City agency loses 'Birmingham.com' battle

In Greater Birmingham Convention and Visitors Bureau v Acme Information Services, a three-member National Arbitration Forum (NAF) panel has refused to order the transfer of 'Birmingham.com' to the complainant.

The Greater Birmingham Convention and Visitors Bureau (GBC) is a non-profit agency chartered by the city of Birmingham, Alabama for the purpose of marketing and promoting the city. It filed a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint against the registrant of 'Birmingham.com' - Acme Information Services. It claimed that Acme offered to sell the domain name to it for $25,000.

In response, Acme argued that GBC and the city had no trademark or service mark rights in the name Birmingham because it existed as a geographic designation. Furthermore, Acme asserted that GBC and the city had failed to provide evidence that they had registered BIRMINGHAM as a trademark or service mark with the US Patent and Trademark Office. Acme also claimed that it had made bona fide use of the domain name in connection with its internet service provider business.

The NAF panel cited previous UDRP decisions involving cities, municipalities and geographic designations in ruling in favour of Acme. It found that "the BIRMINGHAM mark fails to … identify the source of complainant's services and distinguish such services from those offered by others". It also stated that GBC had failed to provide any proof that it uses the BIRMINGHAM mark as a legitimate service mark.

Since GBC failed to prove that it had trademark rights in BIRMINGHAM, the panel did not make a finding on whether (i) Acme had rights or legitimate interests in the domain name, or (ii) it had registered or used the domain name in bad faith.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC