Rights get the ownership of a name. Although, other factors should also be considered before assigning the ownership. This includes the historic use of the name or if the brand has acquired notoriety over the name. When there is an absence of Trademark Rights, Common Law rights can often define the ownership of the name,
However, what happens when the term in contention is a Geographical entity. Let’s dove deeper into this issue with our current Domain Name case study.
Complainant’s Case
The Complainant here is Cordelco N.V. The complainant operates a shopping mall in the Caribbean country of Curaçao. The mall is named Mambo Beach.
The Complainant owns several trademarks around its name. It owns a Word Mark over MAMBO BEACH. It also owns several other trademarks with MAMBO. The trademark for MAMBO BEACH was filed on November 15, 2002.
However, a domain name Mambo-Beach.info was registered and used by the Respondent. The domain name displays surrounding facilities such as hotels, beach clubs and restaurants.
The Complainant claims that there is a beach that is called my Mambo Beach. However, the original name of the beach is Sea Aquarium Beach and not Mambo Beach.
The complainant contends that the name of the beach often referred to as Mambo Beach is due to the efforts of the Mambo Beach mall. The domain name caters to the people around the beach, a similar group of people that the Complainant wants to reach as well. The Respondent upon registering a domain name similar to this, is infringing upon the Complainant’s rights.
Respondent’s Rebuttal
The Respondent countered the Complainant’s proposal that the beach was often called Bambo Beach due to the influence of the Complainant. The Respondent claims that the beach was named so because of a group that was called ‘Mambo’, however this ceased to function in 2012.
The Respondent also states that the platform is used to offer bona fide services that include providing information to people visiting the beach. It gives people information about nearby attractions and places such as Hotels, restaurants, bars, etc.
Jury’s Judgement
The jury found that the first condition for UDRP cases, that is Identical or Confusingly Similar was held. The domain name was indeed similar to a trademark of the Complainant.
In the second provision of Rights or Legitimate Interests the panel looked to references to Google Maps and a Lonely Planet guide. The panel found that the beach originally called Sea Aquarium is also popularly known as Mambo Beach. A google search of the name resulted in several hotels and booking platforms.
The panel conceived that the terms in question were essentially a Geographical. The kind of service provided by the Respondent qualifies for legitimate use of the domain name.
Hence, the provision that requires the Complainant to prove that the Respondent has no legitimate interest or use over the domain name couldn’t be proved.
The Complaint was thus Denied.
You can read the case in full detail here.
Join the Discussion