WIPO Overview of the Premium Name Trademark Application Rules for .mobi

Note: The Premium Name Trademark Application Period ended on October 13, 2006.

This overview is presented for information purposes only. Parties are advised to consult the Premium Name Trademark Application Rules for .mobi for the exact wording of the provisions referred to below (in particular Rules, Paragraph 2(a), including footnotes).

Mobile Top Level Domain, Ltd. (“mTLD”), in connection with the introduction of the .mobi top level domain, has compiled and reserved a list of Premium Names, consisting of “commonly used words and phrases”. Further information about Premium Names is available at the mTLD web site.

During the Premium Name Trademark Application Period (September 15, 2006, 12.00 noon GMT to October 13, 2006, 12.00 noon GMT), trademark owners can apply to register any of the above-mentioned Premium Names subject to the Premium Name Trademark Registration Conditions (the Conditions). This process will be administered solely by the WIPO Arbitration and Mediation Center (the Center), in accordance with the Premium Name Trademark Application Rules for .mobi (the Rules).

A. Applications under the Rules

The Rules apply only to Applications for domain names on the mTLD Premium Name List and cover the eligibility of Applicants based on their compliance with the Conditions, set out in Paragraph 2(a) of the Rules.

To be eligible for registration of a Premium Name, an Applicant must prove its compliance with the Conditions (Rules, Paragraph 2(a)), namely that:

(i) at the time of the Application, the Applicant is the holder of a current (non-expired) trademark registration in its name; and

(ii) the Premium Name is identical to the textual or word elements of the trademark registration on which the Application is based; and

(iii) the trademark registration on which the Application is based is of national effect, and its relevant textual or word elements have not been disclaimed; and

(iv) the trademark on which the Application is based was registered or applied for, in the name of the Applicant, prior to July 11, 2005, with the trademark authority with which the trademark is registered; and

(v) the trademark has been used by the Applicant or with its consent for a period of at least five years prior to the date of the Application, provided that such use,

(1) was relevant to advertising, promoting, distributing, offering or selling all or some of the goods or services for which the trademark is registered; and

(2) has led relevant sectors of the public to associate the textual or word elements of the trademark with the goods or services for which the trademark is used by the Applicant or with its consent; and

(3) took place in at least one of the countries or territories for which the trademark has been registered; and

(4) was real, substantial and in good faith, and not merely a means to register a Premium Name.

An Applicant can only meet criterion (i) if the trademark held by the Applicant was registered in its exact name. The holder of a trademark license or of an unregistered trademark would therefore not be considered as meeting the Conditions. A registration in the supplemental register of the United States Patent and Trademark Office is also considered insufficient (Rules, Paragraph 2(a)(i), Footnote 1).

As to criterion (ii), if the trademark is not exactly identical to the Premium Name, identity is nevertheless deemed to exist where (Rules, Paragraph 2(a)(ii), Footnote 2):

  • there is a space between the textual or word elements of the mark (e.g., service mark), and such space is either eliminated from the Premium Name (e.g., <servicemark.mobi>) or replaced by a hyphen (e.g., <service-mark.mobi>);
  • the mark is comprised of special characters (such as ~ @ # $ % ^ & * ( ) + = < > { } [ ] ¦ / \), spaces, or punctuation (such as : ; “ ’ , .?) (e.g., service & mark), and such special characters, spaces or punctuation are either eliminated from the Premium Name (e.g., <servicemark.mobi>), replaced with hyphens (e.g., <service-mark.mobi>), or transcribed in a conventionally accepted way (e.g., <serviceandmark.mobi>);
  • the mark includes letters which contain additional elements that, for technical reasons, cannot be reproduced in a Premium Name (such as ä, é or ñ), and the letters concerned are either reflected in the Premium Name without the additional elements (such as a, e, n) or replaced by conventionally accepted spellings (such as ae for ä).

Apart from the above exceptions, the Premium Name and the trademark must be exactly identical in order to meet the condition under Rules, Paragraph 2(a). The Rules allow no further exception to this condition.

With regard to criterion (iii), European Community trademarks are considered as meeting the condition of national effect, but United States state trademarks are not (Rules, Paragraph 2(a)(iii), Footnote 3).

As to criterion (iv), the date of registration of, or application for, the trademark upon which the Premium Name Application is based must predate July 11, 2005, although in all instances, the mark must necessarily be registered before the date of the Application of the Premium Name (Rules, Paragraph 2(a)(iv), Footnote 4).

An Applicant is required to submit the originals, or copies certified by the issuing trademark authority, of a trademark certificate proving registration in accordance with Paragraph 2(a)(i)-(iv) of the Rules, and other documentary evidence proving use to establish its compliance with Paragraph 2(a)(v). Such evidence may, for example, consist of consumer surveys, sales reports, advertising and promotion reports, reports of successful enforcement of the trademark, etc. (Rules, Paragraph 2(b)(ii), Footnote 5).

Applications under the Rules can be submitted by any person or legal entity from September 15, 2006, 12.00 noon GMT to October 13, 2006, 12.00 noon GMT (Rules, Paragraphs 1 and 5(a)). The Center will not accept Applications filed before or after this period.

B. Overview of the Procedure

1. Submission of an Application

The process is initiated through the submission of the Online Application Filing Form, and payment of an Applicant’s fee in the amount of USD 1,500 in accordance with Rules, Paragraph 14.

Once an Application is received online by the Center, an electronic automatic acknowledgment is sent to the Applicant’s e-mail address indicated in the Application for the purpose of communications.

If more than one Applicant files an Application regarding the same Premium Name, the Center will process all Applications independently from one another (Rules, Paragraph 7(a)). If more than one Application regarding the same Premium Name is successful, mTLD shall attribute such Premium Name to one of the successful Applicants in accordance with its procedures (Rules, Paragraph 7(b)).

2. Appointment of the Expert and Notification of the Decision

If the Center finds that the Application is in formal compliance with the Rules and that the Applicant has duly completed payment of the required fees, the Center will appoint a single Expert from its published list of Premium Name Experts and forward the Application to the Expert (Rules, Paragraph 8). The Center will also notify the Applicant of the Expert appointment and post the Premium Name and the name of the Applicant on the Center’s web site.

If the Center finds the Application to be deficient in light of the Rules, it will notify the Applicant of the nature of the formal deficiencies identified. The Applicant will then have ten (10) days to correct the deficiencies, failing which the Application proceeding will be deemed terminated, without prejudice to the submission of another Application submitted during the Premium Name Trademark Application Period (Rules, Paragraph 6(b)).

3. Decision

In the absence of exceptional circumstances, the Expert will make a determination as to the eligibility of the Applicant to register the Premium Name based upon the Application within fourteen (14) days of its appointment (Rules, Paragraph 11). The Center will communicate the decision to the Applicant and to mTLD. If the Applicant prevails, mTLD will communicate to the Applicant information concerning the attribution of the concerned Premium Name in accordance with its procedures.

4. Withdrawals, Terminations

After the submission of an Application, the Applicant may at any time withdraw its Application by notifying the Center of its intention to do so, by signed fax or letter (Rules, Paragraph 13(a)). Upon receipt of a withdrawal request, the Center will terminate the proceeding. If it becomes unnecessary or impossible to continue the Application proceeding for any other reason, the Center, or after its appointment, the Expert, will terminate the Application proceeding (Rules, Paragraph 13(b)).

Where an Application proceeding is terminated prior to the appointment of an Expert, the Center will withhold a processing fee of USD 500 and refund the remainder of the Application fee to the Applicant. In all other cases, the Application fee will be deemed forfeited by the Applicant.