German city secures multiple domain names

International

In City of Potsdam v Transglobal Networx Inc, World Intellectual Property Organization (WIPO) panellist Andrea Mondini has ordered the transfer of the domain names 'potsdam.com', 'potsdam.net', 'potsdam.org' and 'potsdam.info' to the complainant, the German city of Potsdam. Mondini held that Transglobal had no legitimate interest in the domain names, which it had registered and used in bad faith.

The city of Potsdam has owned the German mark POTSDAM since 1997. Sometime after 1997 New York-based Transglobal registered the disputed domain names and subsequently authorized German company Potsdam.com Internetservice GmbH to use them to advertise its IT services.

The city of Potsdam claimed that (i) its earlier trademark and the disputed domain names were identical, and (ii) Transglobal had registered the names in bad faith and with the sole objective to mislead internet users searching for information about the city.

Mondini found that:

  • although abusive registration of geographical indicators does not in itself fall within the scope of the Uniform Domain Name Dispute Resolution Policy, the city of Potsdam has rights in the POSTDAM mark;

  • Transglobal had no obvious connections with the disputed domain names and therefore no legitimate interests in them; and

  • there was evidence of bad faith in the fact that Transglobal must have been aware that internet users would associate the domain names with the German city.

Accordingly, Mondini ordered the transfer of the four domain names.

For discussion of a similar WIPO ruling, see Government wins 'newzealand.biz' despite lack of trademark rights. For discussion of an opposite ruling, see WIPO decision may deter governments seeking '.com' domains.

Florian Schwab, Boehmert & Boehmert, Munich

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