Madrid loses claim for 'esmadrid.com'

International

In Empresa Municipal Promoción Madrid v Planners Planners, World Intellectual Property Organization (WIPO) panellist Luis H de Larramendi has refused to transfer the domain name 'esmadrid.com' from the Barcelona-based registrant to the capital city of Spain. Larramendi cited the Report of the Second WIPO Internet Domain Name Process (commonly referred to as the WIPO2 Report) in rejecting Madrid's claim for the domain name.

Promoción Madrid organized a contest to come up with a new name and logo for Madrid's official webpage, portalmadrid.com. Several participants suggested 'esmadrid.com' (the letters 'es' standing for España or Spain) as a possible new name. When Promoción Madrid attempted to register the domain name it discovered that one of the contest participants, Planners, had already registered it. Promoción Madrid then initiated proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), requesting that the domain name be transferred.

Larramendi rejected Promoción Madrid's petition, finding that the first of the three elements in Paragraph 4 of the UDRP necessary for transfer had not been met - that is, the "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights". Although Promoción Madrid had registered ESMADRID as a trademark, it did so after Planners had registered the disputed domain name.

Thus, Larramendi found that he could not order the transfer of 'esmadrid.com' despite admitting that (i) Planners has no rights or legitimate interests in respect of the domain name, and (ii) any use of the domain name by Planners would be in bad faith. He sited the WIPO2 Report, which states that cities do not have exclusive rights to their names, to support his finding.

For discussion of other WIPO decisions involving city names, see German city secures multiple domain names and Zurich Insurance loses 'zurich.biz' to German ISP.

Sonia Santos, Mullerat, Barcelona

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