ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Starbucks (HK) Limited v. Amazon EU S.à.r.l.
Case No. LRO2013-0027

1. The Parties
The Objector/Complainant (“Objector”) is Starbucks (HK) Limited of Hong Kong, China, represented by
Dechert LLP of the United Kingdom of Great Britain and Northern Ireland.
The Applicant/Respondent (“Applicant”) is Amazon EU S.à.r.l. of Luxembourg, represented by Covington &Burling LLP of the United States of America (USA).

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

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 Respondent of the
Objection, and the proceedings commenced on April 17, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center on
March 15, 2013.
The WIPO Center appointed Warwick Rothnie as the Panel in this matter on June 17, 2013. 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. The Panel finds that it was properly constituted.
On July 26, 2013, the WIPO Center notified the parties that the deadline for rendering the Panel’s expert
determination had been extended by 14 days pursuant to Article 21(a) of the Procedure.

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4. Factual Background
A. The Objector
The Objector is based in Hong Kong and is a wholly owned subsidiary of PCCW Limited. Its function within
the PCCW group is to hold assets including the group’s registered trade marks and other rights. The PCCW
group provides, amongst other things, television and media services to subscribers in Hong Kong and,according to the Objection, a number of other jurisdictions including Malaysia, China, Canada, the United
Kingdom (UK) and on international air carriers. For present purposes, it is sufficient to refer to the Objector
and the other members of the group just as PCCW.
According to the Objection, PCCW launched an IPTV (internet protocol television) network in Hong Kongin 2003 under the name Now Broadband TV. It says that its service, currently known as Now TV, provides
over 190 channels of programming in Hong Kong including channels with names such as Now Sports and
Now News. It is one of the largest pay TV operator in Hong Kong with apparently more than 1,165,000
subscribers or more than 50% of the households in Hong Kong. In 2007, PCCW was considered in one
industry survey to be the most successful IPTV operator in the world. In 2009, another international media
analyst considered PCCW’s Hong Kong operation was the eighth largest IPTV operation in the world interms of the number of subscribers. The Now TV platform is also accessible to subscribers through websites
at “www.now.com” and “www.now-tv.com”. PCCW’s service, either under the name Now Broadband TV or
Now TV, has been the subject of an Harvard Business School case study in 2008, a full page article in Timemagazine in 2005 and other media reports. It has been the subject of at least eight international industry
awards. PCCW executives have also made frequent presentations about Now TV to industry conferences in
Asia, the UK and on at least one occasion in Chicago in the USA.
Although the figures are presented somewhat confusingly, the Panel understands them to demonstrate that
PCCW’s revenues from Now TV in Hong Kong are at least in terms of hundreds of millions of US dollars
each year and advertising expenditures between 2006 and 2012 have ranged from USD 4 million to
USD 12 million.
The Objector has provided a list of some 112 trade marks it owns around the world. Excluding pending
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applications, 86 are registered trade marks in various countries or jurisdictions around the world. Forty-fiveof these are registered in Hong Kong. The registrations typically cover a wide range of goods or services inInternational Classes 9, 38 and 41 and in most cases also classes 35 and 42.
None of the registrations are for the word NOW alone. Except in four cases, the registrations outside Hong
Kong all include the word NOW with device elements. Of these, the simplest or least adorned take the form:

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or

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In China, the Objector also has registrations for NOW BROADBAND TV as a plain word mark, registration
numbers 4790565 to 4790573.

1

Pinterest Inc. v. Amazon EU S.à.r.l, WIPO Case No. LRO2013-0050.

2

For example, the registered trade marks in China No. 1455984 and 1505733 and in Kuwait No. 37833 in class 38.

3This trade mark is also registered in Hong Kong as Trade Mark No. 300391266.

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In three cases, Bahrain, Saudi Arabia and Singapore, there is a registered trade mark for:The registered trade marks in Hong Kong do not include the representations in the first or last trade marks
identified above. They do include, however, registrations for NOW in plain type with other words, such as:
NOW BBTV, NOW FAMILY, NOW GAMES, NOW KIDS, NOW TV and NOWTV.COM. Amongst the various
logos and devices registered is also registered trade mark No. 300608607 for a series mark in the second
form set out above, with the letters TV in a circle underneath and to the side of the “w”.
B. The Applicant
According to the Response, the ultimate parent of the Applicant is Amazon.com Inc. The subject gTLD
string is not the only new gTLD that the Applicant has applied for.
According to its application for the <.now> new gTLD:“The mission of the .NOW registry is:
To provide a unique and dedicated platform for Amazon while simultaneously protecting the integrityof its brand and reputation.
A .NOW registry will:• Provide Amazon with additional controls over its technical architecture, offering a stable and securefoundation for online communication and interaction.
• Provide Amazon a further platform for innovation.
• Enable Amazon to protect its intellectual property rights.”
It is not immediately clear from this description what the Applicant intends to use the proposed gTLD for or
how.
Also according to its application, second-level domains in a <.now> gTLD (if the Applicant is authorized tooperate the gTLD) will need to comply with the Uniform Dispute Resolution Policy (“UDRP”) as well as otherrights protection mechanisms.

5. Discussion and Findings
An objection to a new gTLD may be made on one of the four grounds set out in Section 3.2.1 of Module 3 tothe ICANN Applicant Guidebook (version 2012-06-04) (the “Guidebook”).

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The registration in Singapore does not include the bottom two representations.

page 4The present Objection is brought on the basis of one of those grounds, a Legal Rights Objection:“The applied-for gTLD string infringes the existing legal rights of the objector. (Section 3.2.1 of the
Guidebook)”
According to Section 3.5.2 of the Guidebook:“Strings must not infringe the existing legal rights of others that are recognized or enforceable undergenerally accepted and internationally recognized principles of law.”
Section 3.5.2 of the Guidebook further prescribes that an objection on this basis must establish that:(i)the potential use of the applied-for gTLD by the applicant takes unfair advantage of the
distinctive character or the reputation of the objector’s registered or unregistered trademark orservice mark (“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 andthe objector’s mark.

Accordingly, there are two steps in the inquiry. First, it is necessary to identify the legal rights of the Objector
that are said to be infringed. The rights may be registered or unregistered. Secondly, an assessment must
be made whether the applied-for gTLD takes “unfair advantage of” or “unjustifiably impairs” or “otherwise
creates an impermissible likelihood of confusion [with]” the Objector’s rights.
In determining the second stage of the inquiry, Section 3.5.2 sets out eight factors which must be taken into
consideration. These are set out below. While they must be taken into account, they are not an exclusive
listing of considerations. Moreover, the analysis is not a simple accounting exercise of counting up whichparty wins the most factors. Rather, it is a qualitative exercise requiring the force and effect of each to beweighed and the cumulative effect of all, and any other relevant considerations, to be assessed in thecircumstances of the case.
As the learned panelist in Right at Home v. Johnson Shareholdings Inc., WIPO Case No. LRO2013-0030
explained:“The use of the terms ‘unfair’, ‘unjustifiably’, and ‘impermissible’ as modifiers, respectively, of‘advantage’, ‘impairs’, and ‘likelihood of confusion’ in Section 3.5.2 suggests that there must be
something more than mere advantage gained, or mere impairment, or mere likelihood of confusion for
an Objection to succeed under the Procedure. It seems, rather, that there must be something
untoward – even if not to the level of bad faith – in the conduct or motives of Respondent, or
something intolerable in the state of affairs which would obtain if the Respondent were permitted tokeep the String in dispute.
The foregoing concepts are not uniformly defined or understood in the international trademark
community. Indeed, the word ‘unfair’ in the context of ‘unfair competition’ is a notoriously elusive
concept. An excellent and colorful discussion of the quicksilver quality of that term may be found in
McCarthy’s treatise, wherein it is observed: “The word ‘unfair’ is no more precise than many otherlegal terms whose purpose is to give discretion to a judge, such as ‘reasonable’ or ‘adequate.’” J
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 4th (Thomson Reuters/West)section 1:8.
To aid interpretation of this general concept, the Procedure sets forth eight non-exclusive factors
which should be considered by the Panel when applying the Section 3.5.2 standards to the facts ofthis case. These factors may be viewed collectively as analytical proxies for the more generalpage 5concepts discussed above. The Panel underlines that as these 8 factors are stated to benonexclusive, it thereby leaves room for the interpretation of this general concept. It also bears notingthat the relevant importance of each factor is not fixed in advance of the Panel’s inquiry; rather,
depending on the facts and circumstances of each case, some factors may prove more significant
than others. Deciding a case under the LRO Procedure is not simply a matter of tallying the factors(e.g. 5-3) and declaring the winner on that basis.”Other panelists have adopted and applied that approach.

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A. The Objector’s legal rights
PCCW has established ownership of a number of registered trade marks in many parts of the world which
include NOW. With the exception of the three trade marks registered in Bahrain, Saudi Arabia andSingapore referred to above, however, none is for NOW simpliciter alone.
PCCW also contends for a strong common law reputation or unregistered rights arising from use in NOW.
The matters set out in section 4 above satisfy the Panel that PCCW has a strong reputation in NOW TV anda wide range of its channels such as NOW SPORTS and NOW FAMILY (to mention just two). The Objectionrefers to use in a number of territories other than Hong Kong, however the evidence in the Objection falls
short of substantiating that claim at least insofar as places other than Hong Kong are concerned. Indeed,paragraph 10(i) of the Objection makes specific claim to common law rights in NOW as a trade mark only in“inter alia, Hong Kong”.
B. Section 3.5.2 of the Guidebook
On the second part of the inquiry, Section 3.5.2 of the Guidebook requires consideration be given to theeight specified 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.
PCCW contends that the applied-for gTLD string is identical to its NOW trade mark or confusingly similar to
its registered trade mark.
The Applicant contends, however, that PCCW has not proved ownership of a trade mark for NOW
simpliciter. While accepting that the applied-for gTLD string is identical in sound and appearance to the
NOW component of PCCW’s trade marks, the Applicant contends that it is nonetheless not confusingly
similar.
In this connection, it relies on both the nature of the word “now” and also what it says are the very different
nature of the parties’ respective services. The Applicant points out that the word “now” is a common English
word. It is also an acronym used by a number of different entities for a wide range of different activities. As
to the second point, the Applicant cites the proposition:“That the goods or services of the parties are both found on the Internet proves little, if anything, about
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the likelihood that consumers will confuse similar marks used on such goods or services.”
The Applicant’s arguments more properly fall under factor 8 discussed below rather than this first factor.
Given the inclusion of factor 8 (discussed below), it is appropriate to undertake a simple comparison
5

For example, The Canadian Real Estate Association v. Afilias Limited, WIPO Case No. LRO2013-0008 and Pinterest, Inc. v.
Amazon EU S.à.r.l., WIPO Case No. LRO2013-0050.

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Citing 4 McCarthy on Trademarks and Unfair Competition §24:53.50 and Network Automation Inc. v Adv. Suys. Concepts Inc.
638 F 3d 1137, 1151 (9th Cir 2011).

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between the alpha-numeric string in the applied-for gTLD and the sign that comprises the Objector’s trade
mark under this first factor.
While the Applicant quite rightly points out that PCCW does not have a registered trade mark specifically for
NOW simpliciter, the applied-for gTLD string looks and sounds exactly the same as the, or a significant partof the, verbal element of many of PCCW’s trade marks. Accordingly, this factor falls in favour of the
Objector.
2. Whether the objector’s acquisition and use of rights in the mark has been bona fide.
In line with the recitation of the history of PCCW’s Now TV business outlined above, there can be no doubtthat the Objector has acquired its rights in its various trade marks in good faith. There is therefore no reason
to reject the Objection on this basis.
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.
There is no evidence in the record to suggest that the Applicant has any recognition in any sector of the
public with the sign NOW. It does not appear to claim any such recognition in its Response.
The Objector has clearly established recognition in Hong Kong at least in NOW TV. It also no doubt has
strong recognition at least in Hong Kong in the names of its channels such as Now Sports, Now News and
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Now Family etc.
Although the Objection claims PCCW’s NOW TV service is provided in territories other than Hong Kong, thatclaim is not supported by sufficient evidence to warrant a finding that that is in fact the case. This isparticularly important in the present case as the word “now” is a plain, ordinary English word in everyday use.
Thus, any recognition by the public of the word “now” as a trade mark of PCCW will turn on the context of its
use.
This issue also extends into the level of PCCW’s recognition in Hong Kong. The Panel would readily accept
that the public in Hong Kong is likely to think of PCCW when NOW is used in a trade mark sense in thecontext of broadcasting or pay TV. On the record in this case, however, it may be debatable whether such
recognition would extend further than that. It may also be important to consider the word order. Apart fromthe figurative versions, PCCW’s trade marks use the form NOW (some other element). As the word “now” isa common, everyday word in English, the analysis may be different if the word order be reversed.
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.
The Applicant states that it had no knowledge of PCCW’s trade marks before the application for the <.now>
gTLD was made. Instead, it says it chose the string for its dictionary meaning.
PCCW does not assert that the Applicant had specific knowledge of PCCW’s Now TV service or its trade
marks. Some of its evidence might lead to an inference that someone in the Amazon group may have beenaware of Now TV. However, any such inference would be very slender. Moreover, it would not be strong
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The Harvard Business School case study included in Annex 8 to the Objection is headed “PCCW now” but, assuming contrary
to the Applicant’s objections it does illustrate public perception, the body of the article itself consistently refers to “now TV” andeven the title qualifies “now” with PCCW. The Time article included in Annex 9 uses NOW as a defined acronym for Network of
the World or in composite phrases such as NOW Broadband TV and NOW broadband.

page 7enough to override the Applicant’s specific denial particularly as that denial is not inherently implausible
given the meaning of “now” in English and the nature of many of the Amazon group’s services such as, forexample, offers of differential pricing to facilitate speedier delivery of packages ordered online.
There is no evidence in the record in this case that the Applicant has applied to register other TLDs based onother parties’ trade marks let alone engaged in a pattern of such conduct.
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.
At this stage, there is no evidence that the Applicant has made any use of the sign corresponding to the<.now> gTLD in connection with the goods or services it offers. According to the Objector, it commissioneda worldwide trade mark search that revealed the Applicant did not have any registered trade marks in thoseplaces searched. Nor is the applied-for string derived from the Applicant’s name. The Applicant has notcontested those claims.
This being said, in the present case, it is significant that the applied-for string is in fact a very common
English word which can describe the Applicant’s services.
While there is no history of bona fide use of the applied-for string as a trade mark to bolster the Applicant’s
claims to that applied-for string, the fact that the applied-for string is a very common English word leads the
Panel to consider that this factor does not point strongly in the Objector’s favour either.
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 considerations under this factor have essentially been addressed when dealing with the fifth factor
above.
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 considerations under this factor have also been addressed when dealing with the fifth factor above.
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.
PCCW contends that the applied-for gTLD string is identical to its trade mark and the services that the
Applicant would be providing if it operated the applied-for gTLD are identical or have a high degree ofsimilarity to the services PCCW provides by reference to its trade marks. Consequently, PCCW contends
that there is an inevitable likelihood of confusion as to the source, sponsorship, affiliation or endorsement of
the applied-for gTLD.
The Applicant disputes all these contentions at every level.
First, the Panel notes there is no evidence of actual confusion in this case, but nor could there be as thepage 88

applied-for gTLD has not been granted and is not in use. Nor is there any consumer survey evidence. The
Panel notes that, while consumer surveys are used in some jurisdictions to test trade mark infringement
issues, there is a considerable degree of scepticism towards them in many parts of the world particularly
where, as here, the alleged infringement is not in use. In these circumstances, it becomes a matter ofinference.
The Applicant does not accept that PCCW has established trade mark rights in NOW simpliciter around theworld or in numerous countries. With the possible exception of the registrations in Bahrain, Saudi Arabia andSingapore noted above, all the registrations identified by PCCW in the Objection consist of NOW withanother word (or words) or represented in a figurative or highly stylized manner. This is not surprising since,as the Applicant contends, the word is a very common English word in everyday use.
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Indeed, the Applicant points out that in securing allowance of its trade mark application in the USA in theface of objections to prior marks for NETWORK NOW and THE NOWNETWORK, PCCW argued that “[t]hemost distinguishing feature is the design element of applicant’s mark, which is obviously not included as partof either cited mark.”Moreover, in Annex 9 to the Response, the Applicant provides evidence of many other registered trade
marks in the USA, the European Union and some Asian jurisdictions (but not Hong Kong) based on the word
NOW. The registrations include many in International Class 38 for services the same as or closely related tothose for which PCCW has obtained registrations. By way of example, they include:

in the USA: Trade Mark No. 4133450 NOW registered by Sprint Communications, Trade Mark No.
3998708 NOW VOD registered by Cequel Communications, Trade Mark No. 3625941 for NOWAGAIN, Trade Mark No. 3937297 for OnNowTV, Trade Mark No. 3793476 for WATCH NOW;

Community Trade Marks Nos 7153505 NOW (cancellation action pending), 9150781 for
NOWNESS, 6030365 NOW PLAY IT, 5099973 for NOW MOVIES and design, 5862321 PlayNow
and device and many more;

in India: Bennett Coleman & CO Ltd’s registrations for marks including TIMES NOW and device,
BIZ NOW, ET NOW and device, BUSINESS NOW and SPORTS NOW and Sony Ericsson Mobile
Communications’ trade mark, PLAY NOW;in Malaysia: Digi Telecommunications Sdn Bhd’s registrations for MOVIES NOW!, MUSIC NOW!,
TRAFFIC NOW!, OFFICE NOW! and LIFESTYLE NOW!, Virgin Records Limited’s registration for
NOW and Sony Ericsson Mobile Communications registration for PLAYNOW;in Japan: Web X Communications Inc.’s registration for PCNOW, EMI (IP) Ltd’s registration for
NOW, Registration No. 5402886 for NOWNESS, At Net Home KK’s registration for SEOUL NOW
and KK South Japan Broadcasting’s registration for MBC NEWS NOW.

Secondly, the Applicant points out that the services for which PCCW has registered its marks do not extend
to domain name registry services. Those services properly fall within International Class 45. While thedifferent classes in which the respective services fall are not decisive, the difference in the services isimportant. As the Applicant contends, the fact that PCCW’s services and those of the Applicant in operating
the proposed gTLD involve the Internet does not in itself lead to a likelihood of confusion.
In these circumstances, the Panel does not find that there is an inevitable likelihood of confusion between
the applied-for gTLD and PCCW’s trade marks. In some parts of the world, such as the USA, the European
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Given the time frames under the Procedure and the WIPO Rules for New gTLD Dispute Resolution the Panel is conscious that
there is not much time to prepare a survey.

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Registration No. 3769608, for the first device depicted in section 4 above.

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Union, India and Japan where there are many other registered trade marks which include the word NOW
even in International Class 38, the likelihood of confusion would seem very low. The potential likelihood for
confusion may likely be higher in Hong Kong where, on the evidence in this record, PCCW has a strong
reputation from its very extensive use. To the extent that its rights depend on use rather than registration,
however, PCCW’s position may well be limited to protection only against identical marks for the same
services. As the High Court of Australia explained in a different context:“There is a price to be paid for the advantages flowing from the possession of an eloquently
descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind,its very descriptiveness ensures that it is not distinctive of any particular business and hence its
application to other like businesses will not ordinarily mislead the public. In cases of passing off,
where it is the wrongful appropriation of the reputation of another or that of his goods that is inquestion, a plaintiff which uses descriptive words in its trade name will find that quite small differences
in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v.
Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As
his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will
always be present when names consist of descriptive words – ‘So long as descriptive words are usedby two traders as part of their respective trade names, it is possible that some members of the public
will be confused whatever the differentiating words may be.’ The risk of confusion must be accepted,
to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in
10those words and might even deter others from pursuing the occupation which the words describe.”
PCCW contends that registration of the applied-for gTLD by the Applicant will take unfair advantage of
PCCW’s trade marks because of the risk the public will wrongly associate the gTLD with PCCW. In thisconnection, PCCW repeats its contention based on its claim to a massive reputation as a leading trade markin the global IPTV market and the potential overlap between its services and those of the Applicant.
PCCW further contends that the registration of the applied-for gTLD by the Applicant will unjustifiably impair
PCCW’s rights because the use of what PCCW contends is an identical sign for highly similar services willlead to the dilution of the exclusivity of PCCW’s trade mark. It contends that it is extremely unlikely that the
Applicant’s service will be as high in quality as the internationally acclaimed services provided by PCCW
under the trade mark and so invokes the risks to its excellent reputation which may flow from any differencein quality. PCCW further argues that its trade mark will be unjustifiably impaired because, no matter what
processes the Applicant puts in place to prevent the registration of second level domain names that infringe
trade marks, PCCW will have lost control over its trade mark.
The central premise of these arguments is PCCW’s claim that the applied-for gTLD string, <.now>, is
identical or confusingly similar to PCCW’s trade mark and being used for the same or overlapping services.
For the reasons set out in relation to the eighth factor above under Section 3.5.2 of the Guidebook, the Panel
does not accept that premise. That conclusion makes it strictly unnecessary to address PCCW’s argument
based on the risks posed by the potential registration of second-level domains. The Panel notes, however,that the word order of such names would be the reverse of the usage made by PCCW. More importantly,
whether or not any particular second-level domain would infringe, or breach other available rights protection
mechanisms, would depend very much on the particular context including who sought to register the secondlevel domain, what second-level domain that person sought to register and how, if at all, that person used or
proposed to use the name including consideration of what rights that person may have in the name inquestion.
In The Canadian Real Estate Association v. Afilias Limited (supra), the learned panelist noted that there wasno mechanism by which the Panel could allow a gTLD to be registered except for use in a particular country,
in that case Canada. The learned panelist continued:

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Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229.

page 10“The Panel cannot see the justification for refusing to allow the Applicant to operate in every country
because the Objector has a certification mark for a generic term in Canada. Had the Objector’scertification been other than a generic term, its case might have been stronger but MLS it is a genericterm used in English-speaking jurisdictions.”
In the present case, the word “now” is a plain English word in common everyday and widespread use.
PCCW has registered trade marks in many countries which include NOW, however save for the registrations
in Bahrain, Saudi Arabia and Singapore none are for NOW simpliciter. Hong Kong may, arguably, be added
to those jurisdictions given the extent of use proved in that territory. As discussed above, however, PCCW’s
services are very different to those of the Applicant. The Panel therefore respectfully adopts the approachtaken by the learned panelist in The Canadian Real Estate Association case.
While the Applicant did not have a history with NOW as a trade mark or service before making theapplication for the new gTLD, there is nothing in the record which supports a finding that there is anything
untoward in the Applicant’s adoption of the applied-for string. It is a common everyday word in plain English
which is logically apt for the sorts of services the Applicant’s corporate group provides. In thesecircumstances, PCCW has failed to establish any of the three grounds required to be shown under Section
3.5.2 of the Guidebook.

6. Decision
For the foregoing reasons, the Panel rejects the Objection.

[signed]Warwick Rothnie
Sole Panel Expert
Date: August 21, 2013