Bonita Bay Group scuttles pirate

International

In Bonita Bay Group Inc v Total Concept Inc, World Intellectual Property Organization panellist Richard Page has found that the respondent registered and used five domain names containing the name of the complainant - a real estate company based in Bonita, Florida - in bad faith. Page stated that "geographic names can be protected if the complainant shows that secondary association exists".

Total Concept of Cape Coral, Florida registered 'BonitaBayRealEstate.com', 'BonitaBayEstates.com', 'BonitaBayRentals.com', 'BonitaBayfsbo.com' and 'BonitaBayCondos.com' and linked them to websites offering real estate services in competition with those of The Bonita Bay Group.

Bonita Bay brought Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings for transfer of the domain names, arguing that:

  • it has long-standing federal and state registrations for the mark BONITA BAY for real estate goods and services, and golf facilities and goods;

  • the domain names are identical or confusingly similar to its BONITA BAY mark;

  • Total Concept has no rights or legitimate interests in the domain names because it had not made bona fide use of them; and

  • Total Concept had registered the domain names in bad faith since a simple search would have revealed Bonita Bay's trademark rights.

Total Concept responded by arguing that although it was aware of Bonita Bay, it concluded that the group had derived its name from the geographical area in which it is located in Florida.

Page ruled in favour Bonita Bay, finding that all the group's claims were valid. Significantly, Page also noted that although the Lanham Act prohibits the registration of marks that are primarily geographically descriptive, the Agreement on Trade-Related Aspects of Intellectual Property Rights allows the protection of geographic designations if the name in question has acquired secondary association. Page concluded that 'Bonita Bay' had acquired distinctiveness through continuous and unfettered use for a substantial period of time. Thus, Total Concept was found guilty of cybersquatting and ordered to transfer all five disputed domain names.

One of the most interesting elements of this case involved Total Concept's defence, which suggested that Bonita Bay had allowed the BONITA BAY mark to become generic, since it now appears on maps and is otherwise used as a generic geographic designation by many people. Page, however, was of the opinion that the defence of genericness or acquired descriptiveness is a defence that is beyond the purview of WIPO arbitration proceedings. He stated that "[t]he summary nature of the procedures under the [UDRP] Rules is not adequate to develop the proof necessary to make an informed decision on these issues". In other words, the defence of genericness is not available in a WIPO-type UDRP proceeding, rather a court of competent jurisdiction would have to review such a defence and any supporting evidence.

Robert Lyon, Holland & Knight LLP, Los Angeles

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