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Arent Fox Wins Unanimous Decision from WIPO in gTLD Legal Rights Objection

Tuesday, August 13, 2013

Arent Fox LLP successfully represented The DIRECTV Group Inc. (DIRECTV) in its Legal Rights Objection against Dish Network’s application to operate the generic top level domain name (gTLD) .DIRECT. After issuing more than 30 rulings adverse to trademark owners, this was only the second time that a WIPO panel has upheld a Legal Rights Objection. DIRECTV was represented by Arent Fox Intellectual Property partners James R. Davis and Sarah L. Bruno. To read the full decision of The DIRECTV Group Inc. v. Dish DBS Corporation, click here.

In support of its objection to Dish’s gTLD application, DIRECTV demonstrated that it has strong global rights in a family of DIRECT and DIRECTV trademarks and that consumers would likely be confused if Dish, a direct competitor, were to use .DIRECT as a source to market and brand its services. The three-person WIPO panel unanimously upheld DIRECTV’s objection to Dish’s application. Notably, the panel ruled in favor of DIRECTV on each of the eight relevant factors.

Because this area of the law is still emerging, and ICANN plans to accept new gTLD applications in the future, this decision will serve as one of the very early precedents that trademark owners and others can consider when deciding whether to file an application for — or to oppose — a new gTLD.

Arent Fox works closely with clients to help them protect and enforce their brands on the Internet, including providing counsel on newly emerging laws and issues like gTLDs. In particular, Mr. Davis has been the Chair of the American Bar Association’s Committee on Trademarks and the Internet and has had significant involvement with domain name disputes and the gTLD process.

Chambers Global, Chambers USA, and Legal 500 have recognized the firm’s Intellectual Property practice and its attorneys as industry leaders. Arent Fox is one of the few “go-to” firms for novel and high-profile intellectual property issues. With more than 70 full-time IP professionals, the group offers a full range of services across copyright, patent, and trademark matters.

About Arent Fox

Arent Fox LLP, founded in 1942, is internationally recognized in core practice areas where business and government intersect. With more than 350 lawyers, the firm provides strategic legal counsel and multidisciplinary solutions to clients that range from Fortune 500 corporations to trade associations. The firm has offices in Los Angeles, New York, San Francisco, and Washington, DC.

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