'PuertoRico.com' panel follows 'NewZealand.com' precedent


In Puerto Rico Tourism Company v Virtual Countries Inc, a three-member World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'PuertoRico.com' to the complainant, a public corporation of Puerto Rico. The panel was persuaded that it should follow the precedent established in last year's case involving 'NewZealand.com'.

US company Virtual Countries registered 'PuertoRico.com' in 1995 for use as an informational portal on Puerto Rico. The parties had conducted protracted negotiations during mid-2002 in which Virtual Countries attempted to sell, and the Puerto Rico Tourism Company (PRTC) attempted to purchase, the disputed domain name. The parties hotly disputed which side made the first offer to sell or buy the disputed domain name. In any case, the negotiations failed.

PRTC sought the transfer of 'PuertoRico.com', arguing that because it is the registered owner of a number of trademarks incorporating the words 'Puerto Rico' - though not 'Puerto Rico' on its own - web users would be confused as to the source of the 'PuertoRico.com' website. PRTC relied primarily upon the August 2000 decision in Excelentisimo Ayuntamiento de Barcelona v Barcelona.com Inc, in which sole WIPO panellist Marino Porzio found the word 'Barcelona' to be protected as a principal element in a number of registered trademarks.

Meanwhile, Virtual Countries relied upon the November 2002 decision in Her Majesty The Queen, in right of her Government in New Zealand v Virtual Countries Inc, in which a WIPO panel refused to order the transfer of 'NewZealand.com' to the New Zealand government. The three-member panel found that the government had failed to provide sufficient evidence that it had acquired trademark rights in the words 'New Zealand'.

The panel in this case ruled in favour of Virtual Countries, persuaded that it should follow the precedent established in the 'NewZealand.com' Case (although it did not, as in 'NewZealand .com', find that the complainant was guilty of reverse domain name hijacking). It held that PRTC's registered marks containing 'Puerto Rico' as a disclaimed term did not establish that the disputed domain name was identical or confusingly similar to any of those marks. Since this is an essential element under the Uniform Domain Name Dispute Resolution Policy for transfer of a domain name, it was unnecessary for the panel to decide other contested issues of the complaint.

For discussion of the 'NewZealand.com' Case see WIPO decision may deter governments seeking '.com' domains and New Zealand government digs deep to secure 'newzealand.com'.

Thomas M Small, Birch Stewart Kolasch & Birch LLP, Los Angeles

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