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Twin Cases: Same Complainant, Different Panels and Results

There is a good amount of chatter on the Internet about the aggressiveness of the City of Paris claiming domain names that include “parvi” and “Paris.” It was successful in Ville de Paris v. Jeff Walter, D2009-1278 (WIPO November 19, 2009) (<>) and unsuccessful in Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December 3, 2009) <>). The Respondent in the first case has filed an ACPA action in the United States District Court for the Southern District of Texas, Houston Division, Civil Action No. 09-3939 challenging the UDRP decision. Internet chatter excoriates the panelist in the first case and praises the second.

In the “parvi” case the record indicates that the Complainant has two French trademark registrations, one for PARVI and the other for PARVI PARIS VILLE NUMERIQUE. In the “Paris” case, the Complainant has a figurative trademark containing the word PARIS. The cases raise different issues. It is by no means clear that the decision in the “parvi” case is off-base. A decision from the District Court is therefore eagerly awaited to see how this plays out under the statutory scheme. The issue in the “Paris” case is straightforward as is the decision.

I commented on the “parvi” case in my Note of December 4th. The Panel, I said, “enthusiastically” endorsed a recent construction of the Policy that burdens the respondent with a continuing obligation under the representation and warranty provision of the domain name registration agreement that “it will not now or in the future use the domain name in violation of any laws or regulations”. Paragraph 2 of the Policy reads in relevant part that “It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” Under this recent construction a Panel is authorized to retroactively disregard good faith registration under certain circumstances – “There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name.” Not being confined is a polite way of saying that even if the domain name was registered in good faith a respondent’s later decision “to change the intended use” to use the domain name in a way that could cause confusion transforms the registration to bad faith. What is unusual is that the principle is applied to the original registrant.

Under the ACPA, proof of bad faith use alone is a basis for finding abusive registration – “registers, traffics in, or uses a domain name,” 15 U.S.C. 1125(d)(1)(A) (ii). In another recent ACPA case by a respondent, in this case unsuccessfully challenging a UDRP decision the Court held in Lahoti v. Vericheck, Inc., CV-06-01132 (9th Cir. November 16, 2009) that

[a] different case might be presented if Lahoti had a genuine business marketing service for which the Vericheck name was an aid, but there is no credible evidence of that here, nothing but his self-serving affidavit.

The “Paris” case is different. The threshold issue was whether the Complainant owned a trademark in a geographic indicator and the answer was no. “The confusing similarity question can be be difficult where a complainant relies on a figurative mark comprising a logo and a descriptive or geographical expression…. Looking at the respective overall impressions conveyed by the Domain Name and the Paris device mark, the latter conveys nothing about the concept of wireless internet access.” Ergo, “the Paris device mark is too dissimilar to the Domain Name for the ‘confusing similarity’ test to be met.”

Gerald M. Levine, <>

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