The National Arbitration Forum, like the World Intellectual Property Organisation, is an ICANN approved domain name dispute resolution provider. A complaint was brought before it by Pueblo International Inc., supermarket chain which had a US registered trade mark for the word “Pueblo”.
It argued that an internet service company, using the name Virtual City Visions or VCV, registered the domain name pueblo.org in bad faith, and that the name should be transferred to the supermarket chain. The name was registered, but not in use. VCV said the name would be used in future for a site functioning as a guide for the City of Pueblo, Colorado and that the domain name was registered before the supermarket’s trade mark.
The panellist, Irving H. Perluss, a retired judge, refused the transfer request, saying “the top-level domain ‘org’ customarily is in usage by non-profit or ‘miscellaneous entities and not by a supermarket chain.” He observed that the chain should use the .com or .net names and observed that ICANN’s proposal to open new top level domains “was to permit more domain names to be available to companies with the same name.”
In two separate cases, Perluss found that Pueblo.com should not be transferred from another company because the failure to use the name was insufficient to evidence bad faith use of it; however, another arbitrator ordered the transfer of Pueblo.net, in this case also from VCV, to the supermarket chain.