DONDE mark owner wins 'donde.com.ar' dispute
In Cafre SA v Informática para Profesionales SRL (Case 4218/1998) the Second Chamber of the Federal Civil and Commercial Court of Appeals has upheld a decision to cancel the defendant's registration of 'donde.com.ar'. The court held that even in the absence of evidence of bad faith, the defendant's registration prevented the plaintiff - the owner of the DONDE mark - from registering the domain name for its own use.
Cafre SA provides travel information services and owns a registration for the trademark DONDE in Classes 39 and 42 of the Nice Classification. It filed an action against Informática para Profesionales, a travel agent, following its registration and use of the domain name 'donde.com.ar'. Cafre also opposed Informática's application to register the phrase 'donde la via' (transliterating as 'where to go') as a trademark in Classes 9, 35 and 38 of the Nice Classification. At first instance, the court found in favour of Cafre. Informática appealed.
The Second Chamber of the Federal Civil and Commercial Court of Appeals upheld the lower court's decision. It noted that although the two parties are not competitors, they are both involved in the tourist industry. The court rejected Informática's argument that it had more right to use the disputed domain name than Cafre because it had registered it first. The court reasoned that Informática's registration was preventing the owner of an identical mark from exercising its right to register and use the domain name, and that this was the case, even if Informática had not acted in bad faith. It also refused Informática's application to register 'donde la via' as there was a significant likelihood of confusion with Cafre's DONDE mark.
Jorge Otamendi, G Breuer, Buenos Aires
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