STOP decisions conflict on national identifiers in '.biz' names

Canadian.biz Case
American.biz Case
Conclusion

Two recent decisions under the '.biz' Start-Up Trademark Opposition Policy (STOP) illustrate a split between panellists on the treatment of nationality identifiers in '.biz' domain names. In the first decision, a STOP panellist found in favour of Molson Canada and granted the transfer of 'canadian.biz' to the brewery. Two days later, American Airlines lost its case against the registrant of 'american.biz'.

Canadian.biz Case

Molson is the owner of a registered trademark in Canada for CANADIAN brand beer. On April 26 Molson filed a STOP complaint against '%2d%2d' (the registrant listed in WHOIS) over 'canadian.biz'. Canadian citizen Douglas Black filed a response to the complaint, contending that he was the proper registrant, and that '%2d%2d' was an error in the WHOIS database created during the registration process.

The STOP panel sided with Molson, stating that the domain name is identical to Molson's CANADIAN mark. The panel also found that Black's assertions that he intended to use the domain name for "Canadian businesses that use the Internet" were unsupported in his response, and that the registration was made in bad faith. According to the panel "the record, simply stated, is devoid of any demonstrable preparations to use the domain name in connection with a bona fide offer."

Although Molson is the registered owner of the CANADIAN mark for beer, Black is also a Canadian national. While the false contact information in the WHOIS database may or may not have been the fault of the registrar, the decision raises questions on the right of a registrant to own a domain name identical to his nationality.

Black successfully appealed the NAF decision last week. An Ontario judge stopped the transfer of the 'Canadian.biz' domain.

American.biz Case

American Airlines (AA) filed a STOP complaint against a German travel company, WebWide Internet Communication GmbH, arguing that the airline owns the US trademark registration for AMERICAN and is well-known worldwide in connection with its travel services. WebWide filed a response claiming that it had registered the mark AMERICAN in Austria, along with numerous domain names containing geographic identifiers in connection with its travel services.

The panel agreed with WebWide, finding that "the unadorned, simple word 'american' as used by the complainant has been repeatedly held to be geographically descriptive (and therefore unprotectable)." AA's complaint was denied and WebWide was allowed to retain ownership of 'american.biz'.

Conclusion

The two decisions demonstrate the differing points of view held by panellists concerning the treatment of national identity in domain names. On the one hand, the panel in the American.biz Case viewed the use of the national identifier as a generic word. But in the Canadian.biz Case, the panel clearly found that the domain name violated Molson's registered CANADIAN mark. Future STOP decisions involving domain names containing nationality identifiers may help settle the confusion.

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