UDRP: "Geographic Names Are Not Subject to Trademark Protection" | DomainInvesting.com
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UDRP: “Geographic Names Are Not Subject to Trademark Protection”

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In the last year, I’ve probably received 5 or 6 emails from people who had concerns that geographic domain names could be risky to own in the event a city or municipal jurisdiction files a complaint or lawsuit, despite a number of cases where the domain owner retained the domain name. Some of these cases include Pocatello.com, MyrtleBeach.com, Barcelona.com, StMoritz.com, and others.

In a UDRP dispute decision that should pacify any concerns about geodomain names, LomaLinda.com was retained by Nat Cohen’s company, StateVentures, LLC , which was represented by Ari Goldberger of ESQwire.com Law Firm. The Complainant was Loma Linda University Medical Center, which claimed to have rights to the Loma Linda mark.

Although there was a dissenting opinion, panelist Richard Page made a statement in his dissent which should be noted by geodomain owners: “the general rule that geographic names are not subject to trademark protection.”

The reason for the dissenting opinion is that Loma Linda was apparently used by the Complainant’s predecessors prior to it being used as a geographic location (city of Loma Linda, California). In the decision though, two of the panelists cited the various uses of Loma Linda by parties other than the Complainant, including the first Loma Linda city directory in 1936, the Loma Linda Food Company in 1937, and the fact that the Justice Court was established in Loma Linda in 1946.

The dissenting panelist disagreed that some of the other usages of “Loma Linda” indicated the University had given up rights to the term, however. In addition, because the domain name is possibly earning PPC revenue from potential competitors of the Complainant, it could be infringing on its rights.

In the end, Nat’s company has retained LomaLinda.com, and it will probably developed when the company has an opportunity to do so. This is a solid win for geodomain owners – and it’s also a very good reason to have a 3-person UDRP panel. Congrats to Ari, who was also responsible for defending other geodomain names in the past like Pocatello.com and StMoritz.com to name just a couple.


About The Author: Elliot Silver is an Internet entrepreneur and publisher of DomainInvesting.com. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


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Comments (11)

    David J Castello

    Congrats to Nat and Ari!

    January 7th, 2010 at 12:38 pm

    Andrew

    Of course, that doesn’t mean you won’t be challenged. Just ask anyone with “Paris” in their domain name.

    January 7th, 2010 at 12:52 pm

    Nat Cohen

    Elliot,

    This case was troubling for a number of reasons. Loma Linda University had tried to buy the domain two years previously, and I told their lawyer at the time that we develop city-domains, so they knew we had a legitimate use for the domain.

    But then recently the University filed a UDRP against the owner of lomalinda.net and lomalinda.org and they won. The sole panelist for that decision was Richard Page.

    So when they filed against StateVentures for LomaLinda.com, we selected a three-person panel and the University requested and got Richard Page again. It was clear that there was already one strike against StateVentures, and it would likely come down to the Presiding panelist.

    Fortunately Ari is an outstanding lawyer and prepared an excellent response that persuaded the majority of the panel not to transfer away our domain.

    For me this case highlights how badly broken the UDRP system is. I understand that it is possible for reasonable people to hold widely different opinions, even among judges. Yet in this case, the majority found that the University had no trademark rights to ‘loma linda’, that StateVentures had a legitimate interest in the domain, and that there was no bad faith. It is almost unheard of for a Complainant to lose on all three counts. But that was the majority finding in this case. Yet Page found that the Complainant had prevailed on all three counts.

    To my mind this is more than a simple difference of opinion. This is one person seeing ‘black’ and the other person seeing ‘white’. The UDRP Policy is meaningless if it is open to such broad interpretations. Every dot-com domain is vulnerable to a UDRP challenge. To have the results be such a crap-shoot is a travesty. ICANN needs better oversight over the UDRP process so there is some clarity about what is allowed and what isn’t.

    Thanks,

    Nat

    January 7th, 2010 at 12:52 pm

    Michael Castello

    Glad this went your way Nat Congratulations. I had a similar situation with PebbleBeach.com back in 1995 that ran for 2 years with their legal department. They sent me all of their multiple trademarks since 1912 and threatened to take it to court. Finally the Director of Golf called me and explained their need of the name for the 2000 US Open. Their legal footing was that Peeble Beach was not a municipality but a corporation which spanned the 17 miles of ocean. What gave them pause was that PalmSprings.com was an active internet business. I could have made the PebbleBeach.com site about Pebble Beach, New York but felt that having a worldwide brand like Pebble Beach using PebbleBeach.com was good for the internet AND PalmSprings.com because it gave all the other geodomains more value.

    We ended up coming to a reasonable solution that for me was exceptional at the time. Looking back I believe I made the right decision. They often comp or upgrade my visits there so it is still paying dividends.

    January 7th, 2010 at 3:36 pm

    Steve M

    Everything considered; and given their importance and value; I recommend discussing w/your IP attorney the possibility of filing for your own trademarks on your city/state/country/area geos.

    Sure, you may have to “settle” for registration on the Supplemental Register as I have with Valleys, but that’s better than nothing, and should provide at least a worthwhile measure of defensive protection against this kind of land grab attempt.

    Doing so also provides the potential of “moving up” to the Principle Register in the future.

    As I am not an attorney, this is of course not legal advice.

    January 7th, 2010 at 9:12 pm

    David J Castello

    Whoa – was not aware of this:
    “But then recently the University filed a UDRP against the owner of lomalinda.net and lomalinda.org and they won. The sole panelist for that decision was Richard Page.”

    I also did not know that you could request a specific panelist???

    January 7th, 2010 at 10:19 pm

    David J Castello

    PS:
    After reading about the LomaLinda.net and LomaLinda.org decisions, I felt a closer review of Mr Richard W Page was warranted. I did a quick search and was immediately met with domainers on forums calling this guy every name in the book.

    From DNForum in 2007: “For some valuable domains ALWAYS go for 3-member panel. The biggest SOB panelist is Richard W. Page. He is an example of why one should go for 3-member panel. Because to get this panelist = you lost the domain. Wouldn’t surprise me one day some “accident” happens to this SOB when he strips of valuable generic domain someone who does not like to get f**ked…”

    After digging a little deeper I believe this guy represents a genuine problem for domainers. He was the sole dissenting panelist on the SuperSupplements.com decision (Respondent won), he handed BudgetSaver.com to Budget$aver, Crew.com to J Crew International, IHateGunBroker.com to Gun Broker…and those are just the first few I checked.

    January 7th, 2010 at 10:57 pm

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