ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
I-REGISTRY Ltd v. Vipspace Enterprises LLC
Case No. LRO2013-0014

1. The Parties
The Objector is I-REGISTRY Ltd. of Berlin, Germany, represented by Bettinger Schneider Schramm,
Germany.
The Respondent/Applicant is Vipspace Enterprises LLC incorporated in the United States of America with its
principal place of business in Munich, Germany (“Respondent”) represented internally.

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

3. Procedural History
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”).
The WIPO Center received a proposal from the Objector to consolidate the LRO Objections LRO2013-0014,
LRO2013-0015, LRO2013-0016, LRO2013-0017 and LRO2013-0018 on April 23, 2013. The Respondent
indicated opposition to aspects of the Objector’s consolidation proposal. In accordance with Article 12 ofProcedure and Paragraph 7(d) of the WIPO Rules for New gTLD Dispute Resolution, the WIPO Center did
not make a decision to consolidate the LRO Objections for purposes of Article 12(b) of the Procedure.
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the 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 10, 2013.

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The WIPO Center appointed Tony Willoughby as the Panel in this matter on June 10, 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 for New gTLD Dispute Resolution.
On June 13, 2013, the Objector, expressing surprise at some of the arguments raised in the Response by
the Respondent, sought the Panel’s leave to file a further submission. The Respondent objected by way ofan email to the WIPO Center on June 13, 2013 stating that the Procedure made no provision for further
filings. The Respondent contended that to accede to the Objector’s request would be particularly unfair
given the Objector’s refusal at an earlier stage to mediate the dispute.
On June 18, 2013, the WIPO Center informed the parties that the Panel was prepared to receive a further
submission from the Objector provided that (a) it was limited to matters in the Response that the Objector
could not reasonably have foreseen; and (b) the Objector explains why the Respondent’s offer of mediation
was rejected.
On June 19, 2013, the Objector filed its further submission, a Sur-Reply. The Panel has read it, but it
contains nothing that was not already evident to the Panel from the Objection and the Response and thePanel finds it difficult to accept that the points raised were not in fact foreseen by the Objector at the time of
the Objection. The Objector’s reason for not having accepted the Respondent’s offer of mediation (there
being six applicants for the <.vip> gTLD, mediation with only one of the applicants would have served nouseful purpose) seems to the Panel to have been a reasonable one. That is disputed by the Respondent in
its response to the Objector’s Sur-Reply dated June 21, 2013, but the Panel does not need to resolve thatissue in the context of this dispute. One new topic that was raised in the further submissions and giving rise
to dispute was as to the criteria that ICANN will regard as important when deciding upon the grant of the newgTLDs and whether or not the parties have met those criteria. This debate has nothing to do with the Legal
Rights Objection and the Panel does not need to address it.

4. Factual Background
The Respondent
The Respondent is a limited liability company incorporated in the State of Texas, United States of America
with its principal place of business in Munich, Germany.
The principal shareholder and President of the Respondent, Herbert Scheuerer, is the registered proprietorof Community Trade Mark (“CTM”) No. 010077998 DOTVIP (word) filed June 27, 2011 and registeredOctober 21, 2011 in classes 35 (Advertising; Business management; Business administration; Office
functions), 38 (Telecommunications) and 42 (Scientific and technological services and research and design
relating thereto; Industrial analysis and research services).
On November 1, 2011, Herbert Scheuerer granted to his company, the Respondent, an exclusive licence to
use the above CTM in Europe. For simplicity the Panel proposes to refer to this CTM as “the Respondent’s
trade mark”.
The Respondent’s New gTLD application for the <.vip> string was originally posted on June 13, 2012 under
Application ID: 1-851-9629. In that application the mission/purpose of the application was described in thefollowing terms: “DOTVIP (.vip) is the new Top Level Domain exclusively developed for very important
persons and very important projects.”
Elsewhere in the application it is made clear that that “exclusivity” is to be of limited scope: “The .vip TLD isavailable as an open registry. As well as a Sunrise Period, Founders’ Programs will be made available to a
restricted circle of users. Prior to General Availability, a global, top-down outreach initiative will ensure that
authorized registrants and internet users alike are aware of the TLD and its benefits.”

page 3The Respondent operates a website at “www.vipspaces.com”. Annexed to the Response are a number ofpages from the website featuring news items about international celebrities. Annex 7 features a noticereading “.VIP (DOTVIP) is to become the global Top Level Domain for VIPs – reserve a domain namewithout obligation now!” The notice is dated August 17, 2011.
The Objector
The Objector is a German company with its principal place of business in Berlin, Germany.
On July 29, 2011, the Objector’s parent company, i-content Ltd, filed application at the German Patent andTrade Mark Office for a German national registration of VIP (word). That application is still pending.
The Objector’s parent company is the registered proprietor of CTM No. 010437051 VIP (word) filed
November 22, 2011 and registered April 11, 2012 in classes 36 (Organization and management ofcollections; organization of charitable fundraising; monetary affairs and financial sponsorship andconsultancy, exclusively in the field of donations; organization and management of fundraising campaigns;
financial consultancy in the field of humanitarian relief operations and projects), 41 (Training and further
training consultancy; training and instructional services; organizing, arranging and conducting ofconference, seminars, tuition and workshops (training)), 44 (Therapeutic support and medical care; medical,
dental, psychological and veterinary services; healthcare; conducting medical, veterinary and clinicalstudies; hospitals, medical clinics and animal hospitals; hygienic and beauty care; animal grooming;
agriculture, horticulture and forestry) and 45 (Personal and social services rendered by others to meet theneeds of individuals, in particular within the framework of humanitarian relief operations; consultancy in thefield of humanitarian relief operations and projects; connection and management of internet domains).
On April 13, 2012, the Objector’s parent company granted to the Objector an exclusive licence to use thetrade mark and not limited to the countries covered by the registration. For simplicity the Panel proposes torefer to this CTM as “the Objector’s trade mark”.
On March 1, 2013, the CEO of the Objector’s parent company signed a document on behalf of that company
certifying that inter alia the Objector is an authorized licensee of the Objector’s trade mark registration, hasbeen authorized to apply for the New gTLD space, <.vip>, and to file Legal Rights Objections with regard tosome or all of the competing applications for the <.vip> gTLD space. Finally, the document certifies that the
Objector is authorized to manage and operate the <.vip> gTLD if it is successful in its application for thatspace.
The Objector’s New gTLD application for the <.vip> string was originally posted on June 13, 2012 under
Application ID: 1-1003-40726.
In this application the Objector described its plans in the following terms:“The .VIP TLD and its domain names are dedicated and thereby specialized to create identity andcontent, facilitate communication and foster business in connection with the VIPs. Until today there
are no specialized domain names available to this target group. The string is dedicated and thereby
specialized for the comparably small group of people and entities which are very important.”
As with the Respondent’s plans, the scope for the domain will not be as narrow as the description suggests.
The Objector describes its registration policy thus: “The .VIP space will operate following an unrestricted
registration model, meaning that no eligibility criteria or registration restrictions will be imposed uponprospective registrants in the space.”
The Objector operates websites at “www.i-registry.com” and “www.vip-registry.com”. The latter site isdevoted to the <.vip> gTLD in anticipation of the Objector succeeding with its application for the space. A
typical notice reads:

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“Celebrities stick together with VIP® - VIP® domain allocation ensures that only a select circle of clients may
register a VIP® domain. Managed personally by us, the namespace guarantees that both private individuals
and companies can enjoy on the internet exactly the same exclusivity and attention that they are used to in
their daily lives – thanks to VIP®.”

5. Parties’ Contentions
A. Objector
The Objector’s case is in essence very simple. It has rights in respect of a registered trade mark for VIP,
which is the applied-for gTLD, the Respondent’s planned use of the <.vip> gTLD includes domain nameregistration services, which are expressly covered by the Objector’s trade mark (“connection andmanagement of internet domains” in class 45) and if the Applicant is awarded the <.vip> gTLD, its operationof that domain will inevitably lead to confusion among Internet users as to the source, sponsorship, affiliation,or endorsement of the gTLD.
The Objector distinguishes itself from the Respondent on the basis that whereas operation of the <.vip>
gTLD and its current plans for that eventuality (as evidenced by screenshots from its website) are expressly
covered by the Objector’s trade mark, the Respondent’s trade mark “does not offer any protection withregard to the operation or management of a TLD, nor with the sale of second level domain names”.
Similarly, the Respondent’s website “does not promote any goods or services logically related to the DOTVIP
mark, and merely advertises the [Respondent’s] application for the .VIP TLD, the services it intends to offer
in connection with the TLD and provides some promotional material for charity-related causes.” The
Objector contends, in short, that the Objector’s trade mark gives the Objector a right to use the VIP mark in
relation to domain name registry services whereas the Respondent’s trade mark does not give to the
Respondent an equivalent right.
The Objector contends that the Respondent is not currently conducting any trade under and by reference toits DOTVIP trade mark.
Further, the Objector contends that when the Respondent filed its application for the <.vip> gTLD, it was on
notice as to the Objector’s rights, given that the application for the Objector’s trade mark had been filed bythen and was a matter of public record.
B. Respondent
The Respondent expressly denies the Objector’s contentions.
It points to the fact that the application for registration of the Objector’s trade mark post-dated the equivalent
date for the Respondent’s trade mark. Moreover, the Respondent’s trade mark rights date from
June 27, 2011 whereas the earliest filing date upon which the Objector can rely is the date of filing of its
parent company’s German national application just over a month later (July 29, 2011). It contends that its
rights are superior to those of the Objector.
The Respondent further contends (contrary to the contentions of the Objector) that its trade mark rights
cover its proposed activities in respect of the <.vip> gTLD. It refers to its “DOTVIP Footprint” which it
contends is already an online marketing activity within the scope of the Respondent’s trade mark registration
and “already established as a brand”. It refers to its website, which it contends “documents already how
many ‘DOTVIP Footprints’ an organization or person continuously leaves through philanthropic activities”.
In its response to the Objector’s Sur-Reply it produces an article said to have been written for its website,and states:“To date, the objector’s VIP trademark is not in active operation, whereas the DOTVIP trademark isseeing a steadily increasing popularity in the internet. There are indeed extensive contacts in thepage 5target market; in LinkedIn alone there are more than 1,000 people and companies in the field ofNPOs, celebrities and the entertainment industry connected with the President of VipspaceEnterprises LLC, Mr. Herbert Scheuerer (we would be happy to submit a detailed list). Anothercurrent, public example is the article by Mr. Daryl Upsall, CEO of Daryl Upsall Consulting International,
in our ‘DOTVIP Footprint Group’, on the DOTVIP Footprints’ publication "Elton John Record Collection
Reveals Hidden Treasures". As the active Fundraiser Director, he provides a detailed look at the"Elton John Aids Foundation" campaign. See screenshot from 20.06.2013(Annex_1_Elton_John_Comment_LinkedIn).”The Respondent states that its reason for applying for the <.vip> gTLD is “to present the service brand‘DOTVIP’ on the Internet with the corresponding top level domain …”
The Respondent contends that awarding the <.vip> gTLD to anyone other than the Respondent would leadto inevitable Internet user confusion.
The substantive part of the Response concludes in the following terms (verbatim):“Regardless of the higher priority of the brand ‘DOTVIP’ the registration of the word mark ‘VIP’ for theapplication to ICANN for a new TLD ‘vip’ will not be legally relevant. This, because the term ‘VIP’ is aworldwide established and descriptive acronym for ‘very important persons’. As such, the term “VIP
has no recognizable distinctiveness. Trade mark protection, however, has only a brand with anenough distinctiveness. A word mark has only enough distinctiveness if the word in question can not
be assigned to a in the foreground standing, descriptive term and/or as a word in use to a German or
known foreign language. Because of this background it will be also necessary to consider whether theword mark of the Objectors ‘VIP’ in general has trade mark protection. This especially because the
Objector currently has no active use of the word mark ‘VIP’ for a service or a product proven”.
As per Article 17 of the Procedure the Panel made a decision to allow the parties to submit written
statements in addition to the Objection and the Response. The Panel did not find the exchange of further
submissions to be of any significant assistance.

6. Discussion and Findings
Introduction
Pursuant to Paragraph 3.2.1 of the ICANN Applicant Guidebook (version 2012-06-04) (the “Guidebook”) aformal objection to an application for a New gTLD may be filed on any one of four grounds, one of which is
the Legal Rights Objection. The basis for a Legal Rights Objection is that “the applied-for gTLD string
infringes the existing legal rights of the objector”.
By virtue of Paragraph 3.2.2.2 of the Guidebook: “A rightsholder has standing to file a legal rights objection.
The source and documentation of the existing legal rights the objector is claiming (which may include either
registered or unregistered trademarks) are infringed by the applied-for gTLD must be included in the filing.”
Accordingly, for a Legal Rights Objection to succeed the Objector has to satisfy the Panel that it has relevant
existing legal rights and that use of the string comprising the potential new gTLD infringes those rights. In
this case the Objector relies upon its rights as a licensee in respect of the Objector’s trade mark, details of
which are provided in the Factual Background (Section 4 above).
Guidance as to how the Panel is to approach Legal Rights Objections is to be found in paragraph 3.5.2 of
the Guidebook, which reads as follows:“In interpreting and giving meaning to GNSO Recommendation 3 (‘Strings must not infringe the existing legal
rights of others that are recognized or enforceable under generally accepted and internationally recognizedpage 6principles 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 unregistered trademark or service mark (‘mark’) or IGO name oracronym (as identified in the treaty establishing the organization), or unjustifiably impairs the distinctive
character or the reputation of the objector’s mark or IGO name or acronym, or otherwise creates animpermissible likelihood of confusion between the applied-for gTLD and the objector’s mark or IGO name oracronym.”In substance, this wording bears a close similarity to the wording of Article 9.1 (“Rights conferred by aCommunity trade mark”) of Council Regulation (EC) No 207/2009, the law relating to Community trade
marks. This is useful considering that the basis for the Objector’s claim to an existing legal right is a
Community trade mark.
The Guidebook then goes on to provide that in the case where the objection is based on trade mark rights,
the panel will consider eight listed non-exclusive factors. The Panel will deal with each of these factors
further below.
The Objector’s Existing Legal Right
The Objector relies for its existing legal right upon CTM Registration No. 010437051 VIP (word) filed
November 22, 2011 and registered April 11, 2012 in classes 36, 41, 44 and 45 for the services set out in fullin the Factual Background at Section 4 above, covering inter alia organization and management ofcollections; organization of charitable fundraising; organizing, arranging and conducting of seminars,
healthcare; consultancy in the field of humanitarian relief operations and projects; connection andmanagement of internet domains.
The priority date for this registration is stated to be the date of an earlier application on July 29, 2011 for a
German national registration of the same mark. That application is pending and has not yet matured into a
registration.
The Objector is not the proprietor of the above CTM; nor is it the applicant for the German national
registration. The registered proprietor of the above CTM and the applicant for the German national
registration is the Objector’s parent company, i-connect Limited.
The Panel is satisfied that the above CTM is a relevant existing legal right upon which to found a Legal
Rights Objection. But is it a sufficient basis for this Objection by the Objector, which is merely a licensee?
The Panel believes that it is. As can be seen from the Factual Background (Section 4 above), the Objector
is the exclusive licensee of that CTM. Under most (if not all) other ICANN dispute resolution policies,
including the Uniform Domain Name Dispute Resolution Policy (UDRP), trade mark licensees andcompanies related to the trade mark owner are generally held to have rights in the trade mark or trade marks
in question [See, for example, paragraph 1.9 WIPO Overview of Panel Views on Selected UDRP Questions,
Second Edition]. The Objector has produced satisfactory evidence of the licence and the Panel sees noreason to depart from that approach.
A matter that has concerned the Panel has been the validity of the Objector’s trade mark. It is axiomatic thatwhile SOAP, for example, may be a perfectly satisfactory trade mark for cars, it cannot serve as a trade markfor the cleaning product “soap”. On that basis, how can VIP serve as a satisfactory trade mark for “VIP
services”, “VIP” being a common term used inter alia to describe a service of suitable quality for a very
important person? However, it is not for the Panel to look behind a trade mark registration which is on its
face valid and, as already observed, the specification of services makes no reference to the target audienceof very important persons.
The Panel finds that the Objector has a relevant existing trade mark right in respect of the trade mark, VIP.

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Trade Mark Infringement
The Objector contends that the Respondent cannot operate the <.vip> gTLD domain without infringing the
Objector’s trade mark.
The Objector contends that this Objection is valid and should be upheld because the potential use of theapplied-for gTLD by the Respondent:(i)takes unfair advantage of the distinctive character or the reputation of the Objector’s registered trade
mark;

(ii)

unjustifiably impairs the distinctive character or reputation of the Objector’s registered trade mark;and/or(iii)

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

If the Respondent is granted the <.vip> gTLD, necessarily, as contended for by the Objector, theRespondent will be using “VIP” in the course of trade. It will be using in the course of trade a sign, which is
identical to the Objector’s trade mark in relation to identical services. There can be no dispute between theparties on that score as the operation of the <.vip> gTLD will necessarily involve the Respondent in using the
top level domain identifier in the course of its “connection and management of internet domains”, being
services covered by the Objector’s registration in Class 45.
On the face of it, therefore, unless the Respondent is able to attack the validity of the trade mark (notsomething that the Panel feels it appropriate to address) or unless a defence is available to the Respondent
under the relevant trade mark legislation, the Respondent would be guilty of trade mark infringement.
Under most trade mark laws with which the Panel is familiar, an infringing use of a sign has to be a use
which is (or is likely to be taken to be) a trade mark use. In the SOAP example given above it is plain thatwhen one is concerned with common dictionary terms, much will depend upon the use to which the term is tobe put. If one sees the word “soap” used in an advertisement for soap, inevitably it will be taken to be adescription of the product being advertised rather than a brand. Accordingly, the mere fact that the word
may be registered as a trade mark for example for cars does not render every use of the word an infringing
use.
In most trade mark systems an honest descriptive use of a dictionary term is most unlikely to be found to be
an infringement of a trade mark registration of the term.
The Objector has produced an impressive array of evidence to demonstrate that while TLD identifiers suchas “.com”, “.net”, “.org” and the like have traditionally held no trade mark significance for anybody, public
perception is likely to change with the introduction of the new gTLDs, some of which will comprise very wellknown trade marks. The Objector has also been able to demonstrate that many gTLDs or would-be gTLDs
are already registered as trade marks in one shape or form. They include:
(a)
(b)
(c)
(d)
(e)
(f)

DOTAM (typed drawing) for inter alia “providing online directories for locating computer network
addresses … accessible through a global computer network”
DOTFM (typed drawing) for inter alia “providing online directories for locating computer network
addresses … accessible through a global computer network”
DOTCOOP (word) for inter alia “domain name registration services for others on a global computer
network”.NU DOMAIN (words) for inter alia “domain name registration services”.mobi (figurative) for inter alia “business administration and office functions all relating to domainnames”.tel (figurative) for inter alia “telecommunications services that use DNS (domain-names system)”

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(g)
(h)
(i)
(j)
(k)

.fr (figurative) for inter alia “technical management for the assigning of domain names and addresses
allocated to all computer equipment using a communication protocol”.ART (figurative) for inter alia “domain name registration services for identification of users …”.CLUB (word) for inter alia “operating online marketplaces for buyers and sellers of domain names”.Music (figurative) for inter alia “administrative services provided in connection with registration andallotment of Internet domain names …”.HOME (figurative) for inter alia “Domain name, reservation, registration, maintenance andmanagement services”.

The Objector has also been able to demonstrate that VIP is not only an acronym for “Very Important
Person(s)”. It also appears to be an acronym for, amongst many others, “ventral intraparietal sulcus in thelateral parietal 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 politicalparty).
However, none of that detracts from the basic proposition, acknowledged by both parties in their applications
for the <.vip> gTLD, that to the Internet community at large “VIP” is going to be seen to be a reference to“Very Important Persons”.
Having examined the parties’ applications to ICANN for the <.vip> gTLD and their planned uses of thedomain as evidenced by the material on their websites (see Factual Background at section 4 above), thePanel is satisfied that to the Internet community at large, the use of the <.vip> gTLD is most likely to be seen
as “an indication concerning the kind, quality, … intended purpose … of rendering of the service, or othercharacteristics of the … service”.
The Panel recognizes that there might be scope for infringement of the Objector’s trade mark at the second
level. However, the Panel is here concerned only with the top level.
The Panel is not able to find, on the evidence before it, that if the Respondent is awarded the new <.vip>
gTLD, the Respondent’s use of that domain, even for the registration of <.vip> domain names, will be likely
to infringe the Objector’s registered trade mark.
In coming to this conclusion the Panel has concentrated on the fundamental descriptive quality of the term
“VIP”. The Panel has not been influenced by the fact that the Applicant’s trade mark rights appear to have apriority date senior to that of the Objector (albeit for differing services).
The Panel rejects the Objector’s argument that its position is materially different to that of the Respondent
because the Respondent’s trade mark registration does not cover domain name registration services
whereas the Objector’s trade mark registration does. If the Panel is correct in its conclusion that the <.vip>
gTLD identifier will be seen as a descriptive indication rather than a trade mark, the scope of the parties’
respective trade mark registrations is irrelevant and, in any event, the Panel is not persuaded that theadvertising and telecommunications services covered by the Respondent’s trade mark will necessarily be
regarded as insufficient to cover to some degree its services as a domain name service provider.
In reaching the above conclusion, the Panel has considered the following non-exclusive list of eight factors.
The Panel addresses each of them in turn:i.

Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the Objector’s existing mark.

The Panel finds that the applied-for gTLD 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.

page 9It appears that the Objector’s acquisition and use (such as it is) of rights in the mark forms part of a strategy
to support its application for the <.vip> gTLD. Considering the broader circumstances of this case, the Panelfinds no basis to conclude that such acquisition and use was not 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 [respondent] or of a third
party.

While the parties have used the term, “VIP”, in various forms on their website to indicate the manner in which
the term will be used if they are successful in being awarded the domain, there is nothing before the Panel(beyond mere assertion) to show that either of them has yet traded under their marks sufficiently to displace
the primary descriptive meaning of the term and establish a brand or at all. The Panel finds that the Internet
community at large is likely to recognize the term “VIP” in the context of a gTLD as a descriptive term rather
than anybody’s trade mark.
iv.

Applicant’s [respondent’s] intent in applying for the gTLD, including whether the Applicant[respondent], at the time of application for the gTLD, had knowledge of the Objector’s mark, or could
not have reasonably been unaware of that mark, and including whether the Applicant [respondent] hasengaged 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 is satisfied on the evidence before it that the parties each applied for the <.vip> gTLD with thebona fide intention of operating the domain for commercial gain and for the benefit of Very Important
Persons and others wishing to be so labeled.
The Panel believes it to be probable that each of the parties was aware of the other’s trade markregistrations when filing their applications for the <.vip> gTLD. The Panel refers to the concluding passageof the Response quoted in full in Section 5B above. The Panel accepts that that reflects the honestly heldview of the Respondent and that there is no reason to question the Applicant’s bona fides.
The Objector has not suggested that the Respondent “has engaged in a pattern of conduct whereby itapplied for or operates TLDs or registrations in TLDs which are identical or confusingly similar to the marksof others” and there is nothing before the Panel to suggest otherwise.
v.

Whether and to what extent the Applicant [respondent] has used, or has made demonstrable
preparations to use, the sign corresponding to the gTLD in connection with a bona fide offering ofgoods or services or a bona fide provision of information in a way that does not interfere with thelegitimate exercise by the objector of its mark rights.

The Panel finds that the Respondent’s use to date of the term VIP, both descriptively and as part of its
registered trade mark, DOTVIP, is consistent with its stated aim of operating the <.vip> gTLD. The extent of
the use is not known to the Panel beyond what appears in the parties’ exhibited extracts from the
Respondent’s website. The Panel believes it likely that neither party is likely to make any substantial use of
the sign until confirmed as the operator of the domain.
vi.

Whether the Applicant [respondent] has marks or other intellectual property rights in the sign
corresponding to the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of
the sign, has been bona fide, and whether the purported or likely use of the gTLD by the Applicant[respondent] is consistent with such acquisition or use.

The Respondent has the benefit of an exclusive licence to use its President’s CTM, DOTVIP, details of whichappear in Section 4 above. The Panel finds that the acquisition of those rights was in line with the
Respondent’s bona fide intention of applying for the <.vip> gTLD. It is true, as the Objector points out, thatthe specification of services for this domain does not expressly refer to the operation of the <.vip> gTLD, butpage 10it does cover advertising and telecommunications services, which, in the view of the Panel, are apt. The
Panel finds that the criteria are met.
vii.

Whether and to what extent the Applicant [respondent] has been commonly known by the sign
corresponding to the gTLD, and if so, whether any purported or likely use of the gTLD by the Applicant[respondent] is consistent therewith and bona fide.

There is nothing before the Panel to demonstrate that the Respondent has been commonly known by the
sign.
viii.

Whether the Applicant’s [respondent’s] intended use of the gTLD would create a likelihood ofconfusion with the Objector’s mark as to the source, sponsorship, affiliation, or endorsement of thegTLD.

The Panel is satisfied that, as currently disclosed in the Respondent’s application to ICANN for the <.vip>
gTLD and in the screenshots from the Respondent’s website, the Respondent’s intended use of the gTLD
will lead to the gTLD being seen first and foremost as a descriptive term describing the purpose andcharacteristics of the domain (i.e. a domain for Very Important Persons). The Panel does not believe that
confusion with the Objector’s mark is likely.
Whether or not confusion of the kind contemplated occurs in time to come will depend largely upon whether
and how the Objector uses its trade mark if it is not awarded the domain and partly, no doubt, upon whether
the Respondent is able to create a brand out of the string.
Accordingly, the Objection fails. The Panel has come to its decision on the case papers and on the basis of
the terms of reference set out in the Guidebook.

7. Decision
The Panel finds that the potential use of the applied-for gTLD by the 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,or(ii) unjustifiably impair the distinctive character or the reputation of the Objector’s mark, or(iii) otherwise create an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s mark.
The Panel rejects the Objection.

[signed]Tony Willoughby
Sole Panel Expert
Date: July 4, 2013