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Intellectual Property Law

New Matter Spring 2015 Volume 40, Number 1

Del Monte International v. Del Monte Corporation: The Battle for the .DELMONTE Top-Level Domain

MIKE RODENBAUGH Rodenbaugh Law

INTRODUCTION

ICANN’s new gTLD program has seen some 600 ".brand" applications to operate generic top-level domains (gTLDs) that correspond to the applicant’s trademark. This article discusses the .delmonte controversy, the subject of a WIPO Legal Rights Objection1 decided in favor of Del Monte Corporation, and a lawsuit filed in the Central District of California by Del Monte International GMBH, seeking to overturn the WIPO panel’s decision. The California case was dismissed under Federal Rule of Civil Procedure 12(b)(6) for failure to state a cognizable claim,2 and Del Monte International GMBH appealed to the Ninth Circuit. The appeal is currently pending. The appeal raises novel and intriguing issues that are likely to be important in future rounds ofTLD expansion, when thousands more .brand gTLD applications are expected.

In 1989, Del Monte Corporation ("Del Monte"), headquartered in San Francisco, spun off its fresh produce division to become Fresh Del Monte Produce, Inc. ("Fresh Del Monte"). Fresh Del Monte received a fully paid, perpetual, exclusive, worldwide license to use the DEL MONTE trademark for fresh fruits, vegetables and other produce. The license agreement made no mention of domain names, much less top-level domain names.

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