Regions, Cities, Municipalities and Towns may wish to control the use of their names on the Internet but there is an insuperable barrier, namely that naked geographical indicators are not covered under the UDRP and protection under trademark law for geographic terms is uncertain. Nevertheless, there have been a number of recent challenges by public authorities to domains with geographic names, most prominently the “Paris” cases, Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December 3, 2009) <wifiparis.com>) and Ville de Paris v. Paris.TV LLC, DTV2009-0010 (WIPO February 17, 2010) (<paris.tv>), both decided in favor of the Respondents. The Panel in the <wifiparis.com> case rejected the Complainant’s contention that its right rested on its logo plus words – “PARVI PARIS VILLE NUMERIQUE, with a distinctive ellipse device, and the word PARVI appearing in larger font than the other words” – because the trademark did not “confer any rights in the word ‘Paris’ alone.” Offense to public authorities that a business enterprise enjoys commercial gain from registering what it views as its geographic property is not a proper basis for denying the respondent a legitimate interest in the domain name.

The most recent public authority to suffer disappointment is Commune de Tignes v. Laurence et Sandrine Raymond, D2010-0076 (WIPO February 23, 2010). However, unlike the Paris disputes the Panel in Commune de Tignes denied the complaint because the Respondent demonstrated that its use of the domain name brought it within the “legitimate noncommercial or fair use” provision of the Policy, paragraph 4(c)(iii). Commune de Tignes (like Ville de Paris) also owns a figurative trademark, in its case incorporating the term “Tignes.” However, instead of addressing geographical exclusion, the Panel accepted the Respondent’s proof that it had a right or legitimate interest in the disputed domain name. This is unfortunate because it misleadingly implies that but for the noncommercial content of the website the Complainant would have succeeded, although this would have violated another trademark principle that generic terms incorporated in figurative designs are not in isolation from the design registrable.

The mere fact that the complainant exists at a geographical location is not proof of a trademark right. Thus, the Complainant in Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, D2001-0348 (WIPO June 18, 2001) could not protect ROUEN in <rouen.com> and <rouen.net> because, although it had a trademark that included the word “Rouen” it had no mark in “Rouen” standing alone. “Unless the evidence demonstrates that the name of a geographical location is in fact performing the function of a trademark, such a name should not be considered a trademark for the purposes of the Uniform Policy,” Brisbane City Council v. Warren Bolton Consulting Pty Ltd., D2001-0047 (WIPO May 7, 2001). The Panel held that the

important issue in a case such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark — that is to say whether the unregistered mark is distinguishing the goods or services of the Complainant in trade and the goods or services of any other person in trade.

St. Moritz tried twice to wrest the domain name from the Respondent and the second time found itself on the wrong end of a finding of reverse domain name hijacking: Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2004-0158 (WIPO June 13, 2004) and Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd., D2000-0617 (WIPO August 17, 2000).

The obverse of geographic entities demanding control is commercial enterprises that have adopted geographic symbols to distinguish themselves in the marketplace. Under Section 1052(e) of the Lanham Act and similar statutory provisions in other jurisdictions, geographic indicators are excluded from registration unless allowable under 1052(f). In this respect, business enterprises have the same problem as public administrations, namely that the disputed domain name is being used in a non-trademark sense, Superga Trademark, S.A. v. Gilberto, Publinord S.r.l., D2008-1890 (WIPO February 24, 2009) (<superga.com>, “a hill overlooking the city of Turin (Torino), or the City or Municipality cannot register, cannot claim a monopoly over the naked geographic term. Even if a geographic trademark attains registration on the Principal Register it is treated as a generic term and “does not … become absolutely protectable,” Spherion Corp. v. Solomon, FA 112454 (Nat. Arb. Forum July 22, 2002) (<saratoga.biz>).

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