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Protectability of Geographic Indicator Trademarks in a Domain Name Dispute

Turning the issue around from yesterday’s Note, instead of geographic indicators joined to trademarks, consider geographic trademarks and their strength. In domain name disputes geographic indicators as trademarks are heavily discounted, Atlantic Station, LLC v. Dargan Burns III, D2010-0996 (WIPO September 14, 2010) (<atlanticstation-bars.com>, <atlanticstationdental.com>, <atlanticstation-food.com>, <atlanticstation-restaurants.com> and <atlanticstationshops.com>); Atlantic Station, LLC v. Dargan Burns III, FA0903001250592 (Nat. Arb. Forum April 26, 2009) (<atlanticstation-condo.com>). This point is particularly emphasized in the latest of the Atlantic Station cases: “It should be noted that the Lanham Act expressly permits others to use even the registered and incontestable trademark of another where it is shown that the use is a use of a term which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party, or their geographical origin.”

An adverse ruling, of course, does not address whether the respondent is guilty of trademark infringement, which would be triable (in the U.S.) under the Lanham Act. But, in this case, “there is no indication that Complainant has sought to challenge [the earlier] decision in a United States court or to otherwise enforce its trademark rights via Lanham Act litigation.” Then continuing,

With this in mind, the Panel cannot presume on the given record (nor would it be typically speaking appropriate to do so in an administrative proceeding under the Policy) that it is trademark infringement for Respondent to use “Atlantic Station” in conjunction with its real estate services.

The Complainant’s burden in the Atlantic Station cases is that the “geographic connotations of the ‘Atlantic Station’ make it all the more difficult to presume that Respondent acted in bad faith …. [Indeed,] it is in the difficult position faced by any owner of a mark that has dual meaning. On the one hand ATLANTIC STATION is a trademark; on the other it is a geographic place.” There are official as well as unofficial geographic locations. “Atlantic Station” is recognized by the U.S. Post Office, thus adding a descriptor “condo” did not violate the Complainant’s right even though it was in the real estate market and the parties competed for the same customers.

In contrast, a geographic location created by the developer and having no official recognition can protect its trademark against a respondent in competition with it, Big Canoe Company, LLC v. Daniel J. Elliot, FA0609000799382 (Nat. Arb. Forum November 17, 2006) (<bigcanoerealestate.net>). The Panel found that Complainant, a builder, had created and named the community, thus distinguishing it from cases like Deer Valley Resort Company v. Intermountain Lodging, FA0505000471429 (Nat. Arb. Forum June 21, 2005) that “was a geographic area that had been identified and referred to as such by the local populace for a number of years before Complainant’s registration of the mark [], [in] this situation … the Complainant’s use and registration of BIG CANOE predated the use of this term as the name of a geographical area by several years.”

In the second Atlantic Station (as in Deer Valley) “Complainant has not offered evidence to prove that Respondent uses ‘Atlantic Station’ in a context that suggest[s] trademark usage instead of descriptive geographic usage. Complainant has not proved by a preponderance of the evidence that Respondent was not likely relying on the geographic connotations of ‘Atlantic Station’ when it registered the Domain Names.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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One Response to Protectability of Geographic Indicator Trademarks in a Domain Name Dispute

  1. gmlevine October 7, 2010 at 7:46 pm #

    Respondent asked whether I agree or not with the decision in the most recent Atlantic Station decision.

    Based on the record before the Panel I think the decision is correct for a UDRP proceeding, but it does not answer the trademark infringement question which is weighed by different criteria. It would be an interesting litigation. In my Note of October 5, I quoted the following from the Lanham Act, 15 U.S.C. §1125 (d)(1)(B)(ii):

    Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.

    Whether the Respondent would prevail in an ACPA action depends on the record in that hypothetical case.

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