Intellectual Property Law
New Matter Spring 2015, Volume 40, Number 1
Content
- Licensing Interest Group
- Contents
- Technology, Internet, and Privacy Interest Group
- Trade Secrets Interest Group
- Letter from the Editor-in-Chief
- Sins of Omission: Panduit's Overreach in Patent Model Jury instructions
- The State Bar of California Intellectual Property Alumni
- International Interest Group
- Copyright Interest Group
- MCLE Self-Study Article
- International Ip Developments
- Supreme Court Considers Two Trademark Cases That May Alter How Holders Register, Protect, and Use Their Marks
- Case Comments
- Intellectual Property Section Executive Committee 2014-2015
- Trademark Interest Group
- Litigation Interest Group
- Intellectual Property Section Interest Group Representatives 2014-2015
- Letter from the Chair
- Patent Interest Group
- Legislation Update
- Del Monte International v. Del Monte Corporation: the Battle for the .Delmonte Top-Level Domain
- Ninth Circuit Report
- Entertainment and Sports Law Interest Group
- 2015 New Matter Author Submission Guidelines
- The Licensing Corner
- Federal Circuit Review
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 of TLD 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.