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September 10, 2013

Zacco successfully defends Global Top Level's application for the new generic top level domain .now

Only 69 legal rights objections have been filed against the in total 1,930 applications for new generic top level domains.

One of the new gTLD applicants is Global Top Level ApS, a Danish company, which has applied for the new gTLD .now.

In a number of countries, including Denmark, Norway and Sweden, the local word for “now” is “nu”. Therefore, the ccTLD .nu reserved to Niue, an island country in the Pacific Ocean northeast of New Zealand, became one of the first ccTLD’s successfully offered alternatively to the gTLD’s such as .com in these countries in particular for use in connection with campaign domains.

It is based upon the learning from the success of the ccTLD .nu in Denmark, Norway and in particular Sweden, that Global Top Level wishes to provide a TLD in particular for campaign purposes.

However, a legal rights objection against the application of Global Top Level was filed in accordance with the WIPO Rules for new gTLD Dispute Resolution by Starbucks (HK), Ltd., a Hong Kong company, on the basis of its alleged rights in the NOW trade mark.

Starbucks (HK) Ltd is owned by PCCW Limited, also a Hong Kong company, and operates NOW TV, which is Hong Kong’s leading pay-TV operator and one of the world’s largest deployments of IPTV.

Starbucks and PCCW holds registered trade mark rights in a number of combined word and figurative marks incorporating the word element “NOW” but not to the word element as such.

During the legal rights objection, Starbucks failed to prove that the word element NOW has acquired dis­tinctiveness for the services of Starbucks whether in Hong Kong or elsewhere.

At its best the evi­dence submitted showed that the trade mark NOW TV through use since 2006 has acquired distinctiveness and perhaps even a reputation for IPTV services in Hong Kong.

On this basis the expert in its determination correctly found in favor of Global Top Level and rejected the legal rights objection.

The application for the new gTLD .now of Global Top Legal is now proceeding, however, there are in total 6 applications for the new gTLD .now, including from Starbucks, and it remains to be seen whether Global Top Level’s application will be successful.

Here you can see the full list of Legal Rights Objections filed with the WIPO Arbitration and Mediation Center: http://www.wipo.int/amc/en/domains/lro/cases/

For further information about the new gTLD process and the precautions that you should take as a trademark owner, please contact one of our consultants:

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