ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
DotSong Limited v. Amazon EU S.à.r.l.
Case No. LRO2013-0064

1. The Parties
The Objector/Complainant is DotSong Limited of Lemesos, Cyprus, represented by Mr. ConstantineRoussos, Cyprus.
The Applicant/Respondent is Amazon EU S.à.r.l. of Luxembourg, represented byEdwards Wildman Palmer UK LLP of the United Kingdom.

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

3. Procedural History
The Legal Rights Objection (“the Objection”) was filed with the WIPO Arbitration and Mediation Center (the“WIPO Center”) on March 14, 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 22, 2013 and determined that the Objection complied with the requirements of the Procedure andthe World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the “WIPO Rules for New gTLD Dispute Resolution”).
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Applicant of theObjection, and the proceedings commenced on April 19, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center onMay 18, 2013.
The WIPO Center appointed Tobias Zuberbühler as the Panel in this matter on June 18, 2013. The Panelfinds that it was properly constituted. The Panel has submitted the Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance withArticle 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.

page 2On April 26, 2013, the Objector wrote to the WIPO Center requesting that Mr. Jason Schaeffer ofESQwire.com P.C., who was stated to be assisting the Objector in this case, be copied on correspondence
related to the case. Later, on July 10, 2013, Mr. Schaeffer wrote to the WIPO Center as follows:“I write to clarify, and avoid confusion that appears in some recent communications, for the .MUSIC, .SONG,and .TUNES LRO proceedings. Please note that Objector is still represented by the original filer of theObjections, Constantine Roussos and [Constantine Roussos] should remain the representative and primarypoint of contact.
DotMusic has asked that our firm be copied on correspondence.”
Reference is made to the similar case of <.tunes> between the same parties (LRO2013-0065). The Panel inthat case considered the same request from Mr. Schaeffer and determined as follows:“The Panel has considered this request, which is somewhat surprising given the Objector’s earlier
notice that Mr. Schaeffer would be assisting the Objector. In any event, the Panel does not consider it
appropriate that a person or party who is not a party to proceedings and is not, or no longer, the formal
representative of a party, be copied on correspondence. The Panel therefore determines that Mr.
Schaeffer and his firm not be included on any further communication in this case.”
The Panel in this case makes the same determination on this point.

4. Factual Background
The Objector is the registered owner of a figurative European Community Trademark .SONG in classes 35,
42 and 45 (No. 010535375). The mark was applied for on December 30, 2011. The specification of themark covers, inter alia:“domain name reservation, registration, maintenance and management services; domain name searching
services; domain name registry services, namely coordinating the assignment of domain names andaddress space; technical and legal research relating to Internet domain names (45),” “Computer services,namely research, reservation, recording and administration of Internet domain names; technical expertise
relating to Internet domain names and projects; management of a web based commercial platform ofInternet domain names and projects, surveying for Internet domain names and projects, design anddevelopment of Internet projects (42),” and “management of databases, management of a database forInternet domain names and projects, also containing Internet domain names and other Internet addresses;
administrative services provided in connection with registration and allotment of Internet domain names andother Internet addresses, including renewal and assignment services (35).”
A representation of the mark is set out below.

The Applicant and its related entities are involved in the sale over the Internet of a large range of products
and services, particularly in the field of music.
The Applicant registered the gTLD <.song> with the intention of being a single entity register to allow relatedentities of the Applicant to make use of the gTLD.

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5. Parties’ Contentions
A. Objector
The Objector asserts that it is an e-commerce company that does business under “.MUSIC” themed domainnames, including .MUSIC, .SONG and .TUNES. In its Objection the Objector states that it “conducts
business as ‘DotTunes’, ‘.TUNES’, ‘DotMusic’, ‘.MUSIC’ or ‘Music.us’ and is referenced hereinafter as‘DotMusic.’”
The Objector filed evidence purportedly showing the fame of .MUSIC, including the sponsorship of various
events, press releases and Internet traffic. Very little evidence was filed to show any fame of .SONG; theObjector solely relied upon the Twitter account “www.twitter.com/dot_song” (over 50,000 followers with over30,000 account posts).
The Objector alleges that the potential use of the applied-for gTLD by the Applicant:(i)takes unfair advantage of the distinctive character and reputation of DotMusic’s marks and business;and(ii)unjustifiably impairs the distinctive character and reputation of DotMusic’s marks and business; and(iii)

creates an impermissible likelihood of confusion between the applied-for gTLD and DotMusic’s marksand business.

B. Applicant
The Applicant’s principal response is that there is no distinctive character, either inherent or acquired, in thegeneric and descriptive word “song”. The Objector’s trademark is for a figurative mark depicting stylized
wording, colored graphics representing a speech bubble and a person wearing headphones. Accordingly,
the Applicant argues the trademark’s distinctive character resides solely in the appearance and arrangementof its graphical elements, including its coloring and font, the speech bubble and the large, imposing image ofa person wearing headphones.
The Applicant argues that it is a generally accepted and internationally recognized principle of trademark law
that whether a sign is distinctive is assessed from the perspective of the average consumer of the goods andservices supplied under the mark. Further, it is generally accepted that to be protectable as a trademark, asign must possess sufficient distinctive character to enable an average consumer to distinguish one
supplier’s goods and services from those of another supplier. If a sign has no distinctive character, it is notcapable of performing this essential function of designating origin, and cannot be protected as a trademark.
The Applicant argues that there is no inherent distinctiveness in the text strings “song” or “.song”. Theaverage consumer will understand “song” to refer to music-related goods and services and will not perceive“song” as a designation of a single commercial origin of such goods and services. The addition of “.” to thegeneric and descriptive sign “song” does not affect this analysis since this minor element will be disregarded
by the average consumer, particularly the average Internet consumer, as incapable of distinguishing orotherwise changing the meaning of the (generic and descriptive) dominant element of that sign.
The Applicant accepts that a non-distinctive mark may acquire distinctiveness. However, the Applicant
emphasizes that none of the Objector’s evidence went anywhere to show that the Objector’s trademark hadacquired distinctiveness.
For these reasons the Applicant argues that the Applicant’s gTLD would not affect the reputation of theObjector’s .SONG trademark nor would it take unfair advantage or be an unjustifiable impairment, or create
an impermissible likelihood of confusion in relation thereto.

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6. Discussion and Findings
The Panel finds that the Objection should be rejected. Having considered the merits of the case before it,this Panel does not see any reason to depart from the conclusive reasoning in the entirely comparable<.tunes> case, and indeed here incorporates significant elements of that determination’s wording.
The Objector’s trademark .SONG is identical to the gTLD <.song>. The word “song” is, however, a genericand descriptive mark when used in relation to music, which is the intended use of both the Objector and theApplicant. The .SONG trademark as registered includes many other elements, including colors, a speech
bubble and the image of a person wearing headphones. None of these are similar to the <.song> gTLD.
It is in fact likely that an application for “SONG” by itself as a trademark without these additional features
would have been rejected for registration in the context of music.
The Objector has produced very little evidence of use of .SONG in trade or commerce. What evidence hasbeen produced relates to the use of .MUSIC. However, no substantive argument was put forward as to why
this was relevant to the application for .SONG. The panel can see no relevance other than that they arerelated words. The Panel does not consider that any consumer seeing the gTLD <.song> would relate it tothe Objector. (For the avoidance of doubt, the Panel wishes to make it clear that it is not making findings inrelation to the distinctiveness of .MUSIC. That gTLD is the subject of other LRO proceedings.)
Section 3.5.2 of the ICANN Applicant Guidebook provides that where the Objection is based on trademarkrights, the Panel will consider eight non-exclusive factors. To the extent still relevant in light of the above,
the Panel sets out its views under each of these factors below.
(1) Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound, ormeaning, to the objector’s existing mark.
The gTLD <.song> is phonetically identical to the Objector’s registered trademark. As set forth above,
however, there are substantial differences to the mark as registered and how it would be used as a string ina gTLD.
(2) Whether the objector’s acquisition and use of rights in the mark has been bona fide.
Given its conclusions, the Panel does not consider it necessary to make a finding in relation to the Objector’sgood faith in the acquisition and use of rights in the mark .SONG.
(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.
As set out above, there is very little evidence of any recognition by the public of the mark of the Objector.
As to the Applicant, see (6) and (7) below. The parties’ pleadings do not focus on any third-party marks.
(4) 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.
Given the generic and figurative nature of the Objector’s mark, whether the Applicant had knowledge of theObjector’s mark is not particularly relevant in this case. No allegation has been made that the Applicant isengaged in a pattern of conduct of applying for TLDs which are identical or confusingly similar to marks ofothers.
(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

page 5or a bona fide provision of information in a way that does not interfere with the legitimate exercise by
the objector of its mark rights.
There was no evidence offered by the Applicant as to preparations it had made to use the gTLD <.song>.
In any event, given the generic nature of the gTLD and the very limited use made by the Objector of its
trademark .SONG, the Panel does not consider this element relevant to the decision in this case.
(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.
The Applicant bases its case on the argument that the gTLD is generic and descriptive. It therefore has notsought to prove any intellectual property rights.
(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.
The Applicant has not been commonly known by the sign <.song> or SONG. It intends to build a businessusing the gTLD.
(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.
Given the generic nature of the sign and the limited use of the Objector’s mark, the Panel finds that there islittle or no likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the gTLD.
In conclusion, the Panel finds that the potential use of the applied-for gTLD by the Applicant:(i) does not take unfair advantage of the distinctive character or the reputation of the Objector’s trademark.SONG,(ii) does not unjustifiably impair the distinctive character or the reputation of the Objector’s mark, and(iii) does not otherwise create an impermissible likelihood of confusion between the applied-for gTLD and theObjector’s mark.

7. Decision
For the above reasons, the Objection is rejected.

[signed]Tobias Zuberbühler
Sole Panel Expert
Date: July 22, 2013