Tenerife government fails in bid for 'tenerife.info'

In Excmo Cabildo Insular de Tenerife v Jupiter Web Services Limited, World Intellectual Property Organization (WIPO) panellist Frederick M Abbott has refused to order the transfer of 'tenerife.info' to the complainant. Abbott concluded that the registrant's use of the domain name to provide tourist information about Tenerife was a legitimate and fair use.

Tenerife is the largest of the Canary Islands, which are situated in the Atlantic Ocean, and is also a province of Spain. Excmo Cabildo Insular de Tenerife (ECIT) is a Tenerife government entity that owns a number of Spanish trademark registrations for TENERIFE. It also owns the domain name 'tenerife.es' and operates a website at 'webtenerife.com'. It filed an action with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Jupiter Web Services following its registration of 'tenerife.info'. It was joined in the proceedings by co-complainant Promocion Exterior de Tenerife SA - a government-owned company that promotes Tenerife tourism.

Jupiter Web Services registered 'tenerife.info' on behalf of an individual named John Goodreid, who planned to use it as a portal to a commercial website providing:

• tourist information on Tenerife;
  
  
• air travel and accommodation reservation services; and
  
  
• car rental services.

Abbott held that pursuant to Paragraph 4(a)(i) of the UDRP, ECIT had established that it holds trademark rights in TENERIFE and that the disputed domain name is identical to that mark. However, he noted that Spanish trademark law absolutely prohibits registration of a term that is a designation of geographical origin but stated that he lacked sufficient information to determine the basis upon which the Spanish Patent and Trademark Office had granted registration of TENERIFE. He concluded that any challenge to the validity of the TENERIFE mark would be better addressed by the Spanish authorities.

Abbott next considered whether Jupiter and Goodreid have rights or legitimate interests in the disputed domain name. ECIT had argued that this was not the case because Jupiter had provided false information to the registrar during the '.info' sunrise registration period. Abbott rejected this argument, reasoning that the UDRP does not provide a general remedy against inaccurate representations made during domain name registration. He also held that ECIT could have made a third-party challenge during the sunrise period but failed to do so. Abbott further stated that Goodreid already owns a commercial website dedicated to the provision of tourist information on Tenerife. He noted that the website (i) does not purport to be associated with the government of Tenerife or its tourism promotion authority, and (ii) only refers to Tenerife in a geographically descriptive sense. Thus, Abbott concluded that Jupiter and Goodreid had established rights in the disputed domain name and there was no need to make any findings on the issue of bad faith.

Accordingly, Abbott refused to order the transfer of 'tenerife.info'.

David Fleming, Brinks Hofer Gilson & Lione, Chicago