WIPO panel refuses to transfer 'madrid.com'


In Empresa Municipal Promoción Madrid SA v Easylink Services Corporation, a three-member World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'madrid.com', finding that the promotional arm of the Madrid City Council, Promoción Madrid, failed to prove that the city has trademark rights in the domain name. This decision follows another recent ruling in which a WIPO panel refused to transfer 'esmadrid.com' to the Spanish capital (see Madrid loses claim for 'esmadrid.com').

Promoción Madrid owns trademark registrations for a number of marks that incorporate the name 'Madrid' such as PROMOTION MADRID, MADRID LIMPIO and MADRID FACIL, as well as pending applications for ESMADRID, ENMADRID and PORTAL MADRID. It has also registered a number of domain names incorporating the name 'Madrid'.

The Spanish company contended that the disputed domain name should be transferred pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (UDRP) because:

  • 'madrid.com' is identical to the name of the capital city;

  • the registrant, Easylink Services, is a US company with no connection to Madrid; and

  • Easylink had registered and used the domain name in bad faith.

Promoción Madrid also argued that Easylink's registration of 'madrid.com' violated the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

Easylink pointed out that (i) Promoción Madrid does not own a trademark registration for 'Madrid' per se, and (ii) the US company uses the domain name for legitimate purposes (ie, as an email account, which 30,000 people currently use).

The panel ruled in favour of Easylink, finding that the domain name is not identical or confusingly similar to Promoción Madrid's trademark registrations. Moreover, the panel noted that geographical indicators are not, per se, covered under the UDRP, and that TRIPs was not applicable since that agreement is intended to protect against geographically misdescriptive designations.

Russell H Falconer, Baker Botts LLP, New York

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