Out-Law News 2 min. read
27 Feb 2001, 12:00 am
The decision comes six months after the transfer of Barcelona.com was controversially ordered by the same arbitration body.
Paragon International Projects Limited registered the domain name and several other port names, saying it intended to launch a search engine for the shipping industry, providing information on different ports. The Helsinki port authority disputed its ownership of the name, taking its case before Henry Olsson, a sole panellist of the World Intellectual Property Organisation’s (WIPO) Arbitration and Mediation Centre.
The port authority argued that a unique geographical name should be regarded as belonging to the owner of the geographical area in question. Paragon argued that this view was incorrect, pointing out that helsinki.com is owned by a party other than the City of Helsinki. The company described “Port of Helsinki” as a phrase or sign that refers to the port services in a port and not to the administrative body that handles a specific port.
Panellist Olsson said he disagreed,
"with the contention that a unique geographical name should be considered as belonging to the legal authority of the geographical area in question… Protection for geographical names can be provided through other means, such as the special protection for geographical indications and not per se under trademark law."
He also noted a disclaimer on the site which clearly stated that it was “not the official port authority site.”
The decision takes a different approach from a much-criticised case over the domain name Barcelona.com. In that case, in August 2000, a WIPO panellist decided that the domain name Barcelona.com should be transferred from its owner, Barcelona Inc., a US company, to the City Government of Barcelona. He suggested that it is reasonable to assume that anyone using the address Barcelona.com "would normally expect to reach some official body or representative of the city of Barcelona itself."
The case of Barcelona.com has since been taken before a US court. It now looks like the reasoning in that case is unlikely to be followed by the WIPO panel which will come as relief to the Boston Globe newspaper (found at Boston.com), the Irish Times (Ireland.com) and the commercial entities behind Madrid.com, London.com, and Edinburgh.com.
Just two weeks after the Barcelona.com decision, another WIPO panel ruled that StMoritz.com should not be transferred. It was registered by a company in the United Arab Emerates. An official organisation of the St. Moritz community in Switzerland complained to WIPO. It owned registered trade marks relating to St. Moritz in the UAE and 26 other countries. The UAE company’s web site gave information on St. Moritz.
The WIPO panellist in that case found this qualified as a bona fide activity and so found that the UAE company had a legitimate interest in the name. The panellist did not find evidence of bad faith registration or use, even though the UAE company made no answer to the complaint and made no representations to the panel.