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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Puerto Rico Tourism Company v. Virtual Countries, Inc.

Case No. D2003-1129

 

1. The Parties

The Complainant is the Puerto Rico Tourism Company, a public corporation of the Commonwealth of Puerto Rico whose office is in San Juan, Puerto Rico. The Complainant is represented in this proceeding by Eugenio J. Torres of Torres Oyola Law Offices, P.S.C., San Juan, Puerto Rico.

The Respondent is Virtual Countries, Inc. a Washington corporation whose office is in Seattle, Washington, the United States of America. The Respondent is represented in this proceeding by Ari Goldberger of ESQwire.com, Cherry Hill, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <puertorico.com>, and is registered with Network Solutions, Inc. (NSI) of Dulles, Virginia, the United States of America.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2002. On December 13, 2002, the Center transmitted by email to NSI a request for registrar verification in connection with the disputed domain name. On December 17, 2002, NSI transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and this proceeding began on December 19, 2002. Per the Rules, paragraph 5(a), the due date for the Response was set as January 2, 2003, but the Respondent on January 2, 2003, requested a 30 day extension owing to the intervening holiday season. On January 3, 2003, the Complainant agreed to the Respondent’s request, although for a 20 day extension, and on January 7, 2003, the Center officially gave the Respondent a 20 day extension for submitting its Response, i.e., until January 28, 2003. The Response was filed with the Center on January 28, 2003.

The Center appointed Messrs. Marino Porzio, Andrew F. Christie and Dennis A. Foster as panelists on February 27, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On March 13, 2003, the Complainant requested permission to file and at the same time filed a supplemental filing with the Center. The Panel agreed to this on March 14, 2003. The Respondent made a similar request and filed a supplemental filing to its Response with the Center on March 24, 2003.

The Complainant made a further request to make a second supplemental filing on March 27, 2003, but, in accordance with the Rules, paragraph 12, the Panel on March 28, 2003, decided both parties had had ample opportunity to present their cases and so the Complainant’s request was denied. The Center communicated this Panel procedural decision to the parties on the same day.

This Decision originally was due on March 13, 2003, but the Panel requested an extension until March 27, 2003, subsequently until April 2, 2003, and then until April 9, 2003.

 

4. Factual Background

The Respondent registered the disputed domain name, <puertorico.com>, on May 13, 1995. The Respondent operates a number of websites featuring what it calls "virtual countries". The Respondent furnishes a variety of information, including business, travel, news and cultural information, about the countries on its websites.

The Complainant is a state corporation of the Commonwealth of Puerto Rico that presumably furnishes tourism information about Puerto to the public. The Complainant and the Respondent conducted protracted negotiations during mid-2002 in which the Respondent attempted to sell, and the Complainant attempted to purchase, the disputed domain. The parties hotly dispute which side made the first démarche to sell or buy the disputed domain name. In any case, the parties were unable to complete their negotiations and sale in 2002.

 

5. The Parties’ Summarized Contentions

Complainant

- The Complainant is the owner of a number of registered trademarks that contain the words "Puerto Rico".

- As concluded in the <barcelona.com> case (Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505, August 4, 2000), it is necessary to consider the fact that Complainant has proven to be the owner of a large number of trademarks having as their principal element the words "Puerto Rico", many of which, if subjected to the same analysis, would certainly lead to the same result. Based on the precedent set in the <barcelona.com> case, it can be concluded that although the trademark is composed of several elements, the trademark’s distinctive character is provided by the expression "Puerto Rico".

- Respondent’s right, if any, to the <puertorico.com> domain name is subject to the rights of parties having better rights or more legitimate interests as in this case.

- It is obvious that the only purpose of the Respondent’s business plan is to exploit commercially information about Puerto Rico.

- It is evident that with the expansion of the Internet, anybody requiring information about Puerto Rico will generally start the search by attempting to locate it by searching the expression "Puerto Rico" in any search engine or browser. Hence, Respondent is taking advantage of the normal confusion of the public which, by using a "Puerto Rico route", would normally expect to reach some official body or representative of the Commonwealth of Puerto Rico itself.

- A review of Respondent’s website clearly shows that it includes much information that bears no relevance to Puerto Rico, thus tarnishing Puerto Rico’s image.

- There is clear evidence that Respondent’s conduct has been designed to keep Complainant from registering <puertorico.com> as a domain name. In addition, there is clear evidence of a pattern of this conduct given the registration of no less than 31 country-specific domain names by Respondent and the registration of dot-com country service marks with the United States Patent and Trademark Office in an obvious attempt to prevent the owners of the marks from reflecting the marks in a corresponding domain name.

- It is evident the Respondent planned to obtain eventually some kind of payment from Complainant quite in excess of "out-of-pocket costs". Respondent’s actions since the inception of its company should put in doubt the existence of its good faith at the time Respondent obtained the registration of the disputed domain name <puertorico.com>.

- The Complainant has a legitimate interest in the expression "Puerto Rico", as can easily be evidenced by its several trademark registrations, besides the obvious reasons, which stem from Complainant’s statutory mission to promote Puerto Rico as a tourism destination through its several trademark registrations.

- While it is true that geographical names, standing alone, can not be registered as trademarks, when one word that is part of a trademark stands out, that word becomes distinctive. The name "Puerto Rico" is the predominant part of the trademarks that the Complainant owns.

- In the "newzealand.biz" case (Her Majesty the Queen, in right of her Government in New Zealand v. iSMER, WIPO Case No. DBIZ2002-0270, October 2, 2002), there was a dispute as to who initiated the conversations to acquire the name, as a sign of bad faith. In this case, there is no dispute the Respondent came to the Complainant and several other locally based businesses with an offer to sell the disputed domain name for US$ three million.

- Unlike the Respondent, the Complainant does have a right and legitimate interest in using its country name, and moreover has rights to trademarks where "Puerto Rico" is the distinctive part.

- Neither the government of Puerto Rico nor any of its agencies individually have ever made any public policy remarks regarding domain names. The United States position regarding this subject can not be imputed to Puerto Rico. Complainant claims in its pleading that Puerto Rico is recognized as a nation by the United Nations.

Respondent

- The law is clear that geographic names like "Puerto Rico" do not provide enforceable rights under the UDRP.

- Moreover, Respondent’s use of the disputed domain name for a Puerto Rico information website provides incontrovertible evidence of its legitimate interest and absence of bad faith—conclusions which were reached in the recent <newzealand.com> decision, which involved this same Respondent on a virtually identical set of facts (Her Majesty the Queen in Right of Her Government in New Zealand et al. v. Virtual Countries, Inc., WIPO Case No. D2002-0754, November 27, 2002).

- The Complainant is obviously aware that its case is without merit because the two U.S. trademark registrations identified in the Complaint expressly state that "no claim is made to the exclusive right to use ‘Puerto Rico’." (Response Exhibit 2 and Complaint paragraph 11A.)

- The Complainant has failed to disclose material information that would further expose its Complaint as a sham. In August of last year, the Complainant made a $2 million written offer to acquire Respondent’s disputed <puertorico.com> domain name and website business, an offer which was accepted by Respondent but subsequently reneged on by Complainant’s Board of Directors. Not only was this fact omitted, but it is blatantly mischaracterized in the Complaint as an offer from Respondent.

- Complainant has also withheld material information concerning the nature of its trademarks registered with the Puerto Rico Department of State, failing to disclose that each trademark certificate contains an express disclaimer that protection was not being claimed beyond the words as they appear in the mark.

- The disputed domain name website provides users with information and services related to Puerto Rico.

- Complainant does not have a trademark for Puerto Rico standing alone. It merely has registrations for trademark phrases that incorporate the non-distinctive term Puerto Rico in a descriptive sense.

- Although not indicated in the Complaint, a review of Complainant’s trademark registrations reveals that all of them contain the following express disclaimer in Spanish: "No protection is requested for the words except as they appear in the facsimile".

- On July 1, 2002, the Respondent attended a meeting in San Juan, Puerto Rico at the invitation of the Complainant’s then CEO and President.

- In mid-August, 2002, the Respondent provided the Complainant with a draft of a purchase and sale agreement.

- There are 32 active and pending third party U.S. trademark registrations which incorporate the words Puerto Rico.

- Complainant does not have a trademark for Puerto Rico standing alone. Nor does it have, or even allege that it has, a common law trademark right to this country name. The reason is clear. A geographic name, by itself, cannot function as a trademark.

- In lieu of a trademark for Puerto Rico standing alone, Complainant suggests that its trademark phrases, which merely incorporate the term Puerto Rico in a descriptive sense, provide it with enforceable trademark rights. They do not. A trademark phrase containing a geographic term provides no enforceable trademark rights vis-à-vis the geographic term contained therein.

- In the Chambre de Commerce de Rouen (Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348, June 18, 2001), the Complainant initiated a proceeding against the registrant of <rouen.com> and <rouen.net>, claiming a trademark right to "Rouen" based on its registered trademark "C.C.1 Rouen E.S.C. Rouen l’Esprit de Conquete". The 3 member panel denied the complaint, holding that the mark could not be "dismantled in the way necessary to find identicality or confusing similarity with <rouen.com>."

- Similarly, in the "Brisbane City Council" case (Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047, May 7, 2001), the Panel held that the Complainant Brisbane City Council did not have an enforceable trademark for "Brisbane City" by virtue of its registered trademark for "Brisbane City Works" because the words "Brisbane City" themselves are not distinctive.

- Complainant attempts to draw an analogy to the <barcelona.com> case decision, which found that the complainant had trademark rights to the word "Barcelona" in connection with a mark that appeared to have wording in addition to "Barcelona." However, the extra wording there was not a part of the trademark, but was simply the complainant’s name, which appeared below the word "Barcelona" in the mark, simply identifying it as the registrant. Unlike the <barcelona.com> case, here the geographic term is an integral part of a descriptive phrase.

- "Puerto Rico Does It Better" is an indivisible descriptive phrase which cannot be dismantled. The same applies to Complainant’s other registered trademark phrases. Take "Puerto Rico" out of those phrases, and each is rendered meaningless.

- Unlike the trademarks in <barcelona.com>, each of Complainant’s registered marks contains an express disclaimer, which states that protection is not afforded to the wording contained in the trademark, except as it appears in the mark.

- The Complainant has expressly admitted in two trademark registrations filed with the U.S. Patent and Trademark Office specifically that it "makes no claim to the exclusive right to use Puerto Rico."

- Complainant refers to the recent WIPO member states’ decision that the UDRP should be extended to provide protection to country names. However, that decision has no relevance or application here. The UDRP has not yet been changed, and it does not apply to geographic terms or country names in its present form.

- The Respondent’s business model has already been recognized as establishing Respondent’s legitimate interest in the case <newzealand.com>.

- The Policy does not require a respondent to prove that it has a right or legitimate interest better than a complainant’s, just that it has such right or legitimate interest. This is clearly established.

- Complainant’s offer to purchase the disputed domain name from Respondent for US$2 million in and of itself constitutes an express recognition of Respondent’s legitimate interest in the disputed domain name.

- The disclaimers in Complainant’s U.S. and Puerto Rican marks constituted express permission for Respondent to register the disputed domain name in good faith. The Complainant’s former U.S. registered trademarks clearly stated that "no claim is made to the exclusive right to use ’Puerto Rico’." Complainant was essentially telling the world that it was ok to use "Puerto Rico" in any way other than in the exact form of the registered marks.

- It is the provision of information about the geographic area Puerto Rico that establishes the Respondent’s legitimate interest in the disputed domain name.

- It was the commercial exploitation of the proprietary content and information provided by complainant as a public service, and not simply the fact that information about the city was posted, that influenced the <barcelona.com> panel’s finding of bad faith. Here, unlike in <barcelona.com>, Respondent uses its own proprietary content, or content provided by its own vendors.

- The alleged sales discussions do not establish bad faith registration or use.

- The facts and precedent clearly demonstrate the absence of any validity to the Complaint under each element of the Policy. As was the case in <newzealand.com>, this panel should have "no hesitation in branding this misconceived complaint as an abuse of the Policy, which has put the Respondent to needless expense."

 

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

The Complainant does not contend it has either a registered trademark or a common law use trademark in the words "Puerto Rico". Instead, the Complainant has shown the Panel that it has Puerto Rico Department of State registered trademarks in a number of phrases that include the words "Puerto Rico". These registrations are:

"Puerto Rico ЎLo hace mejor!" (in English: Puerto Rico does it better), registration no. 35,056 dated August 11, 1994, in class 35 for the promotion of tourism in Puerto Rico

"Puerto Rico Tut Es Besser!" (same phrase in German) no. 35,054 dated August 11, 1994, also in class 35

"Puerto Rico Le Fait Mieux!" (same phrase in French), registration no. 35,055 dated August 11, 1994, in class 35 for the promotion of Puerto Rico tourism

"Puerto Rico ЎLo Hace Mejor!" written in Japanese, registration no. 35,063 dated August 11, 1994, in class 35 for tourism

Estado Libre Asociado de Puerto Rico Compañia de Turismo and logo registration no. 32,951 in class 42 for official stationery

"Puerto Rico Compañia de Turismo" and logo registration no. 32,950 dated June 9, 1993, in class 42 for official stationery

"Puerto Rico Compañia de Turismo" and logo, registration no. 32, 949 dated June 9, 1993, for official stationery

N.B.: As the Respondent points out, each of the Complainant’s trademark registrations disclaims any right to the words used except as they are used in the trademark.

(Complaint Annexes 23 to 37)

Relying primarily on the <barcelona.com> decision, the Complainant urges the Panel to find the Complainant has rights in the disputed domain name, <puertorico.com>, deriving from its trademark registrations above, all of which contain the words "Puerto Rico". The Complainant argues that the distinctive word in each of its trademark registrations is Puerto Rico. However, the Panel notes that all the Complainant’s trademarks also have several other words that form either a phrase/jingle or the name of a tourism entity in the Commonwealth of Puerto Rico, viz., Puerto Rico Compania de Turismo.

As does the present Case, the <barcelona.com> case involved a local government entity, the City of Barcelona, which successfully asserted trademark rights in <barcelona.com> and obtained domain name transfer from the respondent. Unlike the Complainant here however, the City of Barcelona was found to have a registered trademark in which "Barcelona" was distinctive.

The Panel notes that, apparently under Spanish law as explained in the <barcelona.com> case, a local entity’s geographic name may be registered and serve as a trademark. And as the Complainant points out, when the Respondent in the <barcelona.com> case sought to overturn the panel’s decision in that case, a United States Federal District Court in the State of Virginia sustained the WIPO panel’s decision in that case (Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 189 F. Supp.2d 387 (E.D.Va. 2002), February 22, 2002).

The United States Federal Court noted that both the Complainant and the Respondent were from Spain and that the WIPO panel correctly used Spanish trademark law to determine how to treat any mark rights in the city name Barcelona in the UDRP <barcelona.com> case. The Court noted in its decision at paragraphs 2, 3 and 4 that: "under Spanish law, when considering a mark that contains two or more words, one must determine which word creates the most dominant impression in the mind of the consumer….’Barcelona’ is clearly the dominant word which characterizes the mark." Moreover, the Federal Court noted that the City of Barcelona had demonstrated that: "…the law of Spain provides that names of Spanish communities, municipalities and provinces cannot be registered without the authorization of the municipal authorities." The Federal Court did not state how it would have found if it had been applying United States trademark law.

Relying on this precedent, the Complainant argues that geographical terms such as the City of Barcelona or Puerto Rico do acquire secondary meaning when they are found in a registered mark such as the Complainant ‘s trademark "Puerto Rico does it better." Complainant argues that Puerto Rico is a key word in the registered trademark and that, having acquired secondary meaning through inclusion in this trademarked jingle, it can then be separated out again and stand as a trademark on its own.

The Respondent counters that geographic place names can not be trademarks under United States law and that this includes Puerto Rico. The Respondent also argues that prior UDRP decisions such as Brisbane City Council, Chambre de Commerce de Rouen and <newzealand.biz> show that, in general, geographic place names by themselves do not have trademark rights under the Policy, nor can they be separated out of phrase or jingle trademarks, where their function is descriptive, and thereby become distinctive marks. In the <barcelona.com> case, as the Respondent points out, the words additional to Barcelona were the complainant’s name, Excelentisimo Ayuntamiento de Barcelona, not a phrase like "does it better."

Both the Complainant and the Respondent cite the Second WIPO Report on the Recognition of Rights and the Use of Names in the Internet Domain Name System of April 12, 2001. However, the Panel believes the Report’s treatment of geographic place names leaves doubt that they can be protected under the Policy (the <newzealand.biz> panel also drew this conclusion). Both parties also cite the recent recommendations of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications to the WIPO General Assembly September-October 2002 as to whether some type of protection should be given to country names. It appears that the international community may take some action to protect country names, but this remains to be seen.

Whatever the merits and role of the <barcelona.com> case and its possible further treatment before the courts, the panel has taken note of the numerous other precedents taken by the WIPO and other panels.

The Panel is more persuaded by the Respondent’s position. First, the Panel agrees with the Respondent that UDRP cases evince a consensus that complainants do not have trade or service mark rights in geographic place names. Also, United States trademark law does not allow trademark registrations for geographic place names such as Puerto Rico (Lanham Act, Section 2 (15 United States Code Section 1052) unless they have acquired secondary meaning. A number of UDRP cases involving, as here, United States parties have noted this, including City of Salinas v. Brian Baughn, NAF Case no. 97076, June 4, 2001, where the City of Salinas claimed that issuing municipal bonds had given it trademark rights in the domain name <salinas.com> ---claim denied; and City of Dearborn v. Dan Mekled d/b/a ID Solutions, NAF Case no. 99602, November 12, 2001, where the City of Dearborn was not allowed to claim trademark rights in the domain name <dearborn.com> because it was geographically descriptive with no showing of acquired secondary meaning while being used by the City of Dearborn to offer its services.

The Complainant, possibly aware that United States federal trademark law does not support its position, contends that the Commonwealth of Puerto Rico is not part of the United States of America, but the Panel takes administrative notice that Puerto Rico is a Territory of the United States of America and subject to its law. (Encyclopedia Americana, 1999 Edition, Vol. 22, p.785; and National Geographic Atlas of the World, 7^th ed.,1999, p. 36.)

In any case, the Complainant nowhere shows that local Puerto Rican law is any different on geographic name marks from United States federal trademark law or the principle generally adopted in UDRP cases on whether a geographic place name can be a trademark. The Complainant’s Puerto Rican trademark registrations such as "Puerto Rico does it better" all disclaim trademark rights in the geographic name Puerto Rico alone, and this was also true for the Complainant’s now canceled but similar United States trademarks such as "Puerto Rico, The Complete Island" and "Puerto Rico, The Shining Star of the Caribbean" (respectively United States federal trademark registration no. 1078096 dated November 22, 1977, and cancelled on April 17, 1984; and no. 1670482 dated December 31, 1991, and cancelled on July 7, 1998---Complaint paragraph 11A and Response Exhibit 2). Apparently, the Complainant never succeeded in securing a trademark registration just for the words "Puerto Rico", whether in the case of local Puerto Rican trademarks or in the instance of its canceled United States federal service marks.

Thus, both UDRP precedent and United States trademark law instruct the Panel that the Complainant does not have trademark rights in a word or phrase to which the disputed domain name, <puertorico.com>, is identical or confusingly similar: the Complainant has used it as a descriptive geographic place name in trademarks comprising jingles and phrases without any showing of acquired secondary meaning for "Puerto Rico". In fact, the Complainant has not shown any use of its trademarks, only that they have been registered. Nor has the Complainant shown that any use it may make of the words Puerto Rico for tourism services is any different from the myriads of other tourism and other service and goods providers in Puerto Rico that use the words Puerto Rico.

The Panel therefore finds the Complainant has not met its burden of proof under Policy paragraph 3(a)(i) to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights.

The Policy provides that the Complainant must prevail under every paragraph of the Policy at 3(a)(i-iii), and therefore the Panel does not need to discuss whether the Respondent has legitimate rights and interests in the disputed domain name, or whether the Respondent registered and is using the disputed domain name in bad faith.

Reverse Domain Name Hijacking

The Respondent has asked the Panel to find that, per the Rules paragraph 15(e), the Complainant has brought this proceeding in bad faith to harass the Respondent and that this is an abuse of the Policy.

The Panel does not find this to be true. The <barcelona.com> case and the WIPO General Assembly of September-October 2002 show that differences exist between countries’ approaches to marks containing geographic names and that there are many countries that believe geographic names should be registered as domain names only by official entities. Also, to the extent it might be of relevance, the <newzealand.com> decision on which the Respondent relies a good deal had not yet been published when the Complainant filed this Complaint.

Viewed in this context, the Panel finds that, though unsuccessful, the Complainant initiated this proceeding in good faith and propounded arguments that deserve serious consideration. The Panel thus rejects the Respondent’s request that the Panel find the Complainant has abused this administrative proceeding.

 

7. Decision

The Panel has found the Complainant does not have trademark or service mark rights in a name to which the disputed domain name, <puertorico.com>, is identical or confusingly similar. Therefore, per the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the disputed domain name remain registered to the Respondent, Virtual Countries, Inc.

 

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Dennis A. Foster
Presiding Panelist

Andrew F. Christie
Panelist

Marino Porzio
Panelist

Date: April 14, 2003