Seaports, airports, cities and municipalities have not fared well in their claims to take possession of disputed domain names. Geographic designations are either not registrable or when used as a badge for goods or services are considered generic. A list of unsuccessful complainants includes Port of Helsinki vs. Paragon International Projects Ltd., D2001-0002 (WIPO February 12, 2001) (denied complaint for <portofhelsinki.com> because geographic indicators are not per se trademarks, and Complainant failed to show any registered or common law trademark rights); BAA plc v. Bob Larkin, D2004-0555 (WIPO November 11, 2004) (<gatwick.com>) the Panel rejected Complainant’s contentions that as the operator of Gatwick airport it had a protectable right to the name “Gatwick” – agreeing with the Respondent that it could legitimately use the domain name descriptively; Ville de Paris v. Whois Privacy Services/Comar Ltd., D2009-1255 (WIPO December 3, 2009) (<wifi-paris.com>, denied because no exclusive right can be claimed to a geographic term).
Where the complainant has been successful there was some added ingredient. In BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, D2004-0717 (WIPO October 21, 2004) (<aberdeenairport.com>), for example, it was because the domain name included the term “airport” and the Complainant had a service mark, although the inclusion of the same term in an earlier case, Manchester Airport plc v. Club Club Ltd, D2000–0638 (WIPO August 22, 2000) (<manchesterairport.com>) did not persuade the majority that the Respondent had registered the domain name in bad faith. A consensus had developed more fully in 2004 regarding the scope of the Policy, but not in 2000, which is apparent from the majority’s conclusion that “in general, resolution of disputes related to violations of national passing off laws should be left to national courts.” There is every reason to believe that if a “Manchester Airport” case were ever again on the docket, the Complainant would prevail.
In fact, the latest entry on this issue, Town of Islip, a municipal corporation organized under the laws of the State of New York v. Black sheep Television Ltd., FA1008001339861 (Nat. Arb. Forum October 11, 2010) is not unlike Manchester Airport. The Complainant successfully sought to gain control over <macarthurairport.com>, <islipairport.com>, <islipmacarthurairport.com>, <islipairportonline.com>, <islipairportonline.net>, <macarthurairportonline.com>, <macarthurairportonline.net>, <ispairportonline.com>, and <ispairportonline.net>. Unlike the Manchester Panel, the Panel in Town of Islip was not of the view that “disputes relating to violations of national passing off laws should be left to national courts.” The Respondent had no right or legitimate interest in the domain names and had registered them opportunistically.
There are two added ingredients in Town of Islip. One is that the Complainant owns trademarks for LONG ISLAND MACARTHUR AIRPORT (both with and without a device) and claims common law rights to “Macarthur Airport”, “Islip Airport”, “Islip Macarthur Airport” and “ISP.” Although the registered trademarks post-date the registration of the disputed domain names, the unregistered trademark pre-date the registration by decades. The second ingredient is that the Respondent sought to convert its possession of the domain names into a business arrangement with the Complainant.
The registration of multiple domain names in Town of Islip brought into play paragraph 4(b)(ii) of the Policy. The Panel predicated bad faith on both 4(b)(i) and 4(b)(ii). The Respondent moved timely in federal court under the ACPA to block transfer of the domain names. A hearing is scheduled for December 1, 2010 to determine whether the 4(k) stay will be lifted. The likelihood is that the Court will side with the Town of Islip.
Levine Samuel, LLP <researchtheworld.com>