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Got a note from Ari Goldberger today. The Mexico.com UDRP decision was handed down and he won. Here is a a note I posted on DNJournal about it:
The Mexico Tourism Board has lost its attempt to take Mexico.com away from a client of well-known domain attorney Ari Goldberger. In a UDRP decision handed down August 9, the panel ruled that the Tourism Board (majority owned by the government of Mexico) was engaged in a reverse hijacking attempt. This is the third time Goldberger has successfully defended attempts to take country domains away from his clients (others were NewZealand.com and PuertoRico.com).
Here is a portion of the full decision:
D. Registered and Used in Bad Faith
Even assuming that the word MEXICO was being used as a trademark by Complainantââ¬â¢s predecessor, the Tourism Ministry of Mexico, it is inconceivable to the Panel that Respondent selected the domain name <mexico.com> because of any trademark sense of the word MEXICO, rather than because of its sense as the name of a country. That precludes a finding of bad faith registration. Furthermore, there is no indication that Respondent has used the disputed domain name in a manner related to its trademark sense rather than its geographic sense. Even if Respondent did offer it for sale to Complainant as alleged in the Complaint (five years after registration), the context of that offer makes clear that the value of the domain name derived from its geographic rather than its trademark sense.
Accordingly the Panel is not satisfied that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the registration to Complainant or to a competitor of Complainant; to prevent Complainant from reflecting a mark in a corresponding domain name nor primarily for the purpose of disrupting the business of a competitor.
Nor is the Panel satisfied that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainantââ¬â¢s mark as to the source, sponsorship, affiliation or endorsement of Respondentââ¬â¢s web site or location or of a product or service on its web site or location. In this regard, Complainant has not persuaded the Panel that Internet users, typing the word MEXICO into their browsers, expect to find the goods or services of Complainant, as distinct from goods, services or information about the country Mexico.
Nor is the Panel satisfied that there are any other circumstances evidencing bad faith registration or use on the part of Respondent.
Complainant has failed to establish this element of its case.
E. Reverse Domain Name Hijacking
The Complaint having failed, the Panel has regard to the Rules, paragraph 15(e):
ââ¬ÅIf after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.ââ¬Â
Reverse Domain Name Hijacking is defined in the Rules, paragraph 1 as ââ¬Åusing the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.ââ¬Â To prevail on such a claim, a respondent must show either that the complainant knew of the respondentââ¬â¢s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000?0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.
Here there are two grounds for a finding of Reverse Domain Name Hijacking. First, the Panel considers that Complainantââ¬â¢s submission in 2001 to the USPTO constitutes an acknowledgement both of Respondentââ¬â¢s legitimate interest in the disputed domain name and that the disputed domain name was not registered and is not being used in bad faith.
Second, by majority, with Mr. Moreno-Torres dissenting, the Panel finds that Complainant acted in bad faith by relying on a mark borrowed for the purpose of improving its position in these proceedings.
Accordingly the Panel finds this to be a case of Reverse Domain Name Hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.
The Mexico Tourism Board has lost its attempt to take Mexico.com away from a client of well-known domain attorney Ari Goldberger. In a UDRP decision handed down August 9, the panel ruled that the Tourism Board (majority owned by the government of Mexico) was engaged in a reverse hijacking attempt. This is the third time Goldberger has successfully defended attempts to take country domains away from his clients (others were NewZealand.com and PuertoRico.com).
Here is a portion of the full decision:
D. Registered and Used in Bad Faith
Even assuming that the word MEXICO was being used as a trademark by Complainantââ¬â¢s predecessor, the Tourism Ministry of Mexico, it is inconceivable to the Panel that Respondent selected the domain name <mexico.com> because of any trademark sense of the word MEXICO, rather than because of its sense as the name of a country. That precludes a finding of bad faith registration. Furthermore, there is no indication that Respondent has used the disputed domain name in a manner related to its trademark sense rather than its geographic sense. Even if Respondent did offer it for sale to Complainant as alleged in the Complaint (five years after registration), the context of that offer makes clear that the value of the domain name derived from its geographic rather than its trademark sense.
Accordingly the Panel is not satisfied that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the registration to Complainant or to a competitor of Complainant; to prevent Complainant from reflecting a mark in a corresponding domain name nor primarily for the purpose of disrupting the business of a competitor.
Nor is the Panel satisfied that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainantââ¬â¢s mark as to the source, sponsorship, affiliation or endorsement of Respondentââ¬â¢s web site or location or of a product or service on its web site or location. In this regard, Complainant has not persuaded the Panel that Internet users, typing the word MEXICO into their browsers, expect to find the goods or services of Complainant, as distinct from goods, services or information about the country Mexico.
Nor is the Panel satisfied that there are any other circumstances evidencing bad faith registration or use on the part of Respondent.
Complainant has failed to establish this element of its case.
E. Reverse Domain Name Hijacking
The Complaint having failed, the Panel has regard to the Rules, paragraph 15(e):
ââ¬ÅIf after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.ââ¬Â
Reverse Domain Name Hijacking is defined in the Rules, paragraph 1 as ââ¬Åusing the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.ââ¬Â To prevail on such a claim, a respondent must show either that the complainant knew of the respondentââ¬â¢s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith: Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224 and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 or that the Complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interests: Smart Design LLC v. Hughes, WIPO Case No. D2000?0993; or that the complainant knew it had no rights in the trademark or service mark upon which it relied and nevertheless brought the Complaint in bad faith: Dan Zuckerman v. Vincent Peeris, WIPO Case No. DBIZ2002-00245; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organisations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc., WIPO Case No. D2002-0754.
Here there are two grounds for a finding of Reverse Domain Name Hijacking. First, the Panel considers that Complainantââ¬â¢s submission in 2001 to the USPTO constitutes an acknowledgement both of Respondentââ¬â¢s legitimate interest in the disputed domain name and that the disputed domain name was not registered and is not being used in bad faith.
Second, by majority, with Mr. Moreno-Torres dissenting, the Panel finds that Complainant acted in bad faith by relying on a mark borrowed for the purpose of improving its position in these proceedings.
Accordingly the Panel finds this to be a case of Reverse Domain Name Hijacking.
7. Decision
For all the foregoing reasons, the Complaint is denied and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.
