question Regging a city name... can it give trouble?

[ArabExplorer]

Question: Until today, a city name was regged in .com.
Now it dropped.
If I reg it, can it deliver trouble?
Such as copyright issues?

 

[jberryhill]

This is the second post today to bring up "copyright" in relation to a domain name.

Just as a friendly pointer - "copyrights" and "trademarks" are two different things.

Copyrights are virtually never relevant to domain names per se. Copyrights are for works of authorship, such as books, articles, photographs, song lyrics, and audio recordings. Copyrights do not apply to single words, slogans, etc..

What we are primarily concerned about with domain names are trademarks. Trademarks are words or symbols which are used in connection with goods in commerce such that they distinguish among the goods or services of one source from another in a relevant mark - i.e. when you see "Coca-Cola", you know it is not "Pepsi".

Indicators of geographical origin - such as city names - are normally descriptive terms. For example "Philadelphia" identifies the name of a city in southeastern Pennsylvania. As a geographical indicator, it is not the "property" of anyone.

The problem here is that you provide no idea of what the domain name is going to be doing. For example, let's take "Chicago". If the domain name Chicago.tld is being used for information about a large city in northern Illinois on Lake Michigan, then that's a descriptive use of that geographical term.

If, on the other hand, you were using the domain name Chicago.tld to sell music, then you'll meet these folks:

https://littlebylisten.files.wordpress.com/2012/04/abncocovr.jpg

...who constitute the band "Chicago". Now, I may be showing my age, and I have no idea whether they are still performing, but the point is that their use of "Chicago" is distinctive of a group of musical performers, is not used in the geographic sense, and thus functions as a trademark for that band.

Same thing with "Philadelphia". If the domain name is monetized in connection with advertising of travel, tourist attractions, real estate, etc., having to do with the city of Philadelphia, that's fine.

But if you use "Philadelphia" to sell cream cheese, then you are going to have a problem:

https://cdn0.woolworths.media/content/wowproductimages/large/072546.jpg

Occasionally, cities try to claim their name as a trademark for the city, or for the local tourist commission. Additionally, there are sometimes mark owners whose mark is adapted from a city name (such as Chicago and Philadelphia mentioned above), who will go after a domain registrant using a city name for its geographical sense. This is a common fact pattern in domain disputes, and here are several of the cases I have done in relation to city names:

http://www.adrforum.com/domaindecisions/97076.htm

A leading trademark commentator elaborated on this principle: "descriptive geographical terms are in the ‘public domain’ in the sense that every seller should have the right to inform customers of the geographical origin of his goods. Therefore, a seller must build up good will and consumer recognition in a descriptive geographical term in order to have a legally protectable interest, and take the term out of the public domain." McCarthy on Trademarks and Unfair Competition, §14:1 at 14-4 (4th ed. 2001). Here, Complainant has failed to prove that the CITY OF SALINAS mark has acquired secondary meaning such that it may claim the exclusive right to use CITY OF SALINAS as a trademark.



http://www.adrforum.com/domaindecisions/1437030.htm

As noted by Respondent, Norcross is a municipality in the Atlanta, Georgia metropolitan area. The links on the <norcross.com> home page refer to hotels, airports, new homes, and car rentals in Atlanta, Savannah and Athens, Georgia, as well as to other travel-related services. The links and material on <norcross.com> make no reference to viscosity equipment or other goods or services associated with the NORCROSS mark. Thus, the Panel finds that Respondent uses the term “norcross” in its domain name in a descriptive manner, i.e., to provide useful travel-related information to those traveling to Norcross, Georgia or the surrounding area .

http://www.wipo.int/amc/en/domains/decisions/text/2016/d2016-2601.html

The Panel notes that where the element of the mark relied upon is merely a geographical place name, a number of panels have been reluctant to find that the domain name and mark are confusingly similar for the purposes of the Policy. Examples, in this respect include Brisbane City Council v. Joyce Russ Advertising Pty Limited, WIPO Case No. D2001-0069 (<brisbane.com>) and Province of Brabant Wallon v. Domain Purchase, NOLDC, Inc., WIPO Case No. D2006-0778 (<brabant-wallon.org>). However, the decisions are not all one way. For an example of where the Complainant succeeded on this issue (even though the complaint otherwise failed) see Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucia.Com Limited, WIPO Case No. D2006-0749 (<andalucia.com>).

 

[ArabExplorer]

Thank you for the time that you took to write down all of the above information, which was extremely helpful (and thank you for clarifying the difference between copyright and trademark, something that I keep mixing up). Honestly, I was just checking the list of expired domain names and it caught my attention. My original idea was to make an informative website (related to the geographical city itself) and put ads on it, but after reading through your post, I'm going to skip the idea. Not too long ago I read about a lawsuit related to the domain name of a city (in which the city hall demands the ownership of the domain name) and for me, it's not worth any trouble.

 

[jberryhill]

My original idea was to make an informative website (related to the geographical city itself) and put ads on it

That's a fine idea. If anything, the takeaway from my post should have been that using a city name for geographical information about a city is a perfectly fine thing to do.

While, yes, some cities have gotten bad advice and pursued losing cases over it, the only reason we can say for sure that this sort of thing is okay is precisely because it has happened in the past.