Paris fails to extend its wifi reach
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In Ville de Paris v Salient Properties LLC (Case D2009-1279 , December 3 2009), the City of Paris, France, has lost a complaint filed with the World Intellectual Property Organization (WIPO) for the recuperation of the domain name 'wifiparis.com' under the Uniform Domain Name Dispute Resolution Policy (UDRP).
The City of Paris filed a UDRP complaint against Salient Properties LLC (based in Wisconsin, United States), seeking the transfer of the domain name into its ownership. To obtain the transfer of a domain name under the UDRP, a complainant must prove all of the three following circumstances:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
The complainant was the territorial authority responsible for the administration of the City of Paris. It created a New Technologies Authority in 2001 to coordinate and run digital projects for the City of Paris. A name and logo, PARVI Paris Ville Numérique, were adopted to symbolize its activities in the field of information technology. In 2002 the name was registered as a trademark in Classes 35, 38 and 41 of the Nice Classification, among others. In 2004 the City of Paris also registered a figurative mark including the term 'Paris' and covering a number of classes, including Class 38 for telecommunication services.
Salient acquired the domain name 'wifiparis.com' in 2008. It also owned the domain name 'wifi.com' within a portfolio of domain names held by Wifi.com LLC, a US-based corporation. Salient held one-third of the voting rights in Wifi.com. Wifi.com operated a website at 'wifi.com' that provided a directory of free public wifi hotspots around the world. It also registered location-specific domain names, such as 'wifiargentina.com'. The domain names were pointed to websites showing the locations of relevant wifi hotspots, using the same database as 'wifi.com'.
In its complaint, the City of Paris sought to establish the first limb of the UDRP by asserting that the domain name was confusingly similar to its PARIS figurative mark, which was used for wifi services. The City of Paris argued that the only part of the PARIS mark which could be reproduced in a domain name (namely, the term 'Paris') had been reproduced in the domain name at issue, and that the mere addition of the generic term 'wifi' was insufficient to avoid confusing similarity. According to the City of Paris, internet users accessing Salient's website could be led to believe that they were dealing with a website run by the City of Paris to provide official information about wifi locations in Paris.
As for the second prong of the UDRP, the City of Paris submitted that Salient had no rights or legitimate interests in respect of the domain name, having not made any use of it in connection with any good-faith offering of goods or services. The City of Paris further asserted that Salient exclusively sought to derive profit or commercial gain, and that it had made an illegitimate commercial and unfair use of the domain name.
Thirdly, the City of Paris claimed that:
- Salient could not deny that it was aware of the PARIS figurative mark;
- Salient had acquired and been using the domain name for the purpose of selling it to a competitor of the City of Paris at a profit; and
- by systematically combining city and country names with the term 'wifi', Salient had created new domain names with the sole intention of exploiting their widespread notoriety by taking advantage of the likelihood of confusion which would arise in the public's mind.
Salient rejected the City of Paris's allegations on the basis of a number of arguments, including the following:
- The PARVI word mark invoked by the City of Paris was irrelevant. Moreover, the domain name did not resemble the PARIS figurative mark - apart from the inclusion of the geographical term 'Paris', in which the City of Paris had not established any standalone rights. Furthermore, where a complainant relies on a figurative mark, the UDRP requires consideration of the significance of what is left when one ignores the graphical indications or stylization.
- Salient had a right or legitimate interest in respect of the domain name, as its website was part of a substantial business enterprise, and geographic terms remained available for use in connection with a purely descriptive purpose. Salient referred to City of Hamina (Case D2001-0001), in which the respondent had registered and used the domain name 'portofhamina.com' as part of a business concept involving the use of domain names of the type 'port of [name of port].com' to present information intended for users of the respective ports. As decided in City of Hamina, that business practice was not contrary to honest commercial practices. The City of Hamina conclusion was directly relevant to the present case.
- The web pages associated to the domain name 'wifiparis.com' were in English and prominently branded with the logo of Wifi.com, thus in no way suggesting that the website was an official website of the City of Paris.
- The City of Paris had committed reverse domain name hijacking, for a number of reasons, including its failure to disclose that it had lost litigation before French courts invoking the same PARIS figurative mark and that it had been fined for asserting a similar claim in France.
The panel decided that the City of Paris had failed to establish the first prong of the UDRP since the term 'Paris', on its own, was prima facie no more than a geographical indicator. Moreover, the City of Paris had no word mark in the term 'Paris' alone. The panel was also dissatisfied with the lack of evidence concerning the wifi activities organized by the City of Paris under the PARIS figurative mark. The panel added that the domain name was not identical to the textual element of the mark invoked by the City of Paris and, if one compared the respective visual and aural impressions created by 'wifiparis.com' and the PARIS figurative mark, there was no real likelihood of confusion.
The panel also noted that although both parties provided information about the location of wifi hotspots in Paris, the City of Paris had failed to produce any evidence that it had promoted or marketed its wifi hotspots in Paris under or by reference to the PARIS mark. The panel referred to a previous decision, Brisbane City Council v Warren Bolton Consulting Pty Ltd (Case D2001-0047), where the complainant contended that the domain name 'brisbanecity.com' was confusingly similar to an alleged common law mark consisting of the words 'Brisbane City' combined with a particular corporate logo. The panel had stated that:
"[...] the words 'Brisbane City', on their own, do not perform the function of a trademark. Thus, whatever common law rights the complainant may have obtained in relation to its logo together with the words 'Brisbane City', those rights do not extend to the words 'Brisbane City' alone."
Applying the Brisbane City reasoning to the present instance, the panel decided that the City of Paris's rights in a PARIS-plus-logo mark did not confer any rights in the term 'Paris' alone.
Turning to the second prong of the UDRP (even though this was not strictly necessary as the City of Paris had failed at the first hurdle), the panel decided that Salient had a legitimate interest as it operated a genuine business providing information about the location of wifi hotspots in various locations around the world. The domain name appeared to be descriptive of the services which were provided via Salient's website, and the combination of the words 'wifi' and 'Paris' was entirely apt to describe such services.
In view of the above, the panel also dismissed the City of Paris's allegations that the domain name had been registered and was being used in bad faith.
Finally, the panel did not find that there was reverse domain name hijacking on the part of the City of Paris, since its case was not so hopeless as to be beyond reasonable, good-faith argument. The panel noted that the City of Paris had proved that it was the owner of the PARIS mark, and the only textual element of that mark had been included in full in the domain name. In addition, the panel dismissed a set of arguments based on US and French court precedents for which the UDRP was not an appropriate forum.
This decision provides a good summary of the issues which can arise in UDRP proceedings in relation to the nature of geographical indicators and the need for them to have acquired a secondary meaning. It also clarifies the issue of figurative marks containing textual elements in respect of which a UDRP panel will assess the significance of what is left when ignoring the graphical indications or stylization. In the present case, the City of Paris failed both tests. Transfer was thus denied.
David Taylor, Lovells LLP, Paris
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