ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
I-REGISTRY Ltd v. VIP Registry Pte Ltd
Case No. LRO2013-0016

1. The Parties
The Objector/Complainant (“Objector”) is I-REGISTRY Ltd. of Berlin, Germany, represented by
Bettinger Schneider Schramm, Germany.
The Applicant/Respondent (“Respondent”) is VIP Registry Pte. Ltd of Kuala Lumpur, Malaysia,
represented by Bart Lieben, Belgium.

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

3. Procedural History
The Legal Rights Objection (the “Objection”) was filed with the WIPO Arbitration and Mediation Center(the “WIPO Center”) on March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure(the “Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center completed the 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 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 16, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center on
May 16, 2013.
In paragraph 9 of the Objection and by electronic mail on April 23, 2013, the Objector requested that the
WIPO Center consolidate this and four additional Legal Rights Objections also filed by the Objector. The
Applicant indicated opposition to the Objector’s consolidation proposal on April 30, 2013. In accordance with
Article 12 of the Procedure and paragraph 7(d) of the WIPO Center Rules for New gTLD Dispute Resolution,
the WIPO Center did not make a decision to consolidate the five Legal Rights Objections for purposes of
Article 12(b) of the Procedure.

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The WIPO Center appointed Harrie Samaras 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 for New gTLD Dispute Resolution.
On June 18, 2013 the Objector wrote to the WIPO Center requesting an opportunity to reply to unforeseenarguments and evidence raised by the Applicant. After conferring with the Panel, that same day the WIPO
Center informed the Parties that “[u]nder Article 17 of the New gTLD Dispute Resolution Procedure theExpert Panel in this matter will permit the Objector to file an additional written submission to ‘new or
unforeseen arguments’”. The Panel also permitted the Applicant “to respond to the Objector’s additional
submission addressing only the points raised by the Objector”. The Panel considered these additional
submissions to the extent they addressed new or unforeseen arguments.

4. Factual BackgroundOn April 11, 2012, the Objector’s parent company i-content Ltd. (“i-content”) obtained a trademark
registration for VIP from the Office for Harmonization in the Internal Market (“OHIM”) under the European
Community Trademark System (“CTM”) as Community Trademark No. 010437051 (the “VIP Mark”).
The VIP Mark is registered in connection with goods and services in Nice Classifications 36, 41, 44 and 45.
I-content authorized the Objector under an exclusive license dated April 13, 2012, to use the VIP Mark (the“License”) as set forth therein. Furthermore, under a letter agreement dated March 1, 2013 (the “Letter
Agreement”), the CEO of i-content “confirmed,” among other things, that (1) the Objector has been duly
authorized within the scope of rights granted to it under the License to apply for the new gTLD string <.vip>
under the first round of ICANN’s New gTLD Program; and (2) that i-content consents to the Objector’s intent
to file Legal Rights Objections with regard to some or all of the competing applications for the <.vip> string.
The Applicant is a company incorporated in Singapore for the purpose of administrating the <.vip> string.
It is a subsidiary of Qinetics Solutions Berhad (“Qinetics”) whose headquarters are in Kuala Lumpur,
Malaysia. According to its website, Qinetics has been in business since 2000 offering various Internetrelated products and services including domain name registration services, domain name registry andregistrar system solutions.
On June 13, 2012 both the Objector and the Applicant filed an application with ICANN for the <.vip> string.

5. Parties’ Contentions
A. Objector
The Objector has standing to bring this Objection based on the rights it has acquired from i-content under the
License and the Letter Agreement discussed above.
The VIP Mark is registered in connection with goods and services including Nice class 45. Class 45
contemplates the use of the VIP Mark for the “connection and management of lnternet Domains”. These are
two of the most critical functions of a domain name registry, which is tasked with maintaining the database of
all registered names within a TLD space, and generating the relevant zone files which enable the resolutionof domain names into IP addresses for technical functionality.
The expression “VIP” is arbitrary and has an important source-identifying function in relation to theconnection and management of lnternet domain names services and has no inherent relation whatsoever
to domain name registration or any additional services reasonably offered by potential registry operators inconnection with the management of a TLD space. The Objector has already taken steps to build its VIPbrand, and to secure its protection through the registration of the VIP Mark. The Objector’s CTM application
was filed in November 2011, prior to ICANN’s new gTLD launch. Additionally, i-content filed an application

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with the German Patent Office for VIP on July 29, 2011, although this application has not yet matured into a
registration.
The Objector was making preparations for its business venture well in advance of Applicant’s application for
the <.vip> gTLD string (see website at “www.vip-registry.com”). In its application, the Objector outlines its
concept of use for the space (e.g., to utilize <.vip> under an open-gTLD model, “to cater to the unique needs
and interests of important people and public figures worldwide, such as politicians, artists, actors, musicians,
athletes, aristocrats and wealthy individuals, as well as their representatives and service providers.”)
Thus, the Objector’s application to use the space in connection with an open model gTLD and to offer
domain name registrations under the <.vip> string is in line with the scope of its rights under its registered
CTM trademark.
The Applicant intends to operate the <.vip> string under an open model, meaning that registration will be
open to any and all prospective domain name registrants. The space is to be advertised and targeted tothe buyers and sellers of luxury goods. The Applicant’s potential use of the <.vip> string: (i) takes unfair
advantage of the distinctive character or the reputation of the Objector’s registered trademark;(ii) unjustifiably impairs the distinctive character or the reputation of the Objector’s mark, and/or(iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s mark.
The wording of standards (i) and (ii) above are derived in large part from traditional trademark law provisions
for the protection of well-known marks, which aims to provide broader protection beyond the standard scopeof likelihood of confusion (see for example Article 5(2) of the First Council Directive of 21 December 1988 toapproximate the laws of the Member States relating to trade marks (89/104/EEC) and Article 9c Council
Regulation (EC) No 20712009 of 26 February 2009 on the Community trade mark). The drafters of theLegal Rights Objection (“LRO”) mechanism elected not to restrict relief under this procedure only to “wellknown” marks.
The Objector’s CTM registration provides protection in all Member States of the European Union (“EU”).
The Objector intends to use the space to sell domain names in the EU territory, as well as on a global scale.
The use of the <.vip> string in connection with the management of domain names will also have a sourceidentifying function and therefore a trademark significance.
Within the context of the New gTLD Program, where it has been long-foreseen that many of the newlyregistered TLD strings will comprise of registered marks, an additional level of protection has been
introduced, both via the LRO procedure and via the Trademark Post-Delegation Dispute Resolution
Procedure (“PDDRP”). As provided for under Section 6.1 of the PDDRP Policy in the ICANN Applicant
Guidebook (version 04-06-2012) (“the Guidebook”), even after delegation of a TLD space any trademark
owner who has been harmed by the operation or use of such TLD space due to its identity or confusing
similarity with the trademark owner’s mark may seek redress.
According to the Objector, the elements of the LRO procedure are similar to those under the PDDRP.
The inclusion of a remedy for trademark infringement at the top level in both procedures clearly shows thatthe drafters of those rights-protection mechanisms were acting on the assumption that a gTLD can havesource-identifying significance and serve a trademark purpose. The prior stance adopted by courts, legal
scholars and other authorities that the function of TLDs, as generally not being source-indicating, is therefore
a relic of an essentially <.com> space, wherein TLD strings did not comprise preexisting trademark terms.
At least one prior Uniform Domain Name Dispute Resolution Policy (“UDRP”) decision has been entered, inwhich the top-level extension was a material factor in assessing questions of confusing similarity(i.e., project.me GmbH v. Lin, Case No. DME2009-0008 (WIPO November 11, 2009)). There are many
TLD operators that use the TLD name string as a mark, and that have already registered those TLD names
as trademarks, including ICANN-accredited TLDs such as DOTAM, DOTFM, TRAVEL, NU domain, and
DOTCOOP. Furthermore, there are even more non-accredited, yet publicly proposed TLD strings such as<.art>, <.club>, <.music>, <.home>, and <.immo> that have been registered as trademarks and will be usedas source identifiers by the prospective registry operators for registry and related services. All of thesepage 4
registrations include domain management and registration services, and may include a much broader varietyof online services.
The Applicant naturally intends to offer registry services as the prospective registry operator of the <.vip>
TLD space. A registry operator therefore refers to the entity responsible for maintaining the database andproviding associated registry services such as: the management and administration of domain names
customer databases, zone file publication, Domain Name System (“DNS”) operation, marketing and policy
determination. These services are identical to the “connection and management of Internet domains”
covered by the Objector’s VIP Mark registration. Were the Applicant granted control of the <.vip> string, it isself-evident that the Applicant’s activities as the registry operator would entail use of the <.vip> string as atrademark, (not descriptively or generically) in connection with certain second-level domains essential to thefunctioning of the TLD space. The use of any second-level domain name within the <.vip> space by aregistry, for the purposes of conducting the business of the registry and managing the TLD space, would
constitute use in a trademark sense. If the Applicant were permitted to manage and use the <.vip> string,lnternet users would be misled as to the actual owner of the VIP Mark, and the source of the services
provided via the <.vip> string. Individuals interested in registering <.vip> domain names will naturally
assume that the owner of the TLD is also the owner of the corresponding trademark. Thus, the Applicant’s
application takes unfair advantage of and unjustifiably impairs the distinctive character of the Objector’s Marksince the Mark would no longer serve as a distinctive identifier of the Objector’s services within the worldwide marketplace, including diluting the Mark and blurring its status as a source identifier.
It is highly foreseeable that search engine algorithms will be modified to accord greater weight (and thus
higher ranking) to spaces in which the TLD corresponds to the search terms entered by the end user.
Additionally, with the introduction and popularity of “.brand” spaces, it is highly likely that browser technology
will soon enable a direct, top-level navigation mechanism. lnternet visitors electing to use any such direct
TLD navigation tools would naturally assume the owner and operator of the <.vip> space to be the legitimate
trademark holder, who possesses the right to use the VIP mark in connection with registry-related services.
With regard to standard (iii) above where Applicant, utilizing Objector’s mark without authorization, is
engaged in the same business, the same industry, and using a virtually identical sales and marketing model,
the consuming public would naturally assume that the Applicant’s activities as a registry operator undertaken
in connection with the <.vip> string space would be connected to, or endorsed by, the legitimate, legal ownerof the VIP Mark resulting in unavoidable confusion by lnternet users.
Factor 1:
The textual string of the applied-for gTLD <.vip> is entirely identical to the VIP Mark. The <.vip> string
comprises Objector’s trademark in its entirety, with no additional or unique text or elements which would
distinguish it from Objector’s VIP Mark, or enable users to differentiate any potential activities of Applicant
undertaken using the TLD from Objector’s mark and business.
Factor 2:
The Objector’s acquisition and use of VIP Mark in connection with its planned business activities has been
entirely bona fide. The Objector conceived of the idea to use the VIP Mark in connection with lnternet
services targeted to an elite sector of the public long before its Application was filed, and without any
foreknowledge of the Applicant’s existence or activities. Indeed, the Objector filed for its trademark, for use
in connection with its anticipated business applications, in Germany on July 29, 2011, which was well before
the launch of ICANN’s New gTLD program. Moreover, since the Applicant has taken no steps to register any
trademark consisting of the "VIP" term, there is no way in which the Objector could have reasonably beenaware of the Applicant’s intent to use the <.vip> string. The Applicant, however, would easily have been able
to discover the Objector’s pre-existing trademark rights.

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Factor 3:
Upon information and belief, the Applicant has made no active or demonstrable use of the term “VIP,” otherthan in connection with its application for the <.vip> gTLD string. Accordingly, the Objector is not aware ofany sector of the consuming public that would associate the term in any manner with the Applicant. Indeed,interested consumers looking to find out more about the source of the VIP Mark would, naturally, comeacross the Objector (not the Applicant) in conducting an online trademark registration search. As noted
above, the Objector promotes its business activities under the VIP Mark at “www.vip-registry.com”.
Factor 4:
Although the Applicant’s subjective knowledge is not a matter which the Objector is in a position toconclusively aver, the Objector notes that its trademark registration has been a matter of public record since
the time of its filing. Such filing was made prior to the Applicant’s application for the <.vip> gTLD string and,accordingly, the Applicant was on notice of the Objector’s rights, had it elected to conduct a due-diligencesearch of the CTM trademark registry prior to filing its application with ICANN.
Factor 5:Upon information and belief, as the Objector has been unable to locate any substantive proof of the
Applicant’s use of the term “VIP” outside of its application for the TLD space, the Objector concludes that the
Applicant has to date made no demonstrable use of the term in commerce. The Objector has similarly been
unable to identify any use by the Applicant of the term “VIP” in commerce that would justify any claim by the
Applicant for any unregistered or common law rights in the word. Moreover, the Objector has been unable tolocate any trademark registration for VIP, containing the word “VIP” or logically related to the term “VIP”
which is owned by or licensed to the Applicant. Accordingly, the Objector concludes that the Applicant does
not possess rights in the term.
Factor 6:
Although the Applicant may, perhaps, believe that it possesses a “right” to use the term “VIP” due to the factthat the term carries a dictionary meaning, the Objector notes that merely indicating a word has a “generic”"
definition does not settle the discussion. As demonstrated by the Wikipedia disambiguation page, the term
carries a number of different meanings, many of which are unrelated to the acronym for “Very Important
Persons.” Moreover, although many words have “generic” meanings in the context of ordinary discourse,
where a dictionary word has been registered as a trademark for particular goods and services, that word isaccorded protection as a mark. The “generic meaning” argument ceases to be effective where (1) the wordin question is a valid, registered trademark, and (2) the Applicant intends to use the Objector’s registered
mark in connection with the same (indeed, identical) goods and services for which the mark is registered. As
discussed above, the Objector’s mark is registered for, inter alia, the “[c]onnection and management ofInternet domains.” This is precisely the use to which the Applicant contemplates putting the “VIP” term inconnection with its application for the <.vip> string.
Factor 7:
As the Objector has been unable to locate any use in commerce of the “VIP” term by the Applicant, beyond
the registration of a “landing page” website at “www.viptld.com,” the Objector concludes that the Applicant is
not and has never been commonly known by the sign corresponding to the gTLD. The Applicant’s website
does not appear to offer any goods or services, and provides little information beyond some summary
statements regarding their investors and application for the TLD space.
Factor 8:
As discussed in more detail above, as the Applicant’s applied-for TLD is entirely and wholly identical to the
Objector’s registered trademark, it is certain that the Applicant’s intended use of the <.vip> gTLD string

page 6(in connection with the identical goods and services for which the mark is registered) would create alikelihood of confusion with the Objector’s mark as to the source, sponsorship, affiliation, or endorsement of
the gTLD.
B. Applicant
The Applicant’s Response is based on the rights it holds in its company name, which is VIP Registry, aprivate limited liability company duly established and validly existing under the laws of Singapore. The sole
purpose of this company is to apply for and manage the <.vip> generic top-level domain name following
delegation by ICANN. Managing a domain name registry under a direct agreement with ICANN isconsidered a legitimate offering of products and services.
i-content has also applied for and obtained the registration of various Community trademarks, including
RICH and ONL. In addition to the <.vip> string Applicant has applied for various generic top-level domains,
including <.rich> and <.onl>. The Objector has engaged in a pattern of conduct that can be summarized as(i) selecting a number of words or acronyms that could qualify as well sought after top-level domains; and(ii) submitting trademark applications for each of these terms shortly before or even after ICANN allowed
applicants to submit applications for new gTLDs. These applications have been filed for classes of goods
and services that the Objector believes are related to managing a domain name registry, which would makethem specifically and intentionally useful to initiate a LRO.
The Objector intends to use the <.vip> string in a generic way, which is not covered by its registration for the
VIP Mark. While the Applicant does not dispute that the term or acronym “VIP” is not devoid of any
distinctive character in relation to the classes of goods and services covered by the VIP Mark, it is clear thaton the basis of the contents of the Objector’s website and its application for the <.vip> string, the Objector
intends to use the term “VIP” in the most generic way, which is in particular the way most (Internet) users will
understand the term “VIP”, being “Very Important Persons”. According to the Objector’s website:“VIP® is the new and exclusive domain extension for celebrities and prominent personalities from theworld of politics, economics, science, art, fashion, sports and entertainment. From 2014, all of these,
as well as topclass service providers and luxury and lifestyle brands, will be able to hit the scene
exclusively with the protected namespace of VIP® - guaranteeing maximum impact for their presencein the digital spotlight! Celebrities stick together with VIP®.”To the Applicant’s knowledge and belief the Objector does not make any other use of the VIP Mark in
relation to the offering of goods and services. Thus, the Objector clearly intends to reach out to a certain
category of potential domain name registrants whose common denominator is that these registrants consider
themselves “very important persons”. The Objector’s and the Applicant’s intentions are therefore perfectlyaligned, with one underlying difference: the Applicant’s preparations for a bona fide offering of domain nameregistry services – which are clearly shown by the USD 185,000 application fee and other start-up costs
incurred by the Applicant – did not include the filing of an application for a trademark registration in order not
to disturb the level playing field that has been created by ICANN.
If the Applicant obtains the <.vip> string, it will not infringe the Objector’s trademark rights. The Objector
states that its VIP Mark has been registered for Class 45, which covers the services described as“connection and management of Internet domains”, out of which the Objector deduces that it holds
trademark rights for the services rendered by domain name registries. The Objector refers to the Applicant’s
application for the <.vip> string and concludes that the Applicant will infringe rights in the VIP Mark.
However, according to the full text of the Nice classification, the service description “connection andmanagement of Internet domains” relates to “legal services”, as is shown by the extract from the Official
Publication of the Nice Classification, made available on the website of the World Intellectual Property
Organization. It does not relate to the technical operation of a domain name registry. These services arecovered by Class 35, in particular under sub-heading “computerized file management”, given the fact that theoperation of a shared registry system for domain names involves the automatic processing and managementof information made available by domain name registrars. They are also covered by Class 38

page 7(telecommunications services), more particularly “communications by computer terminals”, “message
sending”, “providing user access to global computer networks”, “providing telecommunications connections
to a global computer network”, “providing access to databases”, “telecommunications routing and junction
services”, “transmission of digital files”, which relate to the propagation of zone files and the operation of the
DNS of the TLD; and to a lesser extent: Class 42, in particular “software as a service”. The Objector does
not have exclusive rights in the VIP Mark for Classes 35, 38 and 42, which cover the essential and/or critical
functions performed by a domain name registry. The domain name related services referred to in Class 45
are to a large extent a description of the services provided by a registrar, whose tasks exist in “connecting” adomain name with name server information, and manage domain name and name server information in adomain name registry on behalf of its customers.
The Applicant intends to use the <.vip> string generically, not as a trademark. According to the Applicant’s
application for the <.vip> string:“.VIP TLD aims to be preferred TLD choice for businesses and organizations that offer luxury goods
and premium services for the affluent Internet users. .VIP TLD would be easily associated in thebrandings of businesses and organizations targeted not only such specific products and services, butalso the specific group of customers.”
The Objection must be reviewed not only in accordance with the requirements in the Guidebook relating to
LRO, but also European Trademark Law, and more in particular Council Regulation (EC) No. 207/2009of February 26, 2009 on the Community Trademark (“CTMR”), namely Article 4, Article 7, and Article 12.
The Objector’s exclusive rights in the VIP Mark do not extend to the <.vip> string because it is internationallyrecognized that to qualify as a trademark, a sign must have a source identifying function. A top-level domain
only indicates a place where certain information can be found on the Internet, and therefore – in essence –does not have a source identifying function, but a mere technical function. The Objector attempts toconvince the Panel that the conclusion, reached by many trademark offices and courts, that a TLD does nothave any source identifying function, is a thing of the past. Furthermore, the Objector posits that “(w)ith theintroduction of new gTLDs, Internet users will understand that the use of a gTLD in connection with asecond-level domain represents more than a mere device they must use as a part of a URL. The gTLD itself
will take on an important source-identifying function as by definition domain names in any particular TLD canemanate from only one domain registry source”. The exact opposite is true. The Applicant refers to theguidance provided by OHIM in its Examination Guidelines: “Top level domain endings, such as <.com>, only
indicate the place where information can be reached on the Internet and thus cannot render a descriptive orotherwise objectionable mark registrable.” By analogy to the trademark prosecution practices in the UnitedStates, the United States Patent and Trademark Office (“USPTO”) has made clear in its Trademark Manualof Examining Procedure that “[i]f a mark is composed solely of a TLD for ‘domain name registry services’(e.g., the services of registering <.com> domain names), registration must be refused under Trademark Act§§1, 2, 3, and 45, 15 U.S.C. §§ 1051, 1052, 1053, and 1127, on the ground that the TLD would not beperceived as a mark.” This also appears to be the case for a proposed mark that is “under consideration asa new TLD”. Moreover, the USPTO’s manual states that “(i)f the TLD merely describes the subject or user ofthe domain space, registration must be refused under the Trademark Act §2(e)(1), 15 U.S.C. §1052(e)(1), on
the ground that the TLD is merely descriptive of the registry services.
The Objector’s intention is to use the <.vip> string for services that are not covered by its VIP Mark.
Moreover, the exclusive rights the Objector attempts to invoke do not extend to the use the Applicant intends
to make of the <.vip> string: by offering domain name registrations in its <.vip> string to “VIPs”, as outlinedin Applicant’s application, Applicant’s use of the term “VIP” clearly and undisputedly qualifies as: using in thecourse of trade: (…) indications concerning the kind, quality, quantity, intended purpose, value, geographicalorigin, the time of production of the goods or of rendering of the service, or other characteristics of the goods
or service”, which are not covered by the exclusive rights granted by the VIP Mark.
Also, according to European trademark law, descriptive terms shall be refused under Article 7(1)(c) of the
CTM Regulations. Under European trademark law, descriptive terms are those that consist of objective

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information about characteristics of the goods and services, so as to distinguish them because of their nature(rather as to their commercial origin) from like or similar goods and services, rather than as to theircommercial origin. For that reason, descriptive terms cannot fulfill the function of a trademark. For the same
reason, the ground for refusal applies irrespective of whether the respective term is already used by othercompetitors in a descriptive manner for the respective goods or services. Also, in assessing the similarity
between a trademark and a domain name under the Uniform Dispute Resolution Policy, the top-level domain
is disregarded. Decisions rendered under the UDRP are unanimous in this respect. The Objector therefore
attempts to uphold that its application for the <.vip> string is similar to a so-called “.brand” top-level domain.
Although not an official category of top-level domains designated by ICANN, a “.brand” top-level domain is
generally understood to be a top-level domain identical to an existing brand, where the brand owner will be
operating the TLD in support of its existing or future goods or services. ICANN has received in total morethan 500 applications for “.brand” top-level domains. Examples include: <.ibm>, <.deloitte>, <.total>, <.dhl>,<.hsbc>, <.shell>, <.hilton>, <.kpmg>. The Objector attempts to put its recently acquired VIP Mark at thesame level, by referring to its application as being a “.brand” gTLD as well. For obvious reasons, such astatement cannot possibly be taken seriously by the Panel: as stated above, the Objector is currently notengaged in any legitimate offering of goods and/or services under the VIP brand. The new generic top-leveldomain program initiated by ICANN is primarily about allocating and delegating new generic terms toregistries. As indicated above, the Applicant’s intentions are exactly to do that: managing the genericacronym for “Very Important Person” as a generic top-level domain, and not as a source identifier, as the
Objector purports.

6. Discussion and Findings
The basis for a LRO is that “the applied-for gTLD string infringes the existing legal rights of the objector”.
Under Section 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.”
Furthermore, pursuant to Section 3.5.2 of the Guidebook, the Panel is to determine whether the potential useof 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 impairs the distinctive character or the reputation of the Objector’s mark; and/or(iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s mark.
Section 3.5.2 further provides that where the Objection is based on trademark rights, the Panel will consider
eight non-exclusive factors, addressed below.
A. The Objector’s standing
To establish standing, the Objector relies on CTM Registration No. 010437051 for the VIP Mark. The filingdate of the application is November 22, 2011 and the registration issued April 11, 2012 in classes 36, 41, 44
and 45 for services that include: organization and management of collections; training and further training
consultancy; therapeutic support and medical care; and connection and management of internet domains.
Although the Objector is not the owner of the CTM registration for the VIP Mark, it has made of record alicense from the Objector’s parent company i-connect, granting the Objector exclusive and non-transferable
rights to use the VIP Mark for the goods and services that are the subject of the registration. Furthermore,
under the License, the Objector is “entitled to pursue acts of infringements of third parties concerning the[VIP Mark] in its own name. This includes the right to lodge court actions.” Although it appears the Objector
is licensed to bring this proceeding under the License insofar as the basis for the LRO is that the applied-for
gTLD string infringes the existing legal rights of Objector, the Letter Agreement confirms that:page 9-[Licensee] has been duly authorized by [Licensor], within the scope of rights granted to it under ourlicense agreement, to apply for the New gTLD space .VIP under the first round of ICANN’s New gTLD
Program;-[Licensor] is further aware of [Licensee’s] intent to file Legal Rights Objections with regard to some or
all of the competing applications for the <.vip> space;-[Licensor] consents to these actions undertaken by [Licensee] and confirms the filing of said
Objections by [Licensee] is within the scope and bounds of its rights granted to it under its trademark
license agreement; and-should [Licensee] prove to be the successful applicant for the <.vip> space, [Licensor] fully consents
to [Licensee’s] management and operation of the <.vip> TLD, and confirms that such activity would bewithin the scope of rights granted by [Licensor] under the relevant license agreement.

The Panel has no reason to believe that the License and Letter Agreement, which the Objector has made ofrecord here, do not grant the Objector rights in the VIP Mark as well as the right to maintain this proceeding.
Thus, the Panel finds that the Objector has a relevant existing trademark right in the VIP Mark.
B. Infringement of the Objector’s Existing Legal Rights
The Objector argues that Applicant cannot use the .vip string without infringing Objector’s VIP Mark. Itfurther contends that this Objection is valid and should be upheld because the potential use of the applied-for
gTLD by the Applicant:
(i)
(ii)
(iii)

takes unfair advantage of the distinctive character or the reputation of the Objector’s registered trade
mark; and/or
unjustifiably impairs the distinctive character or reputation of the Objector’s registered trade mark;and/orotherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s mark.

The Objector’s application (ID: 1-1003-40726) for the <.vip> string was originally posted on June 13, 2012.
In the application, the Objector describes its mission/purpose of the <.vip> string as follows:“The .VIP TLD has the mission to serve the needs of very important people (abbreviated: VIP) worldwide,
their representatives and service providers for the VIP in terms of privacy, communication, publicity,
promotion and exceptional services. VIP people are defined as people of great influence or prestige, likepoliticians, artists, actors, musicians, athletes, aristocrats and wealthy people. As of today VIPs do not havean own namespace on the internet, although according to statistics more than 11 Mio Individuals belong to
the defined group according to the criteria mentioned above. The PURPOSE of the .VIP space is to cater tothe unique needs and interests of important people and public figures worldwide…”
The Objector operates a website at “www.i-registry.com” (the “Current Website”). The Objector represented
to the Panel that it operates a website at “www.vip-registry.com”, although that site was not accessible to the
Panel (the “Former Website”). Based on a screen shot made of record from the Former Website, it appears
that some of the content from that site is now included on the Current Website. More specifically, on the firstpage of that site there is a hyperlink to a page that is devoted to the <.vip> string in anticipation of the
Objector succeeding with its application for the space. The lead paragraph on the linked page, which issimilar to a page from the Former Website states:“Raise the curtain on .VIP on the internet.
.VIP is the new and exclusive domain extension for celebrities and prominent personalities from theworld of politics, economics, science, art, fashion, sports and entertainment. From 2014, all of these,page 10
as well as top-class service providers and luxury and lifestyle brands, will exclusively be able to hit thescene with the protected namespace of .VIP - guaranteeing maximum impact for their presence in thedigital spotlight!”
The Applicant’s application (ID: 1-851-9629) for the <.vip> string was originally posted on June 13, 2012.
The Applicant describes the mission/purpose of its proposed <.vip> string as follows: “to provide a platform
for creating and promoting a better organized online environment for luxury goods and premium services.”
When queried in the application form, “[h]ow do you expect that your proposed gTLD will benefit registrants,
Internet users, and others”, the Applicant replied in part that “<.vip> TLD aims to be preferred TLD choice forbusinesses and organizations that offer luxury goods and premium services for the affluent Internet users.
VIP TLD would be easily associated in the brandings of businesses and organizations targeted not only suchspecific products and services, but also the specific group of customers.” The Applicant operates a website
at “www.viptld.com”.
Where the Objection is based on trademark rights, the Panel will consider the following non-exclusive
factors.
1. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, or
meaning, to the objector’s existing mark.
The applied-for gTLD string is similar, if not identical, including in appearance, phonetic sound, and meaning,to the VIP Mark in which the Objector has rights by virtue of the License.
2. Whether the objector’s acquisition and use of rights in the mark has been bona fide.
It appears to the Panel that the VIP Mark was acquired and/or registered as part of a strategy to support theapplication for the <.vip> string. Based on the case record, the Panel has no basis to conclude that suchacquisition was not bona fide.
With regard to whether the Objector has made a bona fide use of the VIP Mark, the page of record from theFormer Website and the Current Website appear to the Panel to be more preparations to use the VIP Markrather than actual uses of the VIP Mark. On the Former Website, the Objector identifies itself as “VIP
Registry – Your Professional Domain Solution.” The page identifies “VIP” as both “the new and exclusive
domain extension for celebrities and prominent personalities” and as “an exclusive service” provide by I®
Registry Ltd. The Current Website uses “VIP” in the similar sense. In any event, there is no evidence in therecord from which the Panel can conclude that these preparations to use are not bona fide.
3. Whether and to what extent there is recognition in the relevant sector of the public of the sign
corresponding to the gTLD, as the mark of the objector, of the applicant, or of a third party.
The Panel has seen little or no evidence of actual use that would be sufficient to demonstrate recognition in
the relevant sector of the public of the sign corresponding to the gTLD as the mark of the Objector, theApplicant or a third party. Furthermore, in the Panel’s view, the manner in which the Objector and theApplicant are using “VIP” on their websites reflect their preparations to use the term in the applied-for gTLD
string not as a source identifier but, rather, in its descriptive sense, that is, as the acronym for “very important
persons”. For example, in its application the Objector states that: “The .VIP TLD has the mission to serve
the needs of very important people (abbreviated: VIP) worldwide … As of today VIPs do not have an own
namespace on the internet…” And in the Applicant’s application, when queried “[h]ow do you expect thatyour proposed gTLD will benefit registrants, Internet users, and others”, the Applicant replied in part that“[the] <.vip> TLD aims to be preferred TLD choice for businesses and organizations that offer luxury goods
and premium services for the affluent Internet users.”

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4. 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.
Based on the evidence of record, most notably the Applicant’s application for the gTLD string, the Panel issatisfied that the Applicant applied to use the <.vip> string with the intent of using the term “VIP” in its
generic sense. There is no evidence in the record from which the Panel can conclude that the Applicant had
actual knowledge of the Objector’s VIP Mark, or that the Applicant could not have reasonably been unawareof it, particularly when the Objector appears to be using the VIP Mark on its own website in a descriptive
manner.
The Objector has not suggested that the Applicant has engaged in a pattern of conduct whereby the
Applicant applies for or operates TLD’s or registrations in TLD’s which are identical or confusingly similar to
the marks of others.
5. 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 to date, the Applicant has used “VIP” on its website in a descriptive manner, reflecting
the acronym for “very important persons” which is consistent with its intentions for using VIP as set forth in its
application for the <.vip> string. As such the Panel finds that the Applicant’s use so far does not interferewith the legitimate exercise by the Objector of its rights in the VIP Mark.
6. 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.
There is no evidence in the record that the Applicant has such marks or other intellectual property rights inthe sign corresponding to the applied-for gTLD string.
7. 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 in the record that the Applicant has been commonly known by the sign corresponding
to the applied-for gTLD string.
8. 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 finds that, based on the information the Applicant has currently provided in its application for the<.vip> string, and in the screenshot from the Applicant’s website, the Applicant’s intended use of the <.vip>
string will be to exploit the descriptive meaning of “VIP” as a domain for “very important persons”. Thus the
Panel cannot conclude that the Applicant’s intended use of the gTLD would create a likelihood of confusion
with the Objector’s VIP Mark.

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7. Decision
The Panel finds 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; 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.

For all the foregoing reasons, the Panel rejects the Objection.

[signed]Harrie Samaras
Sole Panel Expert
Date: August 20, 2013