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Trademark Consisting of or Incorporating a Geographic Indicator

Trademark composed on geographic indicator is on the lower end of protectability where the domain name is used in its semantic sense. The dissent in Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) agrees that geographic indicators do not qualify as a trademark right, but argues that “the name ‘Loma Linda’ should constitute an exception to the general rule.” Why this should be is not clearly stated, except that the Complainant “literally put Loma Linda ‘on the map.” So too did the Complainant in Atlantic Station, LLC v. Dargan Burns III, FA0903001250592 (Nat. Arb. Forum April 26, 2009) put Atlantic Station on the map, but that is no compelling reason to support an exception to the general rule.

There are many examples of geographic indicators as trademarks, but holders are not entitled to capture domain names corresponding to them if the domain name is being used in its literal sense rather than for its trademark value or the respondent has made demonstrable preparations to use the domain name in a non-infringing way. For example, Neusiedler Aktiengesellschaft v. Kulkarni, D2000-1769 (WIPO February 5, 2001) (<neusiedler.com>), a lake in Burgenland (eastern Austria) and northwestern Hungary,); or Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009) (<superga>), a well-known place name, “a hill overlooking the city of Turin (Torino) and the site of an 18th Century basilica and royal tombs.” Both Neusiedler Aktiengesellschaft and Superga Trademark are on the equivalent of the USPTO Principal Register. Neither controls or has a monopoly on the geographic place name.

A combination of a primarily geographically descriptive term and a generic or merely descriptive term for the type of services provided also does not make the grade. National Association of Competitive Soccer Clubs v. Bruce Binler, D2009-0957 (WIPO September 7, 2009). Complainant’s US CLUB SOCCER is registered on the Supplemental Register and has no superior right to shut down or take control of <usclubsoccer.net>.

Even a geographic indicator that has metamorphosed into a famous trademark with an International reputation in the automobile industry can be vulnerable if, as in Loma Linda there was reality to the services the respondent was either presently or demonstrably preparing to offer. “Hitachi” for example is a geographical region of Japan,. The Respondent in Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Hilaire Shioura, DWS2004-0002 (WIPO July 23, 2004) (<hitachi.ws>) claimed he registered the domain name to promote the region but offered no evidence of “demonstrable preparations.” Kabushiki Kaisha prevails not because it is a famous mark but because the Respondent fails to prove it is in the business of delivering regional information. The trademark holder prevails where the domain name is either passively held or actively directs Internet users to web sites whose content demonstrates lack of rights or legitimate interests and contravenes one of the elements of paragraph 4(b) of the Policy.

If there is to be an exception to the general rule as the dissent insists in Loma Linda it cannot be based on a naked indicator; it would have to be a non-descriptive string in which the geographic indicator is incorporated. Such insistence is out of harmony both with trademark law and UDRP. The dissent in Loma Linda was the sole Panel in an earlier UDRP case, Loma Linda University Adventist Health Services Center, et al. v. JM XTrade, Inc., Joseph Martinez, D2009-0036 (WIPO December 18, 2009), in which he awarded the domain name to the Complainant, and for which he cites no case law authority for the proposition that a geographic place name is protected. Unfortunately, as UDRP is presently constituted the majority in a second case cannot correct an error of law made in a first.

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