Mexican government agency guilty of reverse domain name hijacking

International

A three-member World Intellectual Property Organization (WIPO) panel has found that the attempt by the Mexico Tourism Board (Consejo de Promoción Turística de México SA de CV) to obtain the transfer of the domain name 'mexico.com' amounted to reverse domain name hijacking.

Latin America Telecom Inc registered 'mexico.com' on November 14 1997 to host a website containing tourist information on Mexico, including details of hotels, transportation, restaurants and entertainment. On June 19 2001 the Mexico Tourism Board became the non-exclusive licensee from the Ministry of Tourism of the Mexican trademark MEXICO and design registered in Class 35 of the Nice Classification on March 29 1999. In early 2004 the board also became the non-exclusive licensee for further marks incorporating the word 'Mexico'. The licence agreements establish that the board is entitled to exercise legal actions to protect the trademarks as if it were the rights holder.

In late 2002 or early 2003 representatives of the Tourism Board met with Rami Schwartz, the chairman of Latin America Telecom, to discuss the possibility of acquiring 'mexico.com'. The board claimed that Schwartz offered to sell the domain name for $1.2 million, while Schwartz alleged that he made it clear that he was not interested in selling the domain name in any circumstances as his whole business relied on it. The board subsequently filed a complaint with WIPO. The board argued that:

  • MEXICO trademarks have been used since at least 1973 both within and outside Mexico;

  • the disputed domain name is identical or confusingly similar to several MEXICO trademark registrations owned by the Mexican government for which the board is a licensee;

  • Schwartz had no rights or legitimate interests with respect to the disputed domain name;

  • Schwartz had an established practice of registering domain names that incorporated in their entirety highly distinctive, famous and well-known trademarks, such as 'guerradelasgalaxias.com' (Guerra de la Galaxias meaning 'Star Wars' in Spanish), 'supersonicos.com' (the Jetsons cartoon) and 'piolin.com' (the cartoon character Tweety); and

  • the disputed domain name was registered and is being used in bad faith, as demonstrated by Schwartz's request for $1.2 million for the domain name.

Schwartz replied that:

  • the board did not have rights to the domain name as the trademarks on which it based its actions had been licensed to it, for the sole purpose of the WIPO proceedings, after Latin America Telecom had registered 'mexico.com';

  • none of the marks on which the board relied was either identical or confusingly similar to 'mexico.com' as the marks were merely device marks, combination marks or word marks incorporating the word Mexico in descriptive phrases;

  • Schwartz has a legitimate interest in the disputed domain name because he is using it in connection with a bona fide offering of services;

  • the disputed domain name was not registered and is not being used in bad faith since Schwartz has been operating his business through this website since 1997 and it is well established that a complainant cannot meet its burden of proving bad-faith registration of a domain name that is registered prior to the date of existence of the complainant's trademark; and

  • the Tourism Board invited Schwartz to a meeting only to set him up for a trap intended to portray him as a cybersquatter and then misrepresented what occurred during the meeting.

The panel rejected the complaint. It found, among other things, that:

  • the board had not established that at the time of registration of the disputed domain name it had rights in any of the marks upon which it relied in its complaint;

  • the word 'Mexico' in Schwartz's domain name was used as a geographic name, not a trademark;

  • Schwartz had been making fair and bona fide use of the domain name and thus has a legitimate interest in it; and

  • the board had attempted to deprive Schwartz of the domain name in bad faith, which amounted to reverse domain name hijacking pursuant to Paragraph 15(e) of the Uniform Domain Name Dispute Resolution Policy.

Joel Gomez, Arochi Marroquín & Lindner SC, Mexico

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