of the average Internet user who exercises somecare and good sense in its search for goods and services in the Internet.
The Objector’s Trade Mark consists of the word NOW (and in some other instances, other terms such as TV,
KIDS, NEWS etc.) together with various design elements such as font and colours, whilst the applied-for<.now> gTLD by the Applicant consists only of the word NOW. As such, the two cannot be identical.
However, to the extent that a word mark can be compared to a design mark, the Panel finds that the appliedfor <.now> gTLD bears some similarity to the Objector’s Trade Mark which incorporates the word “now”.
(ii) Whether the objector’s acquisition and use of rights in the mark has been bona fide.
The Objector has adduced evidence to show that it is the registered trade mark owner of the Trade Mark
which consists of or includes the word NOW, but not limited to NOW and NOW TV in Hong Kong, China,
India, Canada, USA, Japan, Indonesia, Kuwait, Philippines, Taiwan, Thailand and Saudi Arabia. The Panelthus finds that the Objector’s acquisition and use of rights in the Objector Trade 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.
A key issue in this case is whether and to what extent the word NOW in the applied-for <.now> gTLD hascome to be associated in the minds of the relevant public with the Objector’s NOW related Trade Marks. The
Panel finds for the purposes of this Procedure that “the relevant sector of the public” refers to the average
Internet users who exercise some care and good sense in their search for goods and services in the Internet.
The Objector has adduced evidence in an attempt to show that the Objector’s Trade Mark is globally
recognized as one of the leading Trade Mark in the global IPTV market and thus, enjoys a massive
reputation. However, the Panel finds that the Objector has primarily operated its IPTV business in Hong
Kong and although the Objector may have enjoyed substantial notoriety or fame in Hong Kong, it has notdischarged the burden of proof that its Trade Mark enjoys widespread fame outside of Hong Kong and in therest of the world. The fact that the Objector’s Trade Mark has been registered in several countries in theworld does not automatically mean that the Objector’s Trade Mark enjoys worldwide recognition and fame in
the relevant sector in the public, particularly in the Internet. One important factor which must be taken into
account is the relatively low distinctiveness of the Objector’s Trade Mark in that it consists of an ordinary
English word NOW and consequently, the burden of proof showing that the average Internet users who
exercise some care and good sense in their search for goods and services in the Internet associate theapplied-for gTLD <.now> with the Objector’s Trade Mark is a very heavy one which the Objector has not
successfully discharged. Another important factor is the fact that there exist other proprietors who use theword “now” in distinguishing their goods or services. Examples include “NOW foods” (Hong Kong); “NOW
magazine” (UK); and “Optus TV NOW” (Australia). Again, the burden is on the Objector to demonstrate thatthe average Internet users who exercise some care and good sense in their search for goods and serviceson the Internet associate the applied-for <.now> gTLD only with the Objector’s Trade Mark. This burden has
not been discharged by the Objector.
The Panel finds that the recognition in the relevant sector of the public of the sign corresponding to thegTLD, as the mark of the Objector is too geographically limited in light of the ordinary generic English
meaning of the word “now”.

page 6(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 accepts the evidence adduced by the Applicant which shows that its parent company, Donuts
Inc., (“Donuts”) is a company incorporated for the purpose of acquiring and operating new generic top-leveldomains under ICANN’s new gTLD program. To date, the parent company of the Applicant has applied for
307 new gTLDs and has paid more than USD 55 million in filing fees. The Objector has not shown that 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
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.
The Panel finds that the Applicant has made demonstrable preparations to use the sign corresponding to thegTLD 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 based on thefollowing reasons:a.

The Applicant’s parent company Donuts has expended substantial financial resources (more than
USD 55 million) in the registration of 307 new gTLDs and consequently, it is in Donuts’ interest to
carefully and legitimately operate the selected gTLDs.

b.

The Applicant’s parent company Donuts has stated in its application to ICANN for the <.now> gTLD
that “this TLD is attractive and useful to end-users as it better facilitates search, self-expression,
information sharing and the provision of legitimate goods and services. Along with the other TLDs in
the Donuts family, this TLD will provide Internet users with opportunities for online identities andexpression that do not currently exist. In so doing, the TLD will introduce significant consumer choiceand competition to the Internet namespace – the very purpose of ICANN’s New TLD program”.

c.

The Applicant’s parent company Donuts has stated in its application to ICANN for the <.now> gTLD
that it will employ and enforce terms and conditions that prohibit unlawful conduct and it reserves thatright to delete second level domain names used for such behavior. In particular, Donuts has voluntarily
committed in its application (for second-level names in this new gTLD) to taking eight more protective
steps, in addition to the 14 that ICANN already has imposed over and above what it demands ofexisting gTLD operators specifically:
i.
ii.
iii.
iv.
v.
vi.
viii.

d.

periodic audit of WhoIs data for accuracy;
remediation of inaccurate WhoIs data, including takedown, if warranted;
a new Domain Protected Marks List (DPML) product for trade mark protection;a new Claims Plus product for trade mark protection;
terms of use that prohibit illegal or abusive activity;
published policies and procedures that define abusive activity; andproper resourcing for all of the functions above.

The Objector has contended that as the Applicant would manage the registration of second-level
names in the applied-for <.now> gTLD this would take unfair advantage of and or unjustifiably impairs
the distinctive character or the reputation of the Objector’s Trade Mark particularly if the Applicant
allows the use of negative terms like “poor”, “useless”, “weak” or words such as TV, IPTV, Sports,
Business and News etc. However, the Panel finds that the there is no evidence in the present record

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which shows that Applicant will use or will allow the use of such second-level names in the applied-for<.now> gTLD.
(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 has not claimed any trade mark or other intellectual property rights in the sign corresponding
to the gTLD.
(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.
There is no evidence that the Applicant has been commonly known by the sign corresponding to the gTLD.
However, the Panel finds that there is no evidence that the purported or likely use of the gTLD by the
Applicant is not bona fide.
(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.
In considering 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, the Panel has totake into account to the following factors: the distinctiveness of the Objector’s Trade Mark; the similarities
between the applied-for <.now> gTLD and the Objector’s Trade Mark; the proximity of goods and orservices between the Objector’s Trade Mark and the Applicant’s intended use of the gTLD; and theevidence of actual confusion in the relevant sector of the public.
The Panel has found that the Objector’s Trade Mark is low in distinctiveness and that the applied-for gTLD is
not identical, but to the extent that a word mark can be compared to a design mark that the applied-for<.now> gTLD bears some similarity to the Objector’s Trade Mark which incorporates the word “now”. Having
said this, it is clear that the Objector operates in the IPTV sector and uses the Trade Mark to market
television services. On the other hand, the Applicant’s applied-for <.now> gTLD may be used in many otherareas such as social, educational and informational and not necessarily involving goods and services.
Furthermore, the Panel finds that the Objector has not proved that there is recognition in the relevant sectorof the public (i.e. the average Internet users who exercise some care and good sense in their search forgoods and services in the Internet), of the sign corresponding to the gTLD, as the Trade Mark of the
Objector. There is also no evidence of actual confusion in the relevant sector of the public.
Thus, the Panel finds that the Applicant’s intended use of the gTLD is not likely to create a likelihood ofconfusion with the Objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.

7. Decision
After considering the evidence adduced by both the Objector and the Applicant, the Panel concludes that the
Response is valid and should be upheld for the following reasons that the potential 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 (“mark”); or(ii)

unjustifiably impair the distinctive character or the reputation of the Objector’s mark; orpage 8(iii)

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

For the foregoing reasons, the Panel dismisses the Objection.

[signed]Susanna H.S. LEONG
Sole Panel Expert
Date: August 13, 2013