Food Fight

FairWinds Partners —  March 20, 2013

A few days after ICANN’s new gTLD Objection Filing period closed last Wednesday evening, the first objections are beginning to be made public. The first Legal Rights Objection posted by the World Intellectual Property Organization (WIPO), the designated dispute resolution provider for this type of objection, is over the application for .DELMONTE, Domain Incite reported late last week.

The Legal Rights Objection (LRO) is one of the provisions ICANN put in place in this new gTLD application round to protect trademark holders. The idea is that if an applicant applies for a new gTLD that infringes upon an organization’s existing trademark rights, then that organization can file an LRO to assert its rights. Ultimately, if the applicant has no demonstrable rights to the term, the application can be terminated. The LRO was one of the primary reasons ICANN could assure the trademark community that cybersquatting would not occur at the top level.

But what happens when two organizations have rights to the same mark?

The dispute over .DELMONTE raises interesting issues. The organization that applied for the gTLD is a subsidiary of Fresh Del Monte Produce, Inc., and the objector is Del Monte Corporation. Here in the U.S., we know and recognize Del Monte Corporation as the producers of canned fruits and vegetables, and as the parent company of a handful of other well-known brands. Fresh Del Monte Produce, Inc. makes similar products, but primarily markets them outside of the U.S. and South America. If you visit Del Monte Corporation’s corporate site at DelMonteFoods.com, you’ll notice a disclaimer at the bottom that reads, “Del Monte Foods is not affiliated with Fresh Del Monte Produce, Inc., Del Monte International or their subsidiaries or affiliates. ©Del Monte Corporation.” This is because Del Monte Corporation spun off Fresh Del Monte Produce, Inc. in 1989. Now Fresh Del Monte Produce, Inc. uses the Del Monte mark under a licensing agreement.

Undoubtedly, this licensing agreement will come into play during the dispute resolution over this objection. If it turns out that Del Monte Corporation holds the trademark rights to “Del Monte” and Fresh Del Monte Produce, Inc. does not own separate rights, then we could see the .DELMONTE application tossed out.

Then again, there’s always another option: cooperation. If the two Del Monte’s have coexisted for the past 24 years, both in the global marketplace and the online world, then perhaps there is an opportunity to share the use of the .DELMOTE gTLD. So far, the .DELMONTE objection is the only one that WIPO has posted on its site, but you can bet there will be more published over the coming days and weeks.