In a recent decision, a World Intellectual Property Organization (WIPO) domain name arbitration panel dismissed a complaint filed by the Mexican Tourist Board (MTB) against Latin America Telecom (LAT) concerning the domain name “mexico.com.” The panel went so far as to find that the complaint was brought in “bad faith” and made a finding of attempted “Reverse Domain Name Hijacking” against the MTB.
The Mexican Tourist Board is a company majority owned by the Mexican government with a mandate to promote tourism in Mexico.
Mexcio.com was registered on November 14, 1997, by LAT, a U.S. company incorporated in Delaware. LAT operates “mexico.com” as a general information site about Mexico, including a section containing advertisements for tourism services such as hotels, transportation, restaurants and entertainment.
In its complaint, the MTB argued that LAT had registered the domain name in “bad faith” in order to sell it for a profit at a later date.
Under the arbitration rules set by the Internet Corporation for Assigned Names and Numbers (ICANN) for dealing with disputes over top-level generic domain names (.com, .net and .org), for a complaint to succeed, the complainant must show that:
1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2) the registrant of the domain name has no rights or legitimate interests in respect to the domain name; and
3) the domain name has been registered and is being used by registrant in “bad faith.”
The panel in this case acknowledged that “mexico.com” is confusingly similar to certain trademarks in which the MTB had rights. However, the panel found that LAT, in its operation of “mexico.com,” had a legitimate interest in the disputed domain name.
The panel also found that LAT had not registered the domain name in bad faith because it was selected for its geographic, rather than for any trademark, sense.
Reverse Domain Name Hijacking
The domain name also was registered prior to the existence of the MTB trademarks. Accordingly, the panel concluded that LAT could not be accused of registering a domain name with the intent to profit from a trademark that it knew the MTB did not possess at the time the domain name was registered.
In this regard, the panel seems to have been caught up in the formality of the legal government entity chosen by the Mexican government to pursue this domain name and failed to appreciate that the Mexican government, as a whole, was around long before the disputed domain name was registered.
On the basis of the foregoing, the panel concluded that the MTB had engaged in attempted reverse domain name hijacking, because the complaint was a bad-faith attempt to deprive a registered domain holder of a domain name, thereby constituting an abuse of the WIPO proceedings.
In a similar decision released last year, another WIPO arbitration panel denied the request of the Puerto Rico Tourist Company (PRTC) to obtain the rights to “puertorico.com” from Virtual Countries (VCI), a U.S. company that registered this disputed domain name in 1995 and operates a number of Web sites featuring what it called virtual countries furnishing business, travel, news and cultural information.
The PRTC is a state corporation of Puerto Rico with a mandate to promote tourism within Puerto Rico. Fruitless negotiations were held between the parties about the transfer of “puertorico.com,” after which the PRTC filed a complaint with the WIPO in which it sought to recover “puertorico.com,” based in part on the strength of its several trademark registrations containing the words “Puerto Rico.”
In dismissing the complaint, the panel found that the PRTC failed to satisfy the first requirement of the above test. Specifically, the panel accepted VCI’s contention that complainants such as the PRTC cannot have trademark or service mark rights in solely geographic names under U.S. law, thereby distinguishing an earlier decision in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., in which such rights were found to exist under Spanish law.
The PRTC did not have either a common law or a registered trademark in the words “Puerto Rico” standing alone, rather only in combination with other words. As such, “Puerto Rico” was only used in a descriptive geographic sense, together with jingles and phrases, and failed to acquire any secondary meaning or distinctive character.
On the other hand, in the Barcelona.com decision, the City of Barcelona was found to have a registered trademark in which “Barcelona” was a distinctive element.
It is interesting to note that the Barcelona decision was later litigated in the U.S., where ultimately the U.S. Court of Appeals for the 4th Circuit overturned the WIPO decision and applied U.S. trademark law, under which it found “Barcelona should have been treated as a purely descriptive geographical term entitled to no trademark protection.”
The puertorico.com decision came on the heels of another similar decision in which a WIPO panel dismissed a complaint filed by the government of New Zealand for the rights to “newzealand.com.” The same company as in the puertorico.com dispute, VCI, had registered the disputed domain name “newzealand.com” in 1996, operated a Web site containing information about New Zealand and owns a U.S. trademark registration filed on February 11, 2000 for “newzealand.com” for business advertising.
The New Zealand government filed five trademark applications in New Zealand for the mark “New Zealand” on June 29, 2001, and argued that only the government and citizens of New Zealand can have a legitimate interest in New Zealand as a trade and service mark.
The panel rejected the government of New Zealand’s “astonishing” contention, which it found to be “contrary to all the tenets of trademark law and practice,” that a geographical indication is a trade and service mark because it precisely serves to identify a geographical origin.
Geographical Significance of Name
The panel found that indications of geographical origin are capable of being trademarks only in situations where the geographical significance of those names has been displaced. An example provided was that of “York,” which is the name of a city and also the name for a popular brand of trailers. The government of New Zealand did not even attempt this argument, but rather relied exclusively upon the geographical significance of “New Zealand.” The panel rejected the argument that “New Zealand” is an unregistered trademark deserving of protection under the extended form of the passing off action identifying any product emanating from New Zealand.
On the basis of the above, the panel found that the government of New Zealand had to meet the three-part test set out above. The panel also made a finding of reverse domain name hijacking because the government of New Zealand made the complaint with the knowledge that its claim to trademark and service mark rights in respect of “New Zealand” was baseless.
In particular, the government of New Zealand had previously admitted in a questionnaire to the WIPO that, “New Zealand law, custom or practice does not preclude the use of country names under any circumstances. New Zealand does not see any reason why the domain names should be excepted from this general rule.” Accordingly, the panel found that the complaint was brought in bad faith in an attempt to deprive a registered domain name holder of its domain name.
The above decisions bring into focus the convoluted interplay between domain names and trademarks and the fact that nothing can be taken for granted when it comes to domain name disputes, even something as ostensibly straightforward as a country’s name.
Javad Heydary, an E-Commerce Times columnist, is an e-businessattorney (Ontario & New York) at the Toronto-based law firm of HeydaryHamilton LLP and the managing editor of Lawsof.com.