ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Starbucks (HK) Limited v. One.com A/S
Case No. LRO2013-0028
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 One.com A/S of Copenhagen, Denmark, represented by Crowell & Moring, ofBelgium.

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

3. Procedural History
The Legal Rights Objection (“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 New 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”).
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 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 16, 2013.
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.
All other procedural requirements appear to be satisfied.

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4. Factual Background
The Objector was incorporated on June 15, 1993. It is a non-trading, asset holding company wholly owned
by PCCW Ltd (“PCCW”), which is also incorporated in Hong Kong. The Objector and PCCW between themhold a trademark portfolio for marks which include the word NOW and NOW TV. The earliest trademark
registration by the Objector appears from the evidence to have been in Kuwait on 28 June 2000 for a stylized
form of NOW in a device, and the earliest registration in Hong Kong for that device was on 23 March 2005.
There are earlier registrations for device marks in which the word NOW is prominent but not the sole word,
including January 5, 2000 in Bahrain for NOW NETWORK OF THE WORLD in class 45. The Objector also
owns a portfolio of 153 active domain names which consist of or include the word NOW.
PCCW operates an Internet Protocol Television (IPTV) business in Hong Kong known as NOW TV which
offers over 190 channels of local, Asian and international programming, including premium sports andmovies and a range of interactive services. These channels include nine “Now Sports” channels and ”Now
News” and PCCW has registered trademarks in Hong Kong for both of those channel designators as well as
many other variants that relate to its IPTV activities, channels and content. The NOW TV platform isaccessible through “www.now.com” and “www.now-tv.com”.
NOW TV is the largest IPTV operator in Hong Kong and reaches more than 1.165 million subscribers.
Moreover, in 2007 NOW TV had more users than any other IPTV operation in the world. Its 2012 annual
turnover for the TV and content/media business was approximately USD 362 million, and for the same year it
spent USD 8 million advertising NOW TV. Since 2009 NOW TV programming has been shown on many
international airlines: Cathay Pacific, Dragonair, Hong Kong Express, Hong Kong Airlines, Singapore
Airlines, Qantas, United Airlines, Malaysia Airlines, Virgin Atlantic, China Airlines, Qatar Airways and Royal
Brunei Airways. In addition to its application for the <.NOW> string the Objector also applied for <.NOWTV>
as a gTLD.
The Respondent is a company incorporated in 2002 under the laws of Denmark. It is a supplier of web
hosting services and domain names which today has more than 900,000 customers in 149 countries. In
addition to its application for the <.NOW> string the Respondent applied for <.ICU> and <.ONE> as gTLDs.
Altogether six applications for the <.NOW> string have been made including the applications by the Objector
and the Respondent. The Objector has filed objections against each of the other five applications for the<.NOW> string. None of those objections has been consolidated and none has yet been the subject of apublished determination.
5. Parties’ Contentions
A. Objector
The Objector first of all claims standing based on (i) registered trademark rights, and (ii) goodwill, reputation
and unregistered trademark rights, in the name NOW (the “NOW Mark”). In addition to its ownership of the
153 active domain names referred to in Section 4 above, the Objector claims to own all of PCCW’s rights in
the NOW Mark whether registered, acquired through use or otherwise.
The Objector submits that the potential use of the applied-for gTLD by the Respondent falls foul of thestandards prescribed in Module 3 because it:
(i)
(ii)
(iii)

takes unfair advantage of the distinctive character or the reputation of the NOW Mark;unjustifiably impairs the distinctive character of the reputation of the NOW Mark; andotherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
NOW Mark.

Its arguments on these three standards, including the eight non-exclusive factors referred to in Section 3.5.2
of Module 3, can be summarized as follows.

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An important part of the Objector’s own application for the <.NOW> gTLD is to properly safeguard andexpand the NOW Mark and to promote the <.NOW> gTLD to become globally recognized as an innovativeand online media and infotainment platform. The establishment of the <.NOW> gTLD safeguards theintellectual property in the NOW Mark and enables opportunities for future expansion of the business.
The applied-for gTLD is identical in all respects including but not limited to visual, phonetic and conceptual
elements to the NOW Mark. It is also confusingly similar to the Objector’s NOW TV mark given that thesuffix “TV” is, for English speakers, descriptive and non-distinctive. It has no trademark significance andtherefore the dominant and distinctive element of this mark is the word NOW.
The Objector’s use of the NOW Mark for more than a decade has clearly been bona fide and the evidence
demonstrates that there is recognition of the NOW Mark in the relevant sector of the public.
The Respondent has made no preparation to use the NOW Mark in connection with any offering of goods orservices or the bona fide provision of information. There is no reference whatsoever in the Respondent’s
mission statement in its gTLD application of any use of the NOW Mark. The Respondent has not made any
use of the NOW Mark in the past. If the Respondent had previously used the NOW Mark the Respondent
would have mentioned it. The Respondent has no rights or legitimate interests in respect of the NOW Mark.
Prior to filing the Objection the Objector’s lawyers conducted a global search which revealed that the
Respondent does not own any registered trademarks which consist of or include the word NOW. There wasalso no evidence of the Respondent having developed any unregistered rights or rights of any other kind in
the word NOW.
The Respondent’s name does not include the NOW Mark or anything similar and it is not commonly known
by that mark. The Objector has not licensed or otherwise permitted or authorized the Respondent to use the
NOW Mark.
The use of the <.NOW> gTLD by the Respondent will take unfair advantage of the distinctive character of
the NOW Mark because it will be associated with the Objector’s well-recognized and remembered NOW
Mark. This will unjustifiably give the Respondent’s services some of the lustre of the Objector’s excellent andglobally recognized IPTV services, and will also be more easily and cheaply established in the minds ofmembers of the relevant section of the public. That advantage is undeserved and unfair.
The evidence shows that the NOW Mark is globally recognized as one of the leading trademarks in the
global IPTV market and as such it has a massive reputation. The services which the Respondent will be
providing in relation to the <.NOW> gTLD are Internet related and therefore highly similar, if not identical to,
the IPTV services provided by PCCW under the NOW Mark, including through its “nowPlayer app”. Given
the overlap of services the Objector submits that the Respondent’s proposed use of the <.NOW> gTLD willdraw business to the Respondent’s gTLD platform as a result of the goodwill and reputation in the NOWMark thereby taking unfair advantage of the Objector’s rights in the NOW Mark. The potential for thirdparties to register second-level domain names under the <.NOW> gTLD such as Sports, News, TV and thelike is high.
The mere registration alone of the <.NOW> gTLD by the Respondent would mean that the NOW Mark is notas unique as it was prior to the registration. This causes detriment to the NOW Mark by deleting its
distinctive character and thereby unjustifiably impairing its distinctive character.
There is no guarantee that the services proposed to be provided by the Respondent under the <.NOW>
gTLD will be at the same level of the relevant public have come to expect from and associate with theservices provided under the NOW Mark. Realistically it is extremely unlikely that the Respondent will provide
a quality of service which comes close to matching that provided by the Objector in the course of creating its
internationally acclaimed service under the NOW Mark. Inevitably any use which does not meet these very
high standards will unjustifiably impair the reputation of the NOW Mark which PCCW has worked so hard topage 4
establish over more than a decade.
Furthermore, given that the Respondent would manage the registration of second-level domains under the<.NOW> gTLD, the Objector would lose a significant amount of control over the NOW Mark since it would
not be able to prevent registration of second-level domains, nor control the content of the website at thosedomains, which it feels would tarnish the reputation of the NOW Mark or otherwise impair its distinctive
character. The loss of control over the NOW Mark in this manner is both unwarranted and unfair. This is so
no matter what processes the Respondent might put in place to protect against the abuse of trademark rights
as these processes take time to run their course.
The close identity between the NOW Mark and the applied-for <.NOW> gTLD, and between the services
provided under the NOW Mark and services to be provided by the Respondent in relation to the <.NOW>
gTLD, leads to an inevitable likelihood of confusion between the NOW Mark and the <.NOW> gTLD. This isparticularly so given that both services operate exclusively through the Internet, exist solely because of theInternet, and relate fundamentally to the Internet.
The likelihood of confusion is elevated given the enhanced distinctiveness of the NOW Mark acquired
through vast use over more than a decade. Where there is use of an identical mark to a distinctive mark in
relation to identical or highly similar services there can be no reasonable prospect of successfully arguingthat there is no likelihood of confusion. Such a likelihood of confusion should not be permitted because to doso would run contrary to long established principles of intellectual property law.
B. Respondent
The Respondent prefaces its substantive submissions on the standards by submitting that ICANN designed
the objection process to protect certain legitimate rights, while also ensuring that objectors could not preventthe delegation of legitimate top-level domains. Accordingly, it is important to apply the criteria as written, andnot in an overbroad way that unnecessarily interferes with the delegation of the applied-for gTLD.
The Objector is trying to use the Procedure to block an application for a commonly used word based entirelyon alleged figurative or design trademark rights that, at best, it used in a limited geographic area and inconnection with very specific services that are not even remotely related to the purported [sic] use of thegTLD by the Respondent. Such use of the Procedure by the Objector is diametrically opposed to the very
purpose of ICANN’s New gTLD Program.
Although the Objector claims to own registrations for NOW as a word mark, all of the trademarks listed by
the Objector are either a combination of the word NOW together with one or more words and/or are afigurative or design mark including the word NOW in a well-defined format. It is these further words or these
design and other elements that may create what little distinctiveness may exist for the NOW Mark.
Moreover, it is apparent that the applied-for gTLD is not identical to the NOW Mark because the NOW Mark
does not comprise merely the single word NOW.
The Objector also cites in its evidence a number of trademarks which are not registered in the name of the
Objector. Although the Objector claims to be a wholly-owned subsidiary of PCCW, it has produced noevidence to substantiate that and nor has it produced evidence of its relationship with other PCCW entities inwhose name many of the trade marks relied upon by the Objector are registered. Similarly, the Objector
alleges that marks were assigned to it but has produced no evidence of any such assignment.
Although the Objector argues that the NOW Mark is distinctive, it conspicuously and deliberately fails to
acknowledge that in late 2012 the High Court of England and Wales, after considering the dictionary
definition of the word NOW and the widespread use of that word in the telecommunications industry, foundthat Objector’s Community Trade Mark (“CTM”) registration for NOW was descriptive and invalid (seeStarbucks (UK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 1842). In addition, a cancellation of
all related CTMs registered by the Objector is pending before the OHIM. The Objector’s failure to mention
the judicial and other findings of invalidity of the NOW Mark cannot be considered fair or bona fide especiallypage 5
because the invalidity relates to the territory in which the Respondent is active.
There are numerous listings for current trademark registrations in Europe and the United States of America
incorporating the word NOW that are owned by third parties. In opposition proceedings in the United States,
the Objector has argued that, as a result of several other trademark registrations incorporating NOW in the
United States, there was no likelihood of confusion between the NOW Mark and these other trademarks,
given the difference in “overall commercial impression”. Now the Objector seems to have reversed its
position, by claiming that the NOW Mark is distinctive and sufficient to prevent the delegation of the appliedfor gTLD irrespective of the completely different “overall commercial impression” between the NOW Markand the applied-for gTLD.
The Respondent relies upon internationally accepted principles of trademark law to challenge thedistinctiveness of the NOW Mark. Essentially it argues that the word NOW is not inherently adapted to
distinguish the goods or services of the Objector from the goods or services of the Respondent or any other
legitimate trader. The Respondent goes on to rely upon the dictionary definition of the adverb NOW toestablish the wide range of contexts in which the word is used and to support its contentions as to thegeneric nature of the word. It also cites the unchallenged evidence of Dr Adam Kilgarriff, an expert in thefields of lexicography and lexical computing, who gave evidence in the High Court case referred to above,rdthat the word NOW is the 73 most common word in the English language. There was also evidence thatthe word NOW can be used as an adjective as well as in its more usual sense of connoting the present.
The Respondent argues that before the NOW Mark can be said to enjoy a wide reputation, a knowledge
threshold requirement must be met. This implies at a qualitative level a certain degree of knowledge
amongst the public and in the context of the applied-for gTLD, this must be a geographically widespread
public. None of the Objector’s evidence adduced before the Panel, including a market overview, casestudies, reports and press coverage, either on their own or in combination with other documents, supports afinding that the NOW Mark has a reputation. Indeed, none of the documents refer to the NOW Mark as such
but refer variously to NOW TV or to PCCW. None of them show that the NOW Mark is known by asignificant portion of the public concerned. At most, NOW TV is known by IPTV customers in Hong Kong. It
is simply not known in other markets.
To take unfair advantage of the distinctiveness or repute of the NOW Mark the Respondent would have tobenefit from the attractiveness of the earlier right by misappropriating its attractive powers and advertisingvalue or exploiting its reputation, image and prestige. Since the NOW Mark is not distinctive and has no
repute the Respondent could not benefit from its repute or distinctiveness. In fact, the Respondent was notpreviously aware of Objector’s use of the word NOW.
The business activities of the Respondent relate to the provision of hosting services, currently offered under
its One.com brand. The Respondent wishes to offer hosting services under a new identifier and considers
the generic word NOW appealing as a gTLD. The Respondent is neither targeting the same language
community as the Objector nor focusing on the same geographical area as the Objector. It is clear from the
Objector’s website that its target audience is a Chinese-speaking community. The Respondent does notoffer its services in Chinese, but does offer hosting services and related support to the English, Danish,French, German, Spanish, Italian, Dutch, Swedish, Norwegian and Portuguese language communities, andits customer base is proficient in these languages.
Before the Respondent could be said to unjustifiably impair the NOW Mark it would have to be associated in
the minds of the public with the <.NOW> gTLD, and this association would have to be made possible by thesimilarities between the strings and enhanced by the reputation of the earlier mark so that perception of theone will bring to mind the memory of the other.
In addition, an association requires that the part of the public already familiar with the NOW Mark is also
exposed to the <.NOW> gTLD. As the Respondent and the Objector are active in completely different
markets, both geographically and conceptually, any of the public familiar with the NOW Mark will not be
exposed to the Respondent’s use of the <.NOW> gTLD. The lack of distinctive character of the word NOW

page 6will not result in any association between the <.NOW> gTLD and the NOW Mark. Consequently there is no
association possible that will be capable of unjustifiably impairing Objector’s invoked trademarks.
A likelihood of confusion only exists if there is a risk that the public might believe that the goods or services
in question, under the assumption that they bear the marks in question, come from the same businessundertaking. There is no similarity between the goods and services offered by the Objector (IPTV) and theservices proposed to be offered by the Respondent (web hosting).
In a simple Google search for the word NOW there was no reference to the Objector in the first 10 results.
From this the Respondent asserts that there is no common ground between the NOW Mark and the appliedfor gTLD NOW. Accordingly, the Respondent’s intended use of the <.NOW> gTLD will not create alikelihood of confusion with the NOW Mark as to the source, sponsorship, affiliation or endorsement of the<.NOW> gTLD.
The Respondent was not previously aware of the NOW Mark and it applied for the <.NOW> gTLD in order to
invoke the common descriptive meaning of the term to mean “current” or ”immediate”. The Respondent
believes that many of its hosting clients would like to have a domain name which ends with the adverb NOW
in order to associate with this meaning and popular term.
In conclusion, it affirms that it has a legitimate business case for operating the <.NOW> gTLD and that doing
so does not take unfair advantage of nor unjustifiably impair the distinctive character or reputation of any of
the Objector’s marks, and does not otherwise create an impermissible likelihood of confusion between the
Respondent’s applied-for gTLD and the NOW Mark.
6. Discussion and Findings
Section 3.2.2.2 of Module 3 states that a “rightsholder” has standing to file a legal rights objection and thatthe “source and documentation of the existing legal rights [which] the objector is claiming … are infringed by
the applied-for gTLD must be included in the filing”.
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 at the time of the
Respondent’s application for <.NOW> was filed with ICANN. The Panel notes that ICANN does not publish
the filing date but rather shows a prioritization number for new gTLD applications. Given the need for panels
to assess an objector’s “existing legal rights” at the time of an applicant’s filing, it would be useful if ICANN
would include in the particulars of applications the date of filing. For the purposes of this determination the
Panel notes from ICANN’s website “newgtlds.icann.org/en/about/program” that the application window for
new gTLD applications opened on 20 January 2012 and that subsequently 1,930 applications were received.
The Panel thus concludes that the earliest date on which the Respondent could have filed its application for
the <.NOW> gTLD was 20 January 2012, and proposes to use that date as the date at which the Objector’s“existing legal rights” are to be judged.
The Panel is satisfied that, even if the Objector only owned those registered trademarks that prominently
feature the word NOW, albeit in stylized form surrounding by additional graphical matter, the Objector is a“rightsholder” within the meaning of Section 3.2.2.2 of Module 3. That merely gives the Objector standing tobring this proceeding, and says nothing about the extent to which those rights are impacted by the
Respondent’s application for the NOW gTLD. Under Article 20(c) of the Procedure, the Objector “bears theburden of proving that its Objection should be sustained 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page 7
distinctive character or the reputation of the objector’s registered or unregistered trademark 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”.
Where, as here, the objection is based on trademark rights, the panel is to 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.
(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 there
are three material qualifications embodied in the Standards in the three phrases “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 <.NOW> gTLD differs only from the NOW Mark by the “.”, and that is simply a function of therules that have been put in place both formally and informally for the orderly operation of the DNS. The
current line of thinking (as explained 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 behindthe same firewall as the user, it would be imprudent to permit dotless gTLDs. Despite the technical,
functional and security importance of the “.”, it is not sufficient to deprive the <.NOW> string of its visual andphonetic similarity to the NOW Mark and 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 at least some variants of the NOW Mark are registered in the name of the Objector, the requirement issatisfied. It would have been preferable for the Objector to have made good by evidence its claims to own
all of the trade marks in the PCCW group, especially given its filing of evidence that contradicts that
assertion. But even if the precise nature of the Objector’s rights to some of the NOW marks are imprecisely
known, the Panel is satisfied that the Objector does have some rights in those marks.

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Unlike the Uniform Domain Name Dispute Resolution Policy (“UDRP”) first limb reference to a mark “in which
the [complainant] has rights”, much narrower “ownership” by the Objector appears at first blush to berequired by the Standards. But, in the Panel’s view this interpretation would be inconsistent with the grant ofstanding to “Rightsholders” and the Panel concludes 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’s (and derivatives’) approach to second-level domain names under
existing gTLDs and to third-level domain names under ccTLDs. It would also be consistent with thereference in factor (ii) to the Objector’s rights in the subject mark.
Accordingly, the Panel determines that the applied-for gTLD <.NOW> is both visually and phonetically similar
to the NOW Mark in which the Objector had rights as at January 20, 2012, being the earliest date that the
Respondent could have applied to ICANN for that gTLD string.
(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 NOW
Mark. Here there can be no dispute that the Objector’s parent company has for more than a decade
operated a very successful IPTV business in Hong Kong under the name NOW TV. The Panel can
comfortably conclude from the evidence filed that the Objector’s acquisition of rights in the NOW Mark, bothregistered and unregistered, were bona fide in connection with that business and associated commercial
activities of the PCCW Group.
The Respondent has drawn attention to at least one judicial decision which it says cancelled the Objector’sregistered CTMs for NOW and criticizes the Objector for failing to disclose that in its Objection. The Panelagrees that the Objector should have disclosed any such decision, especially given that the cancelled marks
are those that apply in the geographic region in which the Respondent operates its business. However upon
reviewing the judgment (see “www.bailii.org/ew/cases/EWHC/Ch/2012/1842.html”) the Panel was unable todiscern the findings of invalidity reported by the Respondent. To the extent to which the Panel has to assess
whether the Respondent is likely to infringe the Objector’s legal rights, any failure of an Objector to disclosea cancellation of the marks on which it relies, or a finding of invalidity, could be critical to the Panel’s
determination. In this case the decision cited by the Respondent was delivered on June 29, 2012, more thansix months later than the date the Panel has determined to be the date at which the Objector’s legal rights
are to be assessed. Accordingly, even if the decision cited had been to the effect contended by the
Respondent, it would not be determinative of this Objection. On the record before the Panel there is nobasis shown for impugning the Objector’s bona fides in claiming the rights in the NOW Mark on which it
relies, despite it being a non-trading entity which could imperil its claim to goodwill-based trademark rights.
Moreover, the Panel finds that the Respondent selected the <.NOW> string for use as a gTLD in reliance
upon its denotation and related connotations. Consistently with that finding the Panel determines that the
Respondent selected the <.NOW> string in good faith.
(iii) Whether and to what extent there is recognition in the relevant sector of the public of the sign
corresponding to the gTLD, as the mark of the objector, of the applicant or of a third party.
The evidence adduced by the Objector shows that the NOW Mark is well known to its large IPTV customer
base in Hong Kong, as well as in surrounding areas and on international airlines. However, that is not
sufficient for the purposes of the Standards. Without more the Panel cannot conclude that the NOW Mark is
well known in the broader sense - that is to say, well known by all of those who are likely to come across the<.NOW> gTLD. As the Respondent has argued, it is difficult to see how there could be any association
made by a stranger to both of them between the NOW Mark and the <.NOW> gTLD. Without a person
having both in mind at about the same time, there is no conflict to resolve and the Respondent’s application
could proceed. The Panel finds that the number and geographic spread of people who might believe there
to be any association between the <.NOW> gTLD and the NOW Mark is sufficiently geographically confined
to preclude a finding that there is a global likelihood of confusion between them. That being so the Panelcannot accord any great weight to this factor in its assessment of the impact of the delegation on thepage 9
Objector’s rights.
(iv) The 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 record suggests that the Respondent’s sole motivation in choosing the <.NOW> string was what thatterm connotes to the majority of the English-speaking world. It disavows any knowledge of the NOW Markand the Panel accepts that disavowal as credible. Certainly there is nothing in the record to suggest that the
Respondent has engaged in a pattern of abusive applications or registrations. So this factor weighs in the
Respondent’s favor.
(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 Respondent of course contends that it does not use the <.NOW> string as a trademark and that is why itnever sought to register the word as a trademark or to clear the way for its business activities. It says, withsome force, that it simply chose the word because it envisaged many of its customers would be interested inacquiring second-level domain names under the <.NOW> gTLD to take advantage of the denotation andconnotations of that word as a matter of simple English. Technically the Respondent has made no
preparations to use the NOW mark as a gTLD other than as manifest in its having made the application to
ICANN. But minimalist as that preparation is, it does not interfere with the legitimate exercise by the
Objector of its rights in the NOW Mark, for the reasons more fully developed below in relation to the mainelements of Module 3.
(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.
Unlike the Objector, the Respondent had not taken any steps to register NOW as a trademark prior tolodging its application with ICANN. That is not surprising given its assertion that it intends only to use thestring 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 NOW and the
Respondent has not suggested otherwise. It effectively concedes that its plan to use NOW for the online
version of some services formerly delivered under the “One.com” label remains fledgling. That begs thequestion of whether the use of the <.NOW> string as a gTLD is a trademark usage. The Panel is not here to
determine whether the Respondent’s broader business activities would infringe the Objector’s legal rights in
the NOW Mark – only whether the delegation of the applied-for string would be likely to have thatconsequence and, if so, whether that consequence would be unfair, unjustifiable or impermissible.
In the Panel’s view, the word NOW is not inherently adapted to distinguish services offered by the Objector
from those of others, including the Respondent. The Panel does not regard NOW as capable of becoming
distinctive in any geographically broad English-speaking market. Certainly as at January 20 2012 it could
not have been distinctive of the Objector except in the narrow geographical territory in which NOW TV
operated. In the Panel’s view for a gTLD to unfairly or unjustifiably dilute or impinge on the distinctiveness of

page 10a brand, that brand would have to be known in a large number of countries and by a significant portion of theworld’s Internet users. Were those qualifiers not present, a corner store with a registered trademark in an
obscure geographical location could successfully block the delegation of a plain English word as a newgTLD.
(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.
The Panel is satisfied that, to date, there is little likelihood of confusion between the <.NOW> string as agTLD and the NOW Mark. If PCCW and the Objector continue to confine their use of the NOW Mark to their
IPTV and closely related commercial activities, even on an expanded geographical basis, the Panel could
see that unlikelihood continuing. Accordingly, the Panel is confident that for so long as the Respondent
continued to use the <.NOW> string as a gTLD positioned in the way foreshadowed in its application to
ICANN then, assuming its application were to be successful, there would be little likelihood of confusion
between the <.NOW> gTLD and the NOW Mark. In particular, it is the Panel’s determination that mere useof the <.NOW> string by the Respondent as a gTLD would be neutral in terms of suggesting any
sponsorship endorsement or affiliation by the Objector of the gTLD or the Respondent’s business. Having
said that, as the Respondent is “now” on notice of the Objector’s and PCCW’s interests in relation to the
NOW Mark it may elect to exclude from the range of second-level domains otherwise available those whose
juxtaposition with the <.NOW> gTLD might convey some association between the registrant and the
Objector. That approach might well have been an appropriate outcome had the parties engaged in the
mediation envisaged by Article 16 of the Procedure.
An additional factor in the Panel’s view is the fact that six separate organizations have made an application
to ICANN for a delegation of <.NOW> as a gTLD. Whilst the Panel is not conversant with the basis of eachof the other four applications, it seems plausible that they are intending to position their second-level domainofferings to take advantage of the role that the .now suffix has as an ordinary English word.
Having regard to the foregoing, and to any other principles the Panel regards as relevant, the Panel has todetermine whether the Objector’s trademark rights would be infringed by a delegation of the <.NOW> gTLD
to the Respondent. Of fundamental importance to that question is whether the operation of a business
which grants second-level domain names under the <.NOW> gTLD is using the NOW string as a trademark.
It is difficult for the Objector to make good an argument that any use by the Respondent of NOW as a gTLD,
or even in connection with the operation of a gTLD registry and related business activities, is necessarily useof that string as a trademark. Use of a 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 isused as a trademark in the first place. As noted above, the record shows that the Respondent’s sole
motivation in choosing the <.NOW> string was what that term connotes to the majority of the Englishspeaking world. Independently of that, the Panel takes the view that the gTLD use of the <.NOW> string
being proposed by the Respondent is not the use of NOW in any trademark sense. Even associating thatgTLD with supporting commercial activity does not detract from the proposition that the NOW Mark would
most unlikely be infringed simply by its use as a gTLD. This is especially the case with a gTLD that is to bepromoted for its ordinary English meaning and positioned vis à vis prospective registrants as enabling themto attract consumers by conveying the meaning of that word by suffixing it to their second level domain.
Obviously one can envisage combinations of second level domains with the <.NOW> gTLD that might
infringe the Objector’s rights but the Objector needs to show that those infringements are more likely than
not to occur, and that it has failed to do.
Whilst many of the Respondent’s additional arguments are sound, it is not necessary to consider them giventhat the Panel’s findings are already sufficient to ground a determination in favor of the Respondent.
The Panel has determined with a high degree of confidence that the Response is valid and should be upheld
because the potential use of the applied-for gTLD <.NOW> by the Respondent does not:(i)take unfair advantage of the distinctive character or the reputation of the NOW Mark; norpage 11(ii)

unjustifiably impair the character or reputation of the NOW Mark; nor(iii)

create an impermissible likelihood of confusion between the applied-for gTLD and the NOW Mark.

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

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