A TM alone does not give exclusive rights to a domain.
A three member panel at the WIPO, has found the Complainant of a UDRP against the domain, Milano.com, to be guilty of Reverse Domain Name Hijacking.
Not only is Milano.com a geographical domain referring to Italy’s second largest city, it’s also not acquired secondary meaning, despite the Complainant’s Mexican trademark.
“the Panel concludes that the Respondent is using the Disputed Domain Name in a descriptive manner, rather than in order to target the Complainant’s MILANO mark, which can confer rights and legitimate interests on the Respondent in the Disputed Domain Name.”
In this case, Grupo Milano, S.A. de C.V. of Cuauhtémoc, Mexico City, Mexico made no assertions and provided no evidence to establish that its MILANO mark was well-known outside of Mexico.
In their defense, the Respondent stated the following:
(a) The Complainant failed to establish that it has exclusive rights in the generic word “Milano” (i.e., Italian for Milan). There are at least 2,665 trade marks that have been filed or registered worldwide, which incorporate the word “Milano”. Even in Mexico, where the Complainant is based, there are 174 trade marks that have been filed and registered which include the word “Milano”. The Complainant’s MILANO mark has not acquired sufficient secondary meaning so as to grant the Complainant exclusive rights to use the generic word “Milano”.
(b) Depending on the Internet search engine used and the IP address of the location where the search is being conducted, different results will appear when a search is conducted on the word “Milano”. In San Francisco and Hong Kong, the top search results do not relate to the Complainant.
(c) Pay-per-click advertising websites can amount to a bona fide offering of goods or services, so long as the respondent is not exploiting the complainant’s trade mark. In this case, the Disputed Domain Name is generic enough that it would not confuse Internet users into believing it is associated with the Complainant.
(d) The Respondent registered the Disputed Domain Name on May 22, 1997, and had been using it in relation to pay-per-click advertisements for over 18 years before these UDRP proceedings arose.
(e) The adverts displayed on the parking page to which the Disputed Domain Name resolves are automatically generated from the results of the users browsing history based on cookie technology.
(f) “Milano” means “Milan” in English, and refers to the second most populous city in Italy. The Respondent registered the Disputed Domain Name because of its geographic meaning, which is the same reason it registered <mexico-city.net> and other geographic domain names. The Complainant could not identify any domain names registered by the Respondent which infringed any third party trade mark rights.
(g) The Respondent was contacted by the Complainant about the possibility of selling the Disputed Domain Name, and therefore there is no bad faith on the part of the Respondent. At the end of 2013, the Respondent’s account with its registrar at the time (Mydomain) was hacked and several domain names (including the Disputed Domain Name) were transferred to other registrars and registrants. The Disputed Domain Name was transferred to a new registrant, and the registrant’s identity was shielded through the use of a proxy service provider. In February 2014, the Respondent filed a lawsuit in San Francisco to regain the domain names. Therefore, the Respondent was not technically the registrant of the Disputed Domain Name in November 2014 when the Complainant (via Sedo) attempted to purchase the Disputed Domain Name.
(h) The Respondent requests that a determination of Reverse Domain Name Hijacking be found against the Complainant.
In delivering its decision, the three member panel at the WIPO stated:
The Complainant also knew full well the geographic meaning of the word “Milano”, and even provided evidence that showed that the Respondent only appears to register geographic and generic domain names. In the light of the above, the Panel considers that the Complainant filed the Complaint with the primary intent of obtaining the transfer of the Disputed Domain Name in bad faith.
The Panel, therefore, finds that the Complaint was made in bad faith as an attempt at Reverse Domain Name Hijacking, constituting an abuse of this administrative proceeding.
For the full text of the decision for the domain Milano.com, click here.
One fascinating aspect of this RDNH finding is that the respondent was self-represented.