ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Academy, LTD., d/b/a Academy Sports + Outdoors v. Half Oaks, LLC
Case No. LRO2013-0003

1. The Parties
The Objector/ Complainant is Academy, LTD., d/b/a Academy Sports + Outdoors of Katy, Texas, UnitedStates of America (“the Objector”), represented by Pirkey Barber PLLC, United States of America.
The Applicant/Respondent is Half Oaks, LLC (referred to in this decision as “the Applicant”), of Bellevue,
Washington, United States of America, represented by The IP & Technology Legal Group, P.C., UnitedStates of America.

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

3. Procedural History
The Legal Rights Objection (“the Objection”) was filed with the WIPO Arbitration and Mediation Center (the“WIPO Center”) on March 11, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the“Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center completed its review of the Objection on
March 20, 2013 and has determined that the Objection complies 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 the
Objection, and the proceedings commenced on April 16, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Applicant filed its Response with the WIPO Center, in time,on May 17, 2013.
The WIPO Center appointed Maxim H. Waldbaum as the Presiding Panelist and Jeffrey M. Samuels andTony Willoughby as the Co-Panelists in this matter on June 14, 2013. The Panel finds that it was properly
constituted. The Panelists have submitted the Statement of Acceptance and Declaration of Impartiality andIndependence, as required by the WIPO Center to ensure compliance with Article 13(c) of the Procedureand Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.

page 2On June 21, 2013, the Objector submitted a Reply to Applicant’s Response.
On June 27, 2013, the Applicant submitted an Objection to Objector’s Request for Additional Submissions
and Annex 1 in support of the same.

4. Factual Background
The Objector
The Objector is a limited partnership, organized under the laws of the State of Texas, United States ofAmerica. It is one of the largest sporting goods retailers in the United States, operating 159 stores in thirteenstates. The Objector has partnered with and sponsors numerous celebrity athletes, professional andcollegiate sports teams, NASCAR, as well as field and stream organizations, in promoting its stores. The
Objector’s stores provide a variety of services and goods, including, but not limited to, sporting goods,
apparel, footwear, field and stream merchandise, bicycles, backpacks, backyard and patio furniture andaccessories, boating and marine products, camping products, fishing products, hunting products, hiking
products, and exercise equipment.
The Objector does a significant volume of its business online at “www.academy.com” and enjoys strong
followings in social media sites, including Facebook, Twitter, and Pinterest.
The Objector referred to its numerous media mentions in news articles, both in print and via broadcast. In
addition, the Objector has used its high profile to sponsor local sports and outdoors organizations in its
communities.
The Objector’s Trademarks
The Objector holds two United States registrations for the word mark ACADEMY: Registration No. 1911968(Class 42: Retail store services in the field of western wear; hunting, fishing and sporting equipment andoutfitting; sporting and athletic equipment, gear and footwear; and outdoor and recreational equipment,
outfitting and merchandise); Registration No. 4349037 (Class 35: Online retail store services featuring
camping, fishing, hiking, hunting, outdoor, and recreational equipment, the foregoing services are offeredthrough a traditional website and also through social media platforms. Class 41: Computer services, namely
providing information online about sports and outdoor activities the foregoing services are also offeredthrough social media platforms).
The Objector also holds three related United States registrations which use the term “academy”:
ACADEMY.COM (Class 35 and Class 41); ACADEMY SPORTS + OUTDOORS (Class 35 and Class 41);and ACADEMY OUTDOORS (Class 41).
The Objector’s “family” of ACADEMY marks originated with its ACADEMY word marks, which have beenused continuously in the United States since 1951 by the Objector. Due to the Objector’s marketing andpromotional efforts, there is widespread recognition of its marks in the United States.
The Objector’s Domain Names
The Objector does a significant portion of its business online at its registered domain name“www.academy.com”.
The Applicant
The Applicant is a limited liability company, organized and existing under the laws of the State of Delaware.
It is an indirect subsidiary of Donuts Inc. The Applicant’s family of companies has applied for nearly 310

page 3gTLD strings and spent over USD 55 million in filing fees. The Applicant is applying to become an ICANN
accredited Top Level Domain registry.
The Applicant’s Application for the <.academy> gTLD String
The Applicant’s application for the <.academy> string (“the Application”) was originally posted onJune 13, 2012, under Application ID: 1-1336-51768.
In the “Mission/Purpose” section of the Application, the Applicant stated:“Donuts Inc. is the parent applicant for this and multiple other TLDs. The company intends to increase
competition and consumer choice at the top level. It will operate these carefully selected TLDs safely
and securely in a shared resources business model.”If the Application proceeds to delegation, registrations of <.academy> domain names will be available for all“legitimate registrations.” Applicant’s response to section 18(a) of the Application sets forth a list of eightdeveloped protections, in addition to the fourteen listed by ICANN, which it intends to use to raise user safety
and protection:(i)

Periodic audit of WhoIs data for accuracy;(ii)

Remediation of inaccurate WhoIs data, including takedown, if warranted;(iii)

A new Domain Protected Marks List (DMPL) product for trademark protection;(iv)

A new Claims Plus product for trademark protection;(v)

Terms of use that prohibit illegal or abusive activity;(vi)

Limitations on domain proxy and privacy service;(vii)

Published policies and procedures that define abusive activity; and(viii)

Proper resourcing for all of the functions above.

At section 29 of the Application, the Applicant addressed the issue of Rights Protection Mechanisms(“RPMs”). Under this heading, the Applicant referred to its “independently developed” RPMs, including:(i)

Reserved names: to protect names specified by ICANN, including the necessary geographic names;(ii)

A Sunrise Period: adhering to ICANN requirements, and featuring trademark validation via theTrademark Clearinghouse;(iii)

A Trademark Claims Service: offered as per ICANN requirements, and active after the Sunrise period
and for the required time during wider availability of the TLD;

(iv)

complying with the Uniform Rapid Suspension system (“URS”) requirements;(v)

complying with the Uniform Domain Name Dispute Resolution Policy (“UDRP”);(vi)

complying with the Domain Protected Marks List (“DPML”);(vii)

Claims Plus; and(viii)

Abusive Use and Takedown Policies.

page 4The Applicant stated that it would use three criteria to determine Sunrise eligibility for a given application:(1)

Ownership of a qualifying mark, as defined by ICANN”s Trademark Clearinghouse or found in national
trademark registries or supported by common law usage;(2)

Representation by the applicant that all information provided is true and correct; and(3)

Provision of data sufficient to document rights in the trademark.

Other Applications made by the Applicant
In addition to the Application, the Applicant (through associated companies) has made numerous otherapplications for new gTLDs in pursuit of its goal to become an accredited TLD registry. A list of those othergTLD applications is attached as Exhibit 2 to the Applicant’s Response.
Additional Matters referred to by the Applicant in the Response
The Applicant acknowledged in its Response that the <.academy> gTLD will be open to all legitimate domain
applications and that it will follow ICANN rules and its own independent guidelines to ensure that only fully
qualified applicants will be awarded Sunrise names.
The Applicant asserted in its Response that it has invested significantly, in terms of time, money and effort,in the development of all of its new gTLD applications, including the instant Application. However, it did notprovide evidence in support of that assertion, beyond a reference to the payment of the application fee for a
new gTLD.
Other Matters referred to or acknowledged by the Parties
The Applicant does not claim that it has been known by the name “academy”. Nor does the Applicant claim
any trademark or other legal rights specific to the term “academy,” apart from its use on the above-identified
goods and services.

5. Parties’ Contentions
A. Objector
The Objector contended that it has standing to object under the Procedure, based on its trademark
registrations for the mark ACADEMY, and its “family” of other registered and unregistered marks containing
the term “academy”. It contended that it would suffer damage if the Application were allowed to proceed.
The Objector contended that the potential use of a <.academy> gTLD by the Applicant would:(i)take unfair advantage of the distinctive character and the reputation of the Objector’s ACADEMY
marks;(ii)

unjustifiably impair the distinctive character and the reputation of the Objector’s ACADEMY marks;
and

(iii)

otherwise create an impermissible likelihood of confusion between the <.academy> gTLD and the
Objector’s ACADEMY marks.

Addressing the non-exclusive individual factors which experts are required to consider under Section 3.5.2,
Module 3, gTLD Applicant Guidebook, the Objector contended as follows:page 5

1.

The applied for gTLD is identical or similar, including in appearance, phonetic sound and/or meaning,
to Objector’s existing ACADEMY marks.

2.

Objector’s acquisition and use of its rights in the ACADEMY marks have been bona fide. The
Objector owns multiple United States registrations for its ACADEMY marks, granting Objector apresumption of validity of its marks, and of Objector’s exclusive right to use the registered marks incommerce on or in connection with the goods or services specified in the registrations.

3.

At least by virtue of Objector’s United States registrations, as well as its ownership of the domainname <academy.com>, Applicant had actual or constructive knowledge of the ACADEMY marks or
could not reasonably have been unaware of the ACADEMY marks at the time of application for the
gTLD.

4.

Through Objector’s marketing and promotional efforts, there is widespread recognition in the relevant
sector of the public of the ACADEMY marks.

5.

Applicant has not used, nor has it made demonstrable preparations to use, the term “academy” inconnection 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.

6.

Applicant does not have any trade or service marks or other intellectual property rights in ACADEMY.

7.

Applicant is not commonly known by the sign corresponding to the gTLD.

8.

Applicant’s intended use of the <.academy> gTLD would create a likelihood of confusion with
Objector’s ACADEMY marks as to the source, sponsorship, affiliation, or endorsement of the<.academy> gTLD in at least the following ways: consumers will believe that a website or email
address associated with a domain name using <.academy> is owned by Objector and Objector will
have no control to prevent “cybersquatters” from using such domains to promote lesser quality goods
or services. In addition, Internet users looking for Objector and for Objector’s goods and services
online will be likely to find other websites with the <.academy> gTLD and become confused as to the
Objector’s affiliation with these websites and their content.

9.

If Applicant’s gTLD application is successful, the policing burden on Objector will be enormous andforce Objector to expend substantial resources to review the domains registered and address any
problems that arise.

10.

The UDRP and URS are likely to be insufficient to address the Objector’s concerns at the second level
as the gTLD for a domain name is typically ignored as irrelevant in assessing whether the domainname is identical or confusingly similar to the complainant’s mark.

B. Applicant
The Applicant’s contentions may be summarized as follows:
1.

The Applicant’s potential use of the <.academy> gTLD would not take unfair advantage of, or
unjustifiably impair, any distinctive character or reputation which may subsist in the Objector’s
ACADEMY marks. Any potential use the Applicant might make of a <.academy> gTLD would not
create any impermissible likelihood of confusion between the Objector’s marks and the <.academy>
gTLD.

2.

The applied for gTLD is not actionably similar in appearance, sound and meaning to the Objector’smarks. The generic nature of the term “academy” means that similarities to Objector’s marks areunavoidable and, therefore, the broad range of uses dramatically reduce the term’s ability to serve apage 6source-identifying function and similarities should be deemed irrelevant.
3.

The Objector has used the ACADEMY marks on a limited basis concentrated mostly in theSoutheastern United States, where all of its stores are located. There is no evidence, other than theuse of a website, to indicate that Objector uses the marks to advertise outside of that geographic
region and all uses of the mark for the single term “academy” are in conjunction with other terms as in
Academy Sports + Outdoors.

4.

Objector fails to prove public recognition of the sign corresponding to the gTLD as the mark of the
Objector, as opposed to third parties. For a gTLD the relevant sector of the public includes everyonein the world with Internet access. Objector shows only recognition in its limited sector andgeographically in the United States alone. Other similar domain names, as demonstrated in
Applicant’s Response, annex D, show that <academy.net>, <academy.org>, < academy.biz>, and<academy.us> are registered to other unrelated persons or entities (Digimedia.com, LP, Academy of
Motion Picture Arts & Sciences, J. Jon-Chul in Korea, and A. Margalit, respectively). One who claims
a common, descriptive word as a trademark takes the risk that many others will use the same orsimilar terms to identify their companies, services and/or goods.

5.

Objector demonstrates no improper intent on the part of Applicant in applying for the <.academy>gTLD. Although Objector contends that Applicant cannot have reasonably have been unaware of
Objector’s marks at the time of the Application, Applicant has no obligation to search trademark or
domain name records to determine other uses of the term it proposes to use as, by definition, ageneric top level domain. In this case, a search for the term “academy” in domain registrations would
have resulted in thousands of United States registered marks.

6.

Applicant has prepared to use the sign corresponding to the gTLD in connection with providing bonafide access to information on the Internet that does not interfere with any legitimate rights of the
Objector. Applicant’s family of companies has applied for nearly 310 strings spending over USD 55
million on ICANN filing fees and has invested substantial time and money in planning and preparing touse <.academy> and each of its other gTLDs. The Applicant has also set up anti-abuse and rights
protection mechanisms in excess of those required by ICANN. The Applicant will have terms andconditions that prohibit unlawful conduct, and it reserves the right to delete second level domainnames used for such behavior.

7.

The Applicant has rights in the sign corresponding to the gTLD by virtue of its Application.

8.

The Applicant’s proposed bona fide use of the sign corresponding to the gTLD is consistent with therights it has acquired by virtue of its Application.

9.

Applicant’s intended use of the gTLD creates no likely confusion with Objector’s marks as to thesource, sponsorship, affiliation or endorsement of the gTLD. Applicant looks to United States caselaw and argues that Objector’s mark is weak, Objector has failed to establish that similarity in sight,
sound and meaning is sufficient to promote confusion inasmuch as other online usage of the term
“academy” has been for diverse goods and services not associated with Objector and Objector’s useof the term “academy” is limited to a channel of trade not used by Applicant. In addition: Internet users
are unlikely to attach source significance to the information “to the right of the dot” based on
experience with already existing gTLDs; Objector has shown no ill intent by Applicant; Objector has
shown no actual confusion, only potential confusion.

10.

If the Objection was allowed, it would prevent Applicant from offering the dictionary term “academy” asa TLD and thus create an improper Internet-wide monopoly over a common English-language word.

page 7
6. Discussion and Findings
Section A
Principles for Adjudication of Legal Rights Objections
The principles which expert panels are required to apply in dealing with Legal Rights Objections are set out
at Section 3.5.2 of Module 3 to the gTLD Applicant Guidebook.
The starting point is that applied-for strings must not infringe the legal rights of others that are recognized orenforceable under generally accepted and internationally recognized principles of law. In giving effect to that
requirement, expert panels are required to determine whether the potential use of the applied-for gTLD by
the applicant:(i)takes unfair advantage of the distinctive character or the reputation of the Objector’s registered or
unregistered trademark or service mark […]; or(ii)

unjustifiably impairs the distinctive character or the reputation of the Objector’s mark […]; or(iii)

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

The Objector in a Legal Rights Objection proceeding bears the burden of proof.
As part of its task of making the determinations listed in (i) to (iii) above), the Panel is required to consider
eight specific factors, which are listed in Section 3.5.2. These specific factors are expressly stated to be
non-exclusive, and are applicable where the objection is based on trademark rights. We consider each ofthese factors in Section 6C of this Determination.
Section B
Considerations Relevant to the Interpretation of the Section 3.5.2 Adjudication Principles
1.

It is the potential use of the <.academy> gTLD string by the Applicant with which the Panel is in thefirst instance concerned, more than the potential uses to which individual domain name registrants of<.academy> domain names might put their domain names. In this case, the evidence is that the<.academy> gTLD will be used by the Applicant as an open gTLD, at which individuals andcorporations who satisfy the Sunrise requirements will be able to register <.academy> domain names
through ICANN–accredited registrars, of which Applicant seeks to be one. The issue of these new
domain names will be subject to the ICANN-prescribed RPMs (including the UDRP and the URS for
individual domain name registrants, and the PDDRP for the Applicant), and to further specific RPMs
which the Applicant has developed. The question is whether this use of the proposed <.academy>gTLD by the Applicant would do any of the things listed in (i) through (iii) in Section 6A of this
Determination.

2.

In light of Objector’s trademarks and Applicant’s desired use, how should the Panel deal with thepotential for confusion at the second level? This is an important issue in this case, where the potential
appears to exist for someone to register domain names such as <sportingequipment.academy> or<athleticequipment.academy>, or other combinations which might call to mind the Objector for asignificant number of Internet users.
In I-Registry Ltd v. Vipspace Enterprises LLC, WIPO Case No. LRO 2013-0014 (gTLD string <.vip>),
the panel noted that there might be scope for infringement of the objector’s trademark at the second
level, but took the view that it was only concerned with the top level.

page 8In Express, LLC v. Sea Sunset, LLC, WIPO Case No. LRO 2013-0022 (gTLD string <.express>), thepanel noted that, while an argument existed that even a gTLD as ubiquitous as <.com> could be said
to “create” a likelihood of confusion by providing a wider range of fora in which prospective domainname registrants might take unfair advantage of trademark rights, as a general proposition domain
registries operating in a bona fide manner are not held legally responsible for allowing domain names
to be registered that create a likelihood of confusion with respect to existing trademarks.
This Panel agrees with the conclusion of the panel in Blue Cross and Blue Shield Association v. Afilias
Limited (“BCBSA”), WIPO Case No. LRO2013-0004 (gTLD string <.blue>), that“[I]n most cases the operator of a new gTLD, should not be regarded as ‘taking advantage of’, or as‘impairing’, the distinctive character or reputation of an objector’s trademark, in circumstances where
the relevant taking advantage or impairing arises only out of the registration of particular domainnames in the new gTLD by third parties unrelated to the registry operator and its conduct.”
As in the <.blue> case (supra), the Panel finds that the establishment of a new gTLD is not enough, on
its own, to create a likelihood of confusion between the gTLD and an objector’s mark. Any likelihoodof confusion at the second level does not reach the level of being “impermissible” under the final of thethree criteria the Panel is required to apply.
3.

In the <.express> case (supra), the panel referred to the possibility of the objector being called upon todeal with potential Internet user confusion at the second level, and went on to say: “complainant faces
this risk because it adopted a common word in the English language for its trademark. It may bedifficult to protect that term outside its channel of trade”.
That observation is applicable to the gTLD here, where the string in question consists of a single wordin the English language not used exclusively by the Objector, but occurring in everyday speechwithout reference to the Objector.

4.

The Applicant contended that top level domains are not regarded as source indicators by Internet
users who are experienced with existing TLDs and attach no significance to anything “after the dot.”That may be particularly true where the new gTLD consists of a third party trademark which is also acommon generic term.
Moreover, it is not accurate to state, as Objector contends, that what comes “after the dot” is always
ignored by UDRP panels. While what comes “after the dot” is usually ignored, because what follows
the dot is usually perceived by the Internet community to be a generic suffix rather than a source
identifier, and does not detract from the distinctiveness of what precedes the dot, such is not always
the case. To take a hypothetical example, if the domain name at issue was <via.com>, it is mostunlikely that a UDRP panel would ignore the suffix when assessing whether the domain name was
identical or confusingly similar to the trade mark, VIACOM. See project.me GmbH v. Alan Lin, WIPO
Case No. DME2009-0008, involving the domain name <project.me>, is a case where the top leveldomain identifier was taken into account.
While each contested gTLD must be determined on a case by case basis and will be affected by theunique facts applicable to each dispute, in a case where the applied-for gTLD string consists of asingle generic English language word, the Panel notes that it may be more difficult for an objector to
successfully argue that the gTLD string on its own, without more, will be seen as a source indicator.

7.

As the Panel in the <.blue> case noted:“‘… it is possible that new gTLDs with more general dictionary meaning may appropriately form part ofany assessment of the legal status in trademark terms of such domain or registrations made therein.’[…] to the extent that panels deciding cases under the UDRP have in the past ignored everything to
the right of the dot in addressing the question of confusing similarity, a different approach may bepage 9required with the new gTLDs. […] A domain name registered in a new gTLD, in combination with thegTLD string itself, might be almost identical to a complainant’s trademark, and it would seemunrealistic to ignore the gTLD string in such circumstances.” (Internal reference to Defender Security
Company v. Charleston Road Registry Inc., WIPO Case No. LRO2013-0032 (relating to the gTLD
string <.home>).)Section C
The Eight Factors, and how they are to be applied in this Case
1.

Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound,or meaning, to the Objector’s existing mark.
The <.academy> gTLD is clearly identical to the Objector’s ACADEMY marks in terms of its
appearance and phonetic sound. As to meaning, the Panel accepts that “academy,” as used in the
proposed new gTLD, was intended to be open to any qualified applicant for the purpose ofdisseminating information online. It is not so clear whether that is the case with the Objector’s
ACADEMY marks, where it appears that the word has the (secondary) meaning of acting as a source
indicator for particular goods provided by the Objector.

2.

Whether the Objector’s acquisition and use of rights in its ACADEMY mark has been bona fide.
There is nothing in the evidence which would suggest that the Objector’s acquisition and use of its
ACADEMY marks has not been bona fide and the Applicant has not suggested otherwise.

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 Applicant has not claimed any rights in an ACADEMY mark or contended that any relevant sectorof the public regards ACADEMY as a mark of the Applicant. As for third parties, there is evidence of avery substantial number of trademarks registered around the world that contain the term “academy”. It
is more than likely that some of the proprietors of those marks could justifiably claim a level ofrecognition of that expression (in some sectors of the public and in respect of some particular goods orservices) as their trademark or service mark.
Turning to the Objector, the Panel accepts that, as the proprietor of two ACADEMY service marks in
the United States, there is likely to be some level of recognition of ACADEMY as a service mark of the
Objector, particularly in the Southeastern United States and in the sector of sporting goods. But thePanel’s conclusion is that the Objector has primarily used the term “academy” in combination withsome other word or words, as in ACADEMY SPORTS + OUTDOORS. The Panel did not note any
evidence to support a finding of public recognition of the Objector’s mark ACADEMY, standing alone.

4.

Applicant’s intent in applying for the gTLD, including whether the Applicant, at the time ofApplication, had knowledge of the Objector’s mark, or could not have reasonably been
unaware of that mark, and including whether the Applicant had 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 Applicant denied that it was aware of the Objector when it lodged the Application. In support ofthis, Applicant points out that a trademark search for marks containing the term “academy” yields
thousands of registrations in the United States alone. The Panel has no reason to doubt the
Applicant’s assertion that it applied for the <.academy> gTLD for the purpose of establishing a new
open registry which would provide domain names to qualified individuals, businesses, andorganizations. The fact that the Applicant (through associated companies) has applied for numerous
other generic term gTLDs is consistent with that assessment.

page 10

There is no allegation that the Applicant has previously engaged in any pattern of conduct whereby it
has applied for, or operates, TLDs, or registrations in TLDs, 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 orservices or a bona fide provision of information in a way that does not interfere with thelegitimate exercise by the Objector of its mark rights.
The Applicant does not claim to have made any use of a sign corresponding to the <.academy> gTLD
in connection with any bona fide offering of goods or services or bona fide provision of information.
However, the Applicant submits that it has made demonstrable preparations to use the sign
corresponding to the <.academy> gTLD in connection with such services.
While it has been noted that preparations to establish technical and administrative infrastructure tooperate a new gTLD may be considered preparations to use a given gTLD string, it is a given thatevery applicant for a new gTLD string will likely have performed some work in creating the technicaland administrative support to operate its proposed new gTLD. Such preparations cannot, therefore,
be given special consideration as bona fide use or preparation to use the gTLD at issue. It is,therefore, unnecessary to consider the question of interference with respect to the legitimate exercise
by the Objector of its mark rights.

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,
has been bona fide, and whether the purported or likely use of the gTLD by the Applicant is
consistent with such acquisition or use.
The Applicant has not claimed that it holds any intellectual property rights in a sign corresponding to
the <.academy> gTLD outside of its application.

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 suggestion that the Applicant has been commonly known by a sign corresponding to the<.academy> gTLD.

8.

Whether the Applicant’s intended use of the gTLD would create a likelihood of confusion with
the Objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
While the Panel recognizes that, through its marketing and promotional efforts, the Objector has madeitself known to a certain limited business and geographic sector of the public, the Panel finds that thevast majority of Internet users coming across a <.academy> gTLD would have no reason to assume
that it was intended as a reference to the Objector and could just as likely connect it to the myriad
other uses of the term “academy” in the English language and in commerce. In this case, the term
“academy” alone and, therefore, the gTLD <.academy>, without more, is not a threat to the Objector’smarks; rather, the more serious danger arises at the second level of domain registration.
Considering the position at the second level, the Panel finds that (i) there are a number of domainnames that might be registered which, when read with the “.academy” suffix, could evoke the Objector
and its activities in the fields of sporting goods or athletics, and (ii) such registrations might cause
confusion with one or more of the Objector’s ACADEMY marks (at least among those members of the
public who are already familiar with the Objector), as to the source, sponsorship, affiliation, or
endorsement of the <.academy> gTLD. The Panel further recognizes that the Objector could notpage 11reasonably expect to completely eliminate that sort of confusion by making defensive registrations
during the Sunrise period, and that while the UDRP and the URS will be available to address abusive
registrations at the second level (and the option of Court proceedings for trademark infringement or
unfair competition may be available in particular cases), there could still be a period when some levelof marketplace confusion was present and the burden on Objector to police domain registrations forpotential infringement claims would be great.
However, the Objector cannot prevail on such considerations. First, there is the question of whether
the likelihood of confusion with Objector’s ACADEMY marks, even at the second level, has been“created” by the Applicant’s potential use of the <.academy> gTLD. Secondly, there is the question ofwhether the likely amount of confusion at the second level may be permissible, having regard to thefacts that (i) “academy” is a common, generic English language word, and (ii) the vast majority of
domain names which would be registered in a <.academy> gTLD would likely be bona fide
registrations which did not suggest any connection with the Objector.
Section D
Additional Considerations
1.

The fact that “academy” is a common, generic English language word weighs strongly in the
Applicant’s favor. As in the <.blue> and <.express> cases, the Objector has itself created somedifficulty in enforcement of its mark for the simple reason that it has chosen a common word in the
English language for its trademark. As in the <.express> case, it may be said that what the Applicant
is doing in this case is no more than “making available the use of a common term in the English
language for Internet user registration in domain names.”2.

As noted in the <.blue> case, Section 3.5.2 directs the Panel to consider the listed standards tointerpret and give meaning to the GNSO Recommendation:“Strings must not infringe the existing legal rights of others that are recognized or enforceable undergenerally accepted and internationally recognized principles of law.”
The Panel is therefore obliged to give some consideration to the extent of the Objector’s enforceable
rights in its ACADEMY marks, and, in particular, to any limitations on those rights which might exist.
The Applicant proposes to use the generic English language term “academy” not necessarily inaccordance with its dictionary meaning. However, Objector’s use also does not rely on the dictionary
meaning for its trademark. Based on the widespread usage of the term “academy” as a dictionary
term and for various trademarks in numerous sectors of business, the Panel does not find evidence
that the Applicant will or may use the gTLD dishonestly, fraudulently, or otherwise in bad faith.

Section E
What Weightings should the Panel give to the Factors addressed in Sections C and D of this
Determination?
The eight factors are explicitly labeled as nonexclusive and no one factor is determinative of the outcome of
the Panel’s determination. The factual circumstances of each case may result in some factors being moresignificant than others. The Panel’s determination, therefore, must be based on the totality of thecircumstances specific to each case.
On the facts before the Panel, it is clear that the proposed <.academy> gTLD is not only similar, but identicalto the Objector’s ACADEMY trademarks. It is also apparent that second level domain registrations could be
used in such a way as to create confusion with the Objector’s marks as to the source, sponsorship, affiliationor endorsement of the <.academy> gTLD.

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However, as discussed in Section D above, the common generic use of the term “academy”, as well as thelack of clear evidence showing widespread public recognition of the Objector’s ACADEMY marks, standing
alone, weigh heavily in the Applicant’s favor. In this case, the Panel finds that such considerations must
result in rejection of the Objector’s Objection.
Section F
The Panel’s Determinations on the Three Standards
1.

Taking unfair advantage of the distinctive character or the reputation of an Objector’s markThe Objector argued that allowing the Application to proceed would create the opportunity for the
Applicant to unfairly take advantage of the public’s misperception that the Objector operates or isotherwise associated with the <.academy> gTLD. The Panel finds this argument unpersuasive. The
mere delegation of a <.academy> gTLD is unlikely to create any public confusion of the kind alleged,
particularly given the generic and common nature and widespread use of the word “academy”.
If a second level domain was to be registered in such a way as to infringe on the Objector’s trademark
rights, the Objector could rely on the UDRP and/or the URS, and, depending on the circumstances,might also be entitled to redress in an appropriate Court.
Furthermore, any advantage from a second level domain registration would accrue primarily to thesecond level registrant, not to the Applicant. It is therefore hard to understand how the Applicant istaking advantage by its use of the <.academy> gTLD.

2.

Unjustifiably impairing the distinctive character or the reputation of the Objector’s markThe Panel is not persuaded by the evidence presented that the mere existence of the proposed<.academy> gTLD could impair the distinctive character or the reputation of any of the Objector’s
ACADEMY marks, let alone do so “unjustifiably”. Given the widespread usage of the term “academy”
in daily speech and in other unrelated trademarks, the <.academy> gTLD cannot be seen as impairing
the distinctive character of Objector’s marks.

3.

Otherwise creating an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s markAny confusion which could arise between the <.academy> gTLD string, standing alone, and the
Objector’s ACADEMY marks (or with any of the Objector’s “family” of ACADEMY marks) may beinsignificant.
The complication comes from the potential for confusion at the second level. However, as otherdecisions have recently noted, the Process standard requires this Panel to compare only the
Objector’s ACADEMY mark and the <.academy> gTLD string at the top level. The Panel, therefore,cannot police the issue of potential future confusion at the second level.
However, as noted in the <.blue> case (supra), even if second-level confusion is to be considered, theadditional factors referred to in Section 6D of this decision, considered with the availability of the
RPMs at the second level and the possibility of recourse to the courts in appropriate cases, mitigates
the risk of second level confusion to a level which the Panel would regard as “permissible”.
The Panel explicitly notes that the Applicant has committed to work with rights holders to avoid thekind of second level confusion which the Objector fears may arise and has developed its own internal
standards by which domain name applicants will be judged. The Panel expects the Applicant to follow
through on its intent to allow only “qualified” users to register domain names.

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The Panel concludes that it has not been shown that the potential use of the applied-for <.academy>gTLD by the Applicant creates an impermissible likelihood of confusion between the <.academy>gTLD and any of the Objector’s ACADEMY marks.

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.

The Panel rejects the Objection.
[signed]Maxim H. Waldbaum
Presiding Expert[signed]Jeffrey M. Samuels
Expert[signed]Tony Willoughby
ExpertDate: August 16, 2013