Wipo arbitration and mediation center

Before the:
WORLD INTELLECTUAL PROPERTY ORGANIZATION
ARBITRATION AND MEDIATION CENTER
LATIN AMERICAN TELECOM, LLC

(Objector)
TLD string objected to: < .TUBE >
(Applicant/Respondent)
LEGAL RIGHTS OBJECTION
(Applicant Guidebook, Module 3; Procedure, art. 6, 7, 8; WIPO Rules for New gTLD Dispute Resolution, para. 4) I. Introduction
[1.] This Legal Rights Objection is hereby submitted to the World Intellectual Property Organization Arbitration and Mediation Center (“WIPO Center”) for determination in accordance with the New gTLD Dispute Resolution Procedure (“Procedure”), provided as an Attachment to Module 3 of the gTLD Applicant Guidebook (“Applicant Guidebook”) approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on June 20, 2011 and as updated on January 11, 2012, and the World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal Rights Objections (“WIPO Rules for New gTLD Dispute Resolution”) in effect on the day when the relevant Application for a new II. The Parties
A. The Objector
[2.] The Objector in this proceeding is: Latin American Telecom, LLC, a Delaware Limited Liability Company, with a principal place of business located at 4 Gateway Center, 9th Floor, Pittsburgh, PA 15222 (hereinafter “Objector” or “LATELCO”). [3.] The Objector’s contact details are: LATELCO c/o ESQwire.com, P.C. 1908 Route 70 East Cherry Hill, NJ 08003 [4.] The Objector’s authorized representative in this proceeding is: 1908 Route 70 East, Cherry Hill, NJ 08003 [5.] The Objector’s preferred contact details for purposes of this proceeding are: B. The Applicant/Respondent

[6.] The Applicant/Respondent in this proceeding is:
Charleston Road Registry, Inc., a Delaware Corporation, with a principal place of business located at 1600 Amphitheatre Parkway, Mountain View, CA, 94043 (hereinafter “Applicant” or “Charleston/Google”). A copy of the ICANN Posting of Applicant’s gTLD Application for .TUBE, originally posted June 13, 2012 is attached hereto as Objector’s Annex 1 [7.] All information known to the Objector regarding how to contact the Applicant/Respondent is as follows: Sarah Falvey Senior Policy Analyst 1101 New York Avenue, N.W. Washington, DC 20005 202-346-1230 Will Houston Emerging Business Development 345 Spear Street San Francisco, CA 94105 415-488-6422 III. TLD string objected to (applied-for TLD string):
[8.] This Objection concerns the applied-for TLD string identified below: IV. Jurisdictional Basis for the Objection
[9.] By applying for a new gTLD, the Applicant/Respondent has accepted the applicability of the Procedure and the WIPO Rules for New gTLD Dispute By filing the present Objection to a new gTLD, the Objector accepts the applicability of this Procedure and the WIPO Rules for New gTLD Dispute Resolution. The parties cannot derogate from the Procedure without the express approval of ICANN and from the WIPO Rules for New gTLD Dispute Resolution without the V. Factual and Legal Grounds
(Applicant Guidebook Module 3, art. 3.5.2; Procedure, art. 8) [10.] The Objector’s basis for standing under the Procedure is: Objector owns United States trademark registration No. 4,122,107 for the word mark TUBE®, filed on August 7, 2008, published for opposition on February 2, 2010, and issued by the United States Patent and Trademark Office (“USPTO”) on April 3, 2012 (the “Trademark” or “Objector’s Trademark”). A copy of Objector’s United States Trademark Registration Certificate and a Screen Shot from the USPTO Database is attached hereto as Objector’s Annex 2. Objector’s Trademark covers services in International Classes 35, 38, 41, 42, and 44. Id. Accordingly, under Section 3.2.1 and 3.2.2.2 of the Applicant Guidebook, Objector has standing as a rights holder to assert this objection based on its valid and subsisting trademark rights that have been recognized by the USPTO. [11.] This Objection is based on the following grounds: “Existing Legal Rights Objection,” which refers to the objection that the string comprising the potential new gTLD infringes the existing legal rights of Objector recognized or enforceable under generally accepted and internationally recognized principles of law. [12.] This Objection is valid and should be upheld for the following reasons:
(Applicant Guidebook, art. 3.5.2; Procedure, art. 8(a)(iii)(bb)) The potential use of the applied-for gTLD by the Applicant/Respondent (i) takes unfair advantage of the distinctive character or the reputation of the Objector’s registered and unregistered trademarks or service marks (the “Marks”); and/or (ii) unjustifiably impairs the distinctive character or the reputation of the Objector’s Marks; and/or (iii) otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the Objector’s Marks. Since 2008, Objector has invested substantial time and money to create the largest network of “.com” TLD websites with domain names that contain the word “tube.” Each domain name is comprised of the word “tube” preceded by a generic or descriptive word to create a “***TUBE.com” domain name system (the “TUBE® Domain Channels”). Over the past six (6) years, Objector has taken a concept, built a business unit, and developed the TUBE® brand that culminated in the filing of Objector’s gTLD Application for the string .TUBE. See Rami Schwartz’s Notarized Affidavit in Support of Objection attached as Objector’s Annex 3 (hereinafter “Schwartz Aff.”). Objector’s acquisition of rights and bona fide use were not established solely in conjunction with the gTLD application Objector has been planning for the development and launch of its own .TUBE gTLD since shortly after ICANN’s Board voted to proceed with the development of applicable rules for the submission of new gTLD applications at its meeting in Paris, France in June 2008. Schwartz Aff. At ¶1. This long planning process is evidenced by Objector’s continued acquisition and development of its TUBE® Domain Channels and application to the US Patent and Trademark Office (“USPTO”) on August 7, 2008 for a word mark for TUBE®, a request that was granted in April 2012 for five separate classes of goods and services, all of which remain active. See Annex 2. Conversely, Applicant applied for .TUBE without any trademark rights and with the stated intent to run the gTLD as a closed registry and as an extension of its YouTube brand. Google tellingly states in its Application that: “[t]he sole purpose of the proposed gTLD, .tube, is to host select YouTube channels’ digital content.” See Annex 1 at Applicant’s answer to Q18.a Mission/Purpose of Proposed gTLD. Moreover, Applicant, in further conflict with Opposer’s pre-existing Trademark rights, provides that: The mission of the proposed gTLD is to strengthen the brand relationship between YouTube and its content partners and to simplify the YouTube user experience. Select YouTube content distributors will be able to register a branded .tube domain (e.g., brand.tube) which will be used to host short and simple URLs that point to the distributor’s YouTube page or specific offering. Id. at Q18.a. Mission⁄Purpose of the Proposed gTLD. Perhaps even more alarmingly, Applicant has also stated that: “[t]he specialization goal of the proposed gTLD is to
extend the YouTube brand and reputation to each .tube second-level domain and to
provide select YouTube channels with a dedicated domain space for their registration and management.” (emphasis added) Id. at Q18.b.i.1. Applicant’s sole intent is to dominate the online video marketplace and expand its own brand at the expense of Objector’s Trademark rights and brand. Applicant is further trampling the rights of Objector by seeking an exemption from ICANN to run .TUBE as a closed registry to promote Charleston Road Registry intends to apply for an exemption to ICANN’s Registry Operator Code of Conduct and operate the proposed gTLD with Google as the sole registrar and registrant. This facilitates Google’s ability to further enhance the YouTube brand and the reputation of YouTube offerings… Thus, it is clear that Applicant’s plan is to maintain YouTube’s dominance in online video distribution in a manner that would bar bona fide third party domain registrations in .TUBE from potential competitors, like Objector. Notwithstanding the clearly stated anti- competitive actions Applicant would take were the gTLD granted to Applicant, it would irreparably harm Objector by rendering Objector’s Trademark rights and years of investment and development of TUBE® useless. Applicant’s own certified statements make it clear that it seeks to takeover TUBE and extend its YouTube brand. Such actions directly compete with Objector’s Trademark rights in Int’l Classes 35, 38, 41, 42, and 44 using .TUBE in a confusingly similar manner (indeed in a manner identical) to Objector’s pre-existing Trademark rights – in a manner that either that subsumes TUBE into YouTube or that improperly creates an entirely new brand for Applicant to disseminate information and entertainment via an online video For the reasons set forth more fully below, and in accordance with ICANN’s Guidebook and the WIPO Legal Rights Objection Procedures, Objector respectfully requests that the Panel find that Objector has valid and subsisting trademark rights in TUBE®, and that Applicant’s application for .TUBE should be deemed to be: i) taking unfair advantage of Objector’s Trademark; ii) unjustifiably impairing Objector’s rights and distinctive character of its Marks; and iii) creating an impermissible likelihood of confusion between the applied for gTLD and Objector’s Mark. As stated in the Procedure, the Panel will consider the following eight (8) non- exclusive factors (emphasis added), each taken in turn below. For the reasons set forth above and more fully below, Objector respectfully requests that the Panel protect Objector’s Trademark rights and find that Applicant’s applied for gTLD is identical to and infringes on the valid and subsisting United States Trademark rights of Objector. 1. Whether the applied-for gTLD is identical or similar, including in appearance, phonetic
sound, or meaning, to the objector’s existing mark.

It is beyond debate that Applicant’s applied for gTLD is identical to Objector’s Trademark -- the applied for string is < .TUBE > and Objector’s Trademark is <TUBE>. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Para. 1.2 ("WIPO Overview 2.0"). Panels typically apply a “low threshold” test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is “sufficient similarity” between the disputed domain name and the relevant trademark. Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (Apr. 9, 2009). This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. In this case, when the two specimens are compared side by side (TUBE and .TUBE) there is no difference in appearance, phonetic sound, or meaning between Applicant’s applied for .TUBE gTLD and Objector’s TUBE® Trademark. Hasbro, Inc. v. Internet Entertainment Group, Ltd., 1996 WL 84858 (W.D. Wash. 1996) (finding similarity between CANDY LAND trademark and offending CANDYLAND.COM domain name where only differences were that domain name did not contain spaces and contained initial capitalization). Accordingly, given the identical spelling of the two specimens and use of the same word, TUBE, the Panel should find that the Applicant’s applied for gTLD and the Objector’s Trademark are identical. 2. Whether the objector’s acquisition and use of rights in the mark has been bona fide. Under United States trademark law, the Lanham Act authorizes registration for marks that are in “use in commerce,” 15 U.S.C. § 1051. “Use in Commerce” is defined as “the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.” 15 U.S.C. § 1127. Generally, a mark is used in commerce when “it is placed in any manner on the goods or their containers . . . and the goods are sold or transported in commerce.” Id. Moreover, Objector’s registration of the trademark on the Principal Register in the United States Patent and Trademark Office (“USPTO”) constitutes prima facie evidence of the validity of the registered mark and of Objector’s exclusive right to use the TUBE® mark on the goods and services specified in the registration. See 15 If “there is a genuine use of the mark in commerce . . . ownership may be established even if the first uses are not extensive and do not result in deep market penetration.” Allard Enters. v. Advanced Programming Res., Inc., 146 F.3d 350, 358 (6th Cir. 1998); see also Ciphertrust, Inc. v. Trusecure Corp., 2005 U.S. Dist. LEXIS 46322, at *54 (E.D. Va. Nov. 28, 2005) (“[f]ederal trademark law does not require a regular pattern of sales to prove use”). Indeed, the legislative history of the Trademark Law Revision Act of 1988 (“TLRA”) makes clear that a “flexible test of ‘use’ [should] be the guide” in interpreting the provision. McCarthy § 19:110; see also S. Rep. No. 100-515 at 44-45 (Sept. 15, 1988) (“the definition should be interpreted with flexibility so as to encompass various genuine, but less traditional, trademark uses”). Thus, for the reasons set forth below, the threshold for a bona fide use under United States law is clearly exceeded by Objector’s widespread On June 16, 2008, Objector started acquiring “.com” TLD domain names that contain the word “tube” preceded by a generic or descriptive word to create a “***TUBE.com” domain name system (the “TUBE® Domain Channels”). Schwartz Aff. At ¶2. From 2008 to the present, Objector has purchased and operated over 1500 TUBE Domain Channels. Id. at ¶3. The TUBE® Domain Channels have been selected to promote unique online video distribution channels related to topics of interest such as: country or religious affiliations, musical composers, artists, sports and athletics, as well as surname opportunities for family postings. Notable TUBE® Domain Channels include but are not IsraelTUBE.com MozartTUBE.com MexicoTUBE.com NascarTUBE.com KungFuTUBE.com Id. at ¶4; See also (with links to many popular TUBE® Domain Channels). Each of the TUBE® Domain Channels have been actively used by visitors around the world since 2008. Visitors to the TUBE® Domain Channels can, among other things, view, upload, share and comment on videos under Objector’s TUBE® brand. Moreover, Objector’s format allows for a “community” use that enables individuals to view and share content that is only focused on the topic for that “channel.” For many years prior to the filing of its application for its own .TUBE gTLD, Objector's TUBE® Domain Channels were used in commerce in to generate revenue, and to obtain valuable user data and account members and followers for TUBE®. Many of Objector’s TUBE® Domain Channels are archived on archive.org and demonstrate a bona fide use in commerce of the Trademark between 2008 and the present. Schwartz Aff. At ¶5. A spreadsheet identifying select TUBE® Domain Channels and the corresponding archive links is attached as Objector’s Annex 4. The archives show use of the TUBE® Trademark in a distinctive style, color, and with prominent position on header of the TUBE® Domain Channels to identify the content as part of TUBE®. In addition to advertising for its Mexico.com travel platform, from 2008 to the present, Objector has also leveraged the TUBE® Domain Channels to generate advertising revenue for Objector through various pay per click advertising solutions, including but not limited to Google’s Ad Sense. Id. at ¶6. Although Objector’s sites are viewed by users around the world, the largest concentration of viewers are in the United States, Israel and Mexico respectively. Id. at ¶8. Moreover, in 2010, LATELCO entered into a Joint Venture agreement with an Israeli company to promote one of LATELCO’s premier TUBE® Domain Channels, <IsraelTUBE.com> Id. at ¶9; (A copy of the Joint Venture Agreement is attached as Objector’s Annex 5). Through this Agreement, Objector further expanded its TUBE® operations worldwide, demonstrating international use in commerce. Thus, Objector’s creation and worldwide distribution of TUBE® Domain Channels from 2008 to the present constitutes a bona fide use of Objector’s TUBE® Trademark. Moreover, since its application for the gTLD was accepted, LATELCO commenced promotion of the .TUBE gTLD as a logical use of its TUBE brand. On June 12, 2012, Objector launched its main gTLD website located at(the “TUBE® gTLD Site”) to educate the public about .TUBE and to begin accepting pre-registrations for domain names. Schwartz Aff. At ¶11. (A screen shot of the TUBE gTLD Site is attached hereto as Annex 6). From the TUBE® gTLD Site visitors are able to access many of TUBE’s offerings across the TUBE® Domain Channels. Visitors can also learn about Objector’s gTLD offering for .TUBE. Objector is using its existing tube-related domain network to develop innovative approaches that can be made available for the benefit of all Presently, Objector’s new logo incorporates TUBE® in stylized form and is displayed across its TUBE Domain Channels. This use further expands the TUBE® brand and has increased consumer awareness of Objector. A copy of Objector’s TUBE® Design Mark is Opposer has also used TUBE® in commerce by generating interest and brand awareness by actively promoting TUBE® through four Twitter Accounts – @dottube; @dot_tube; @TUBEgTLD; and @TubeTLD (the “TUBE® Twitter Accounts”). Each of the TUBE Twitter Accounts prominently feature Opposer’s TUBE logo and design and actively promotes TUBE® and LATELCO through topical tweets and display of Objector receives millions of impressions for TUBE®, further promoting its brand and expanding its trademark use. (copies of the analytic reports for the TUBE Twitter Accounts are attached as Objector’s Annex 7). For example, in the month of February, 2012, the TUBE Twitter Account individual account breakdown is as follows: Dottube: 1,624 total followers, 8 new followers, and 486,190 impressions; Dot_tube: 1,854 total followers, 7 new followers, and 519,193 impressions; TubegTLD: 2,436 total followers, 20 new followers, and 819,631 impressions; and TubeTLD: 2,283 total followers, 13 new followers, and 2,243,459 impressions. Objector is further promoting TUBE® with a Facebook Page located at (the “TUBE® Facebook Page”). The TUBE Facebook Page actively promotes TUBE® on a daily basis throughout the Facebook community and already has 2,281 “likes.” Each of the TUBE® social media offerings are viewable and linked to the TUBE® Domain Channels creating additional brand awareness and expanding Accordingly, the Panel should find that Objector’s acquisition of its Trademark and its consistent and continued use since as early as 2008 establishes that Objector has engaged in a bona fide use of TUBE® satisfying this element and demonstrating protectable 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. Objector is the only party that applied for the .TUBE gTLD string that has pre- existing trademark rights in TUBE®. As of the final date gTLD applications were filed, in April, 2012, Objector’s TUBE® Domain Channels comprised of over 1500 individual domain names, and, upon information and belief, comprise part of the largest known single network of ***TUBE.com domain names in the world. Schwartz Aff. At ¶10. Since 2008, Objector has owned and/or developed at least 1878 ***TUBE.com domain names. Over the past six (6) years, Objector has continued to develop its TUBE® Domain Channels and has consistently increased its brand awareness worldwide. As noted above, visitors to Objector’s TUBE® Domain Channels are located worldwide. As evidenced by Objector’s social media campaigns on Twitter and Facebook, Objector has thousands of followers and, when combined with its TUBE® Domain Channels, Objector has received millions of impressions of its TUBE® Trademark worldwide in connection with online video sharing, domain names, internet advertising, and online entertainment, education, and Conversely, Applicant is not known as TUBE. Applicant (Google) does not have trademark rights for TUBE and, unlike Objector, Applicant is not marketed as TUBE and it does not advertise or promote itself as TUBE. Moreover, to Objector’s knowledge, no third-party company is known to use TUBE in connection with the goods and services that Objector uses TUBE® and for which Objector owns a registered United States Trademark. Schwartz Aff. At ¶15. Objector acknowledges that Applicant has trademark rights in YOUTUBE for which Applicant has expended significant sums to promote the YOUTUBE branded system for online video. This does not, however, bestow Applicant with rights in TUBE®. Therefore, because Applicant does not have trademark rights in TUBE, and is not known as TUBE, the Panel should find that this element favors protecting Objector’s pre- 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. Applicant is quite possibly the worldwide leader in internet analytics and online advertising. Applicant’s corporate website identifies that it has more than 30,000 employees. Moreover, Applicant is known in the industry for vigorously policing its trademark rights and protecting its intellectual property. Applicant has an extensive legal department devoted to solely to trademark matters. It is thus, unlikely that Applicant was unaware of Objector’s Trademark when Applicant applied for its .TUBE gTLD. Moreover, Applicant certainly must have had knowledge of Objector’s filing for its United States Trademark. Indeed, Objector’s application for TUBE® was filed on August 7, 2008, and was published for opposition on February 2, 2010. Annex 2. Given the sophistication of current trademark monitoring services, which Applicant surely uses, and Applicant’s high level of sophistication, Applicant knew, or should have known of Objector’s filing for its trademark in 2008. Indeed, even if Applicant was somehow unaware of Objector’s trademark application in 2008, it should have been aware of Objector’s Trademark when it was published for opposition in the Official Gazette in 2010. Furthermore, Objector is aware that Applicant has teams of individuals located in Washington, D.C., New York, NY, and at its headquarters in California that are dedicated to Applicant’s gTLD Program. Objector is aware that many, if not all of the gTLD strings for which Applicant has applied have a business team whose responsibility is to manage the operations for that particular string. At a minimum, Objector is aware that Applicant’s .YOUTUBE and .TUBE gTLDs have a dedicated business unit that is responsible for development and operations. Therefore, on balance, the Panel should find, given the Applicant’s high level of sophistication and focused effort to support the YOUTUBE business gTLD unit, it is more likely than not that Applicant was aware of Objector’s Trademark rights when Applicant applied for the .TUBE gTLD string. 5. Whether and to what extent the applicant has used, or has made demonstrable preparations to use, 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. Applicant’s lack of trademark rights in the applied for string, its lack of use of TUBE, and Applicant’s stated objectives for running the gTLD demonstrate that Applicant is looking to control the online distribution of video through its YOUTUBE platform. Applicant’s Application provides certified statements that demonstrate Applicant’s use will directly interfere with Objector’s valid and registered TUBE® trademark rights in Int’l 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 [respondent] is consistent with such acquisition or use. Applicant does not have trademark rights for TUBE. 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. Applicant is not commonly known by TUBE. 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. To establish a likelihood of success on the merits of its trademark infringement claims, a party must show that its mark is entitled to protection and that the defendant's use of the mark is likely to confuse consumers as to the source, origin or sponsorship of the products or services at issue. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768–69, 112 S. Ct. 2753 (1992); Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 193 (5th Cir. 1998). It is further settled that no actual confusion in the marketplace need be shown; rather, a likelihood of confusion is enough to prevail in a claim for infringement. Id. Where the goods and services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dissimilar products. As the USPTO Trademark Trial & Appeal Board observed: “[a]s the degree of similarity of the goods of the parties increases, ‘the degree of similarity [of the marks] necessarily to support a conclusion of likely confusion declines.’” Although the degree of similarity between the owner's mark and the alleged infringing mark is but one factor in the multi- factor confusion analysis, we have recognized that when products directly compete, mark similarity “may be the most important of the ten factors in Lapp.” Checkpoint Systems, Inc. v. Check Point Software Technologies, Inc., 269 F.3d 270, (3rd Cir. 2001)(referring to the Lapp multi factor confusion test used in the 3rd Circuit). As the 3rd Circuit Court of Appeals held, “[w]hen goods are directly competing, both precedent and common sense counsel that the similarity of the marks takes on great prominence.” Kos Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 712-12 (3rd Cir. 2004)(citing A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 216 (3rd Cir 2000). Marks “are confusingly similar if ordinary consumers would likely conclude that [the two products] share a common source, affiliation, connection or sponsorship.” It is clear that “[t]he single most important factor in determining likelihood of confusion is mark similarity.”). A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 216 (3rd Cir 2000). Applicant has submitted identical applications for both .YOUTUBE and .TUBE – the only difference is the name of the applied for “string.” Both applications aim to extend the YouTube brand via the new gTLD program, and both seek exemptions from the standard registry operator Code of Conduct to allow for a “closed generic”/“single-registrant gTLD” in which Google will be the only permissible registrant. Applicant’s intended use for its applied for gTLD is directly competitive with, and would be comprised of the same goods and services as those covered by Objector’s TUBE® Trademark rights. While Google’s .YOUTUBE application is perfectly appropriate and, as an extension of its YouTube trademark and business model, is exactly the type of gTLD envisioned as being eligible for a waiver of the Code to permit single-registrant operation, Google’s application for .TUBE, on the other hand, is wholly inappropriate. A single-registrant .TUBE controlled by Google would stifle competition and innovation by registrants, allowing Google to extend and consolidate its dominance of online video distribution through “its YOUTUBE brand.” Annex 1 at Q18a. Applicant further confirms that its offering will be used in a method, manner, and through channels of distribution, that are confusingly similar to Objector’s current Trademark use stating that: This specialization introduces a new domain name hierarchy that will
generate new YouTube namespace … in a unique, branded domain within
the .tube gTLD. This specialization makes it clear to Internet users
that this is the authoritative and designated space where they can find
select YouTube channel content offered in association with the Google
and YouTube brands and accessible via differentiated and streamlined
web addresses. This specialization will enhance Internet users’ current
and future experience with YouTube.
Annex 1 at 18.b.i.1 Specialty (emphasis added) The Application makes it clear that Google has no established trademark rights in the word TUBE, and that it intends to apply to ICANN for a Section 6 exemption in order to operate .TUBE solely for its own use and as an extension of its established and branded YouTube business model. The salient points of Applicant’s Application are: • While stating its belief that there is a “reasonable case” for ICANN’s granting of a Section 6 single-registrant exemption, it provides no further explanation of why providing third parties with an ability to register .Tube domains is “not necessary to protect the public interest.” Applicant states that the exemption “facilitates Google’s ability to further enhance the YouTube brand and the reputation of YouTube offerings.” Annex 1 at Q.18.b.i.3. Reputation. • .Tube is intended solely to extend YouTube’s business model and brand – “[t]he sole purpose of the proposed gTLD, .tube, is to host select YouTube channels’ digital content.” Id. at Q18a. • The ability to register .TUBE domains “will be limited to premium members that meet YouTube’s selection criteria.” Id. • .Tube domain ‘registration’ will not be freely available to all potential registrants – “Only select content distributors who meet YouTube’s eligibility criteria will be eligible for a second-level domain within the gTLD.” – and even then, as the application concedes, they will only receive a “vanity domain name.” • “Should ICANN not approve this proposed exemption, Charleston Road Registry will facilitate a fair and equitable registrar process, providing open access to any registrar who meets ICANN accreditation guidelines.” Id. at Q18.b.ii.1 Competition. Google appears to still be reserving the right to establish registration eligibility criteria that would limit domain registrations to YouTube content providers whose intended domain use would further Google’s business needs. • Applicant states that the gTLD will “be differentiated from other gTLDs due to its purposefully limited scope,” which “includes: (1): uniqueness in terms of the users the proposed gTLD seeks to benefit; (2) a clear indicator that second-level domains within the gTLD offer a particular, targeted content…” Annex 1 at Q18.b.ii.2. Differentiation. The proposed purposes of and registrant limitations proposed for .TUBE by Google demonstrate that the intended purpose of Google’s .TUBE acquisition is to deprive other potential registry operators of an opportunity to build gTLD platforms for competition and innovation that challenge YouTube’s Internet video dominance. It is clear that Google’s intended use for .TUBE is identical to Objector’s TUBE® Domain Channels and directly competes with Objector’s pre-existing trademark rights in Int’l Classes 35, 38, 41, 42, and Indeed, throughout its application, Charleston tries to falsely conflate competition and innovation within the Google-controlled .YOUTUBE/.TUBE ecosystem – as opposed to genuine Third-Party competition and innovation that would result if Objector’s Application for an open .TUBE registry is granted. Applicant’s own statements leave no doubt that its intended use of the gTLD would create a likelihood of confusion with the Objector’s TUBE® Trademark as to the source, sponsorship, affiliation, or endorsement of the gTLD. Where the goods or services are directly competitive, the degree of similarity required to prove a likelihood of confusion is less than in the case of dissimilar goods and services. 4 McCarthy on Trademarks and Unfair Competition § 24:33 (4th ed.); KOS Pharmaceuticals, Inc. v. Andrx Corp., 369 F.3d 700, 70 U.S.P.Q.2d 1874 (3d Cir. 2004) (finding that ADVICOR and ALTOCOR are confusingly similar when both used for prescription cholesterol reducing drugs). Here, the Panel should find that the identical nature of the Objector’s TUBE® Trademark and the applied for gTLD coupled with the fact that Applicant intends to use the gTLD in the same manner (on line video information and entertainment distribution), through channels (related to topical video content and advertisement), and with the same goods and services for which Objector currently has its pre-existing Trademark rights, necessitates a finding in favor of Objector. Based on the foregoing, granting of the gTLD to Applicant would create a clear likelihood of confusion with Objector’s valuable pre- existing registered trademark rights. Accordingly, Objector respectfully requests that the Panel find in favor of Objector and reject Applicant’s Application for the gTLD. A schedule and description listing all supporting evidence/documentation for Objector’s VI. Panel (of Experts)
(Procedure, art. 13; WIPO Rules for New gTLD Dispute Resolution, para. 8) [13.] The Objector elects to have the dispute decided by a three-member Panel. VII. Other Legal Proceedings
[14.] Objector is unaware of any legal proceedings that have been commenced or terminated in connection with the applied-for TLD that forms the basis for the Objection. VIII. Communications
[15.] A copy of this Objection has been sent electronically to the Applicant/Respondent on March 13, 2013 by email toandand to ICANN on March 13, 2013 by email to ICANN New gTLD Program General Manager Christine Willet IX. Payment
(Procedure, art. 8(c); WIPO Rules for New gTLD Dispute Resolution, para. 10; Annex D to WIPO Rules for New gTLD Dispute Resolution) [16.] As required by the Procedure and WIPO Rules for New gTLD Dispute Resolution, payment in the amount of USD 10,000 has been made by wire transfer to WIPO evidence of such payment is provided as Annex 8. By submitting this Objection, the Objector acknowledges and agrees that further payments may be required, e.g., in the event the parties elect Determination by a three-member Panel, or as may otherwise be provided in the Procedure and WIPO Rules for New gTLD Dispute Resolution. X. Certification
(Procedure, art. 1(d) and 22; WIPO Rules for New gTLD Dispute Resolution, para. 16) [17.] The Objector understands and agrees that its claims and remedies concerning the application of the applied-for TLD, the instant Legal Rights Objection and the Determination thereof shall be solely against the Applicant/Respondent, and neither the Expert(s)/Panel(ists), nor WIPO Center and its staff, nor ICANN and its Board members, employees and consultants shall be liable to any person for any act or omission in connection with any proceeding conducted under this Procedure. [18.] By submitting this Objection to the WIPO Center the Objector hereby agrees to abide and be bound by the provisions of the applicable New gTLD Dispute Resolution Procedure and WIPO Rules for New gTLD Dispute Resolution. [19.] The Objector certifies that the information contained in this Objection is to the best of the Objector’s knowledge complete and accurate, that this Objection is not being presented for any improper purpose, such as to harass, and that the assertions in this Objection are warranted under the Procedure and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument. _____________________ Jason B. Schaeffer Counsel For Objector ESQwire.com, P.C. 1908 Route 70 East Cherry Hill, NJ 08003 FILED: XI. SCHEDULE OF OBJECTOR’S ANNEXES
A Copy of Applicant’s gTLD Application for .TUBE; A Copy of the USPTO Certification of Objector’s TUBE Trademark and Screen Shot Affidavit of Rami Schwartz in Support of Objection; Spreadsheet of Select TUBE Domain Channels and Link to Archived Pages from Archive.org showing Historical Use of TUBE; Copy of Joint Venture Agreement for Management of <IsraelTUBE.com>; Screen Shot of Objector’s tubegtld.com Website; Analytic Reports for Objector’s Twitter Accounts – February 2013; and Confirmation of Objector’s Wire to WIPO for Payment of LRO Filing Fee.

Source: http://www.tubegtld.com/libraries/uploaded/general/file/procedure/LROforTUBE-LATELCOsOBJECTION.pdf