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From Demy's --
30th April, 2003
In a WIPO decision released today, the Puerto Rico Tourism Company has lost a dispute over puertorico.com in very similar circumstances to the decision in newzealand.com.
As with newzealand.com (see: HM The Queen found guilty of reverse domain name hijacking), puertorico.com was registered in the early days of the commercial Internet by Virtual Countries Inc., and used as a portal for various Internet services. As with the New Zealand government, the Puerto Rico tourist board instigated proceedings against Virtual Countries claiming a greater right to the domain.
As regular readers of Demys.net will know, the UDRP is like a boxing match of three rounds and the Complainant must knock out their opponent in all three rounds. In the first round the Complainant must show that the domain in question is the same or confusingly similar to a trade mark or its equivalent.
As with the New Zealanders, the tourist board foundered at this point as they could not show they had sufficient legal rights to the words Puerto Rico. They had a number of trade marks that included these words, such as "Puerto Rico Does It Better", but critically the panel decided that these were not close enough to the domain to be relevant. Therefore the complaint failed at this point and the other two rounds were not considered.
While the tourist board did not win the domain, at least they were saved the humiliation of being found guilty of bringing the action in bad faith - or "reverse domain name hijacking" - as in the newzealand.com dispute. The panel noted 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…the Complainant initiated this proceeding in good faith and propounded arguments that deserve serious consideration.
