The World Intellectual Property Organization (WIPO) has rejected the Legal Rights Objection (LRO) of the Canadian Real Estate Association of Ottawa to the registration of the generic Top Level Domain (gTLD) .mls by Afilias Limited. While the WIPO Panel acknowledged that while the Association possesses a valid legal right to the term “MLS”, they found it was not strong enough to block the registration of the new gTLD by the applicant.
Background
This LRO by the Objector was one of 14 objections that have so far been decided by WIPO, all of which have been rejected. For further coverage of these 14 decisions, and the framework that WIPO and the Internet Corporation for Assigned Names and Numbers (ICANN) works within, see past IPilogue coverage here.
The Parties
Afilias Limited (the Applicant) is a domain holding and development organization based in Ireland that owns and manages many other domains, including .info, .mobi and .org. The Panel decision shows that their intent in applying for the .mls domain is to develop it into a worldwide domain for the listing of real estate properties.
The Canadian Real Estate Association of Ottawa (the Objector) is a Canadian not-for-profit trade organization involved in the management of real estate professionals in Canada. The Objector also possesses a certification mark for MLS, which its members use to brand real estate advertisements.
The Meaning of MLS
The letters “MLS” are generally used as an abbreviation for Multiple Listing Service; services used for displaying residential and commercial real estate properties for sale or lease. The Panel discussed the nature of the term, and its usage across English and non-English speaking countries both as a generic term for a collection of real estate listings, but also its other meanings.
The Decision
The decision included two findings: first, a determination of whether the Objector has a legal right adequate for an LRO; and second, whether that legal right was sufficient to block the registration of .mls by the Applicant.
The adequacy of the Objector’s legal right was brought up by the Applicant, who challenged the Objector’s certification mark in “MLS” as insufficient for an LRO under the WIPO Guide book. The Panel found that under interpretation of the Guide Book, a certification mark is a sufficient right with which to challenge a gTLD registration. The Panel relied upon the fact that such marks, in addition to unregistered trade-marks are all sufficient for domain name objections under the UDRP. The Panel also found there is nothing indicating the intention of ICANN to exclude these types of rights as insufficient for providing standing to launch an LRO.
Once the Panel established the Objector had standing to challenge the application, they considered the Objection. There were three key findings that caused the Panel to reject the LRO.
The Panel first discussed what level of infringement is required for a successful objection. Here they adopted the approach used in Right at Home v. Johnson Shareholdings Inc., in which the Panel interpreted the Guide Book as requiring a high level of infringement to the point of “untoward impairment” of the Objector’s rights, or something “intolerable” in allowing the gTLD registration. Many commentators have seen this as an exceeding high level of infringement, making it very difficult to raise a successful Objection.
Once this objectionable level of infringement was defined, the Panel considered if the infringement by the Applicant would rise to this level. Of key finding here was that the term “MLS” is widely considered a generic term, which would not qualify for trade-mark registration in many jurisdictions. Even in Canada, the Objector does not hold a trade-mark for the term, but a certification mark. The Panel also found that the Objector holds those rights only in Canada, and nowhere internationally where the term is used as a general term and not a trade-mark. While finding this, the Panel did acknowledge that the Objector does hold title to “MLS” in Canada, and that impairment of that mark would result from issuing the .mls domain to the Applicant. The Panel rejected, however, the objection as the potential infringement failed to rise to the level adopted from Right at Home.
Commentary
Taken in context with the other 14 rejected LROs, this decision further bolsters future gTLD applicants in two ways. It first endorses the high bar for permissible infringement set out by Right at Home, and second it highlights the difficulties any objector will have establishing an objection to the registration of a generic term when they possess a legal right in only limited jurisdictions. There is some good news for future Objectors however, as the decision acknowledges both Certification Marks and Unregistered Marks as valid bases to propose an LROs. Given the exceedingly high allowance of permissible infringement, however, it is difficult to see what will be required for a successful LRO. This paints an overall ominous future for other potential Objectors.
Alex Buonassisi is an IPilogue Editor and a JD Candidate at The University of British Columbia.