The domain name had been registered by Latin American Telecom Inc. in 1997. It used it – and still uses it – for a site giving information about Mexico. This was two years before the official Mexico Tourism Board was even established.
The Tourism Board made arguments to the domain name dispute service of the World Intellectual Property Organisation (WIPO), accusing the telco of infringing its trade mark rights. But it transpired that some of these registered rights were effectively borrowed from the Government of Mexico, just for the purposes of the WIPO claim: trade marks were assigned to "strengthen" the claim, on the understanding that they would later be re-assigned. The telco pointed out that not a single trade mark on which the Tourism Board relied in its claim was actually owned by the Tourism Board.
The Tourism Board also accused the telco of trying to sell the name to it for $1.2 million. But this was denied by the telco. The board also accused the telco of being in the business of buying well-known domains simply to sell them; but the telco countered that it used its domains for e-mail services and had never offered to sell any of them.
Further, when the Tourism Board argued that mexico.com would create confusion with its licensed and borrowed trade marks, the telco revealed evidence of hypocrisy: in 2001, in an attempt to prevent the US Patent and Trademark Office rejecting the Tourism Board's application to register visitmexico.com on account of the previously-registered mexico.com, the Tourism Board set out to distinguish mexico.com, describing it as "a general information site about Mexico" and listing the various information and services available at the site.
The three-member panel decided that the domain had been registered using "Mexico" as a geographic name, "not upon any trade mark sense". Moreover, the domain had been used as a "portal to access a global information network featuring topics relating to Mexico", and accordingly the telco had been making a fair use of the domain.
According to the ruling, the Tourism Board did not persuade the panel "that internet users, typing the word MEXICO into their browsers, expect to find the goods or services of [it], as distinct from goods, services or information about the country Mexico."
So the name was not to be transferred. But the panel then considered the question of whether the Tourism Board was guilty of reverse domain name hijacking – where the arbitration proceedings are used "in bad faith to attempt to deprive a registered domain-name holder of a domain name."
The panel found that the submission made by the Tourism Board to the USPTO in 2001 amounted to an acknowledgement of the telco's "legitimate interest in the disputed domain name and that the disputed domain name was not registered and is not being used in bad faith."
The Panel then found, by majority, that the Tourism Board had acted in bad faith in depending on a trade mark "loaned" for the specific purpose of assisting the Board in the complaint.
The complaint was, concluded the panel, "brought in bad faith and constitutes an abuse of the Administrative Proceeding."
John MacKenzie, partner at international law firm Masons, the firm behind OUT-LAW News, commented:
"This case illustrates the importance of early registration of domain names. Corporations who can show a genuine reason for registering the domain name can defeat even holders of registered trade marks. It also sends a warning to brand owners who might be tempted to use their registered rights to muscle in on domain name owners."