geographic names as fair game

[DaddyHalbucks]

What are the most important UDRPs/ law cases for establishing that geographic places, such as city or country names, are fair game for domainers to register and own? I know about these cases==>

DorsetPolice.com

Glenwood Springs Chamber Resort Assoc. Inc. v. College Transportation Inc.

City of Salinas v Brian Baughn

City of Dearborn v. Dan Mekled

Brisbane City Council v. Warren Bolton Consulting Pty Ltd

NewZealand.com

..are there any others? Would anyone care to rank their importance?

 

[GeorgeK]

Canadian.biz (overturned by a Canadian court, in favour of the domain holder)

 

[Anthony Ng]

Originally posted by GeorgeK
Canadian.biz (overturned by a Canadian court, in favour of the domain holder)

Well ... canadian.biz is actually a bit different from e.g. newzealand.com or bacelona.com in that the rightful registrant was fighting against a greedy corporation (Molson Canada, they thought they own the word "canadian", stupid!) instead of some @#$%^&* bureaucrats acting in the name of people/government.

 

[jberryhill]

I would take dorsetpolice.com off the list, since there were more issues in the mix than strictly the geographic issue, and would include:

Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, No. 02-1396 (4th Cir. June 2, 2003).
http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf

"When we apply the Lanham Act, not Spanish law, in determining
whether Bcom, Inc.’s registration and use of <barcelona.com> is
unlawful, the ineluctable conclusion follows that Bcom, Inc.’s registration and use of the name "Barcelona" is not unlawful. Under the Lanham Act, and apparently even under Spanish law, the City Council could not obtain a trademark interest in a purely descriptive geographical designation that refers only to the City of Barcelona. See 15 U.S.C. § 1052(e)(2); see also Spanish Trademark Law of 1988, Art. 11(1)(c) (forbidding registration of marks consisting exclusively of "geographical origin"). Under United States trademark law, a geographic designation can obtain trademark protection if that designation acquires secondary meaning. See, e.g., Resorts of Pinehurst, Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417, 421 (4th Cir. 1998)."

Without checking, I think the earliest UDRP case addressing the issue was stmoritz.com:
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0617.html

Interestingly, the stmoritz.com dispute was decided in the Respondent's favor, even though no response was filed.

"Importance" is a function of which one applies most accurately to your circumstances. For example, the main thread of the Barcelona appellate decision was that the lower court had erred by applying what was asserted to be Spanish law, even though it was a US court. If you have a dispute between two entities outside of the US, then the Barcelona decision is not nearly as "important" as it would be if you had a dispute between a non-US party and a US party. But, theoretically at least, court decisions should carry greater authoritative weight in a UDRP proceeding than other UDRP decisions.

Other geographic UDRP decisions include:

kapalua.com , .net
http://www.arb-forum.com/domains/decisions/95544.htm

ahmanson.org
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0858.html

puertorico.com
http://arbiter.wipo.int/domains/decisions/html/2002/d2002-1129.html

capeharbor.com, capeharbour.com
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1435.html

newportnews.com
http://www.disputes.org/eresolution/decisions/0238.htm
(this one is sort of like the canadian.biz decision, in that the complainant was not the municipality, but a business having an independent trademark)

 

[DaddyHalbucks]

John,

Thanks!

 

[GiantDomains]

great info there .... thanks DCC, and JB.

 

[pljones]

A handy, but slightly outdated list is available here:
http://www.udrplaw.net/CityNamesresources.htm

 

[jberryhill]

...and as far as "fair game" goes, that doesn't mean that any geographic name is fair to use for any purpose. For example, you aren't going to use terms such as "Bellagio" - a town in Italy - for a casino, "Philadelphia" for cream cheese, "Rockport" for shoes, etc.

 

[HOWARD]

not to mention Miami for Vice or Philadelphia for Freedom or Boston for Celtics

 

[hhunterjr]

If you check http://www.uspto.gov, most of the big city names have federal TMs on them.

So does this thread mean Federal TM holders can enforce their federal TM rights against domainers in that particular industry in which they've specified in the goods/services

OR

can these Federal TM holders not enforce their enforce their TM rights against domainers in that particular industry that the TM is registered for?

 

[jberryhill]

Well, that's the reason for my comment about "fair game". A situation where someone is using a geographic term *as* a geographic term is relatively safe from trademark concerns.

But, no, if you decide to start a rock group and call it "Boston", then you are going to have an obvious problem by a legitimate rights owner in the term "Boston" as the name of a musical group.

What you tend *not* to see as federally registered marks are the names of cities registered as trademarks by the city government for municipal services. Quite a few cities have various emblems and seals registered as marks, but the names of the cities themselves are almost invariably disclaimed from distinctiveness apart from the mark as a whole.

 

[Ari Goldberger]

Here are a few other geographic decisions that ruled in favor of the domain owner:

Madrid.com
http://arbiter.wipo.int/domains/decisions/html/2002/d2002-1110.html

Rouen.com
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0348.html

Bamberg.com
http://www.disputes.org/eresolution/decisions/0267.htm


Pocatello.com
http://www.arb-forum.com/domains/decisions/103186.htm