Berryhill Wins Another UDRP Defending The Marchex Owned Generic Domain Havanna.com
Amazingly the complainant made the argument that Havanna was not a generic term at all.
“”"”Complainant argues that Respondent’s use of the disputed domain name prior to the dispute is not connected to a bona fide offering of goods or services since Havanna has no generic meaning”
But the domain name holder prevailed which is certainly good news in a forum where not all generic geo domains disputes are retained by the domain owner.
Here are the facts as found by the three member Panel:
“”Complainant sells its confections in countries in South America as well as Spain and France. Complainant commenced the operation of cafes where it offers its HAVANNA confections in 1995.”"
“”Currently there are 178 such cafes in Argentina and 68 cafes located in other countries including Chile, Brazil, Paraguay, Bolivia, Costa Rica, the Bolivarian Republic of Venezuela, Peru, Mexico and Spain. Complainant is the owner of the trademark HAVANNA registered in the United States Patent and Trademarks Office on the Principal register on December 7, 1982 as U.S. trademark registration no. 1219322 in relation to biscuits. Complainant is also the owner of numerous trademark applications filed throughout South America.”"
“Complainant submits that the disputed domain name was registered by Respondent well after the registration of the HAVANNA trademark in Argentina in 1997. The disputed domain name was registered on September 26, 2000, about three years later.”
The panel found:
“Complainant has established that it is the owner of the trademark HAVANNA registered in the United States Patent and Trademarks Office on the Principal register on December 7, 1982 as U.S. trademark registration no. 1219322 in relation to biscuits. The application for the trademark HAVANNA in the U.S. was filed on March 26, 1976 based on Argentine Registration No. 669,995 registered February 27, 1970.”
“The disputed domain name <havanna.com> was created on September 26, 2000. The disputed domain name was acquired by Marchex, Inc. sometime in 2005.”
“The Panel finds that Complainant has proven that the disputed domain name <havanna.com> comprised of the term “havanna” and the top level domain descriptor “.com” is confusingly similar to Complainant’s registered trademark HAVANNA .”
“Respondent argues that the term “havanna” in the disputed domain name <havanna.com> is a generic or descriptive word for the name of the capital of Cuba in the languages of Germany, the Netherlands, Sweden, Norway, etc.”
“The landing page associated with the disputed domain name is an advertising page composed of links to travel, hotel and related links of interest to persons who are considering or planning to visit the city of Havana or Cuba. Respondent argues that the generic use of the term “havanna” in association with links to the City of Havana and Cuba is a legitimate use of the term in good faith to attract Europeans considering a trip to Havana or Cuba who conduct an Internet search for “havanna”. In recent years over 114,000 Germans visited Cuba annually.”
“There is no evidence on the landing page associated with the disputed domain name to support a finding that Respondent is attempting to trade on Complainant’s goodwill associated with its trademark HAVANNA which are used in association with confections and cafes.”
“The evidence submitted by Complainant in this case does not support a finding that Complainant’s HAVANNA trademark was a well-known trademark outside Argentina. ”
“Complainant has not established any sales of HAVANNA confections in the United States of America where Respondent is located prior to 2005 when Respondent acquired the disputed domain name.”
“”Complainant argues that Respondent’s use of the disputed domain name prior to the dispute is not connected to a bona fide offering of goods or services since (i) Havanna has no generic meaning and (ii) the website has no specific content related to Cuba or the city of Havana. However, Complainant does not dispute (and Respondent has provided evidence) that the word “havanna” is a generic word for the name of the capital of Cuba in the languages of, inter alia, Germany, Sweden and Norway. Furthermore, Complainant recognizes that the parking page under the disputed domain name merely displays sponsored links related to flights to Cuba, hotels in Cuba, vacations in Cuba and links relating to the City of Havana, the capital city of Cuba. The fact that this is merely a parking page that does not contain specific content (other than the links) to Cuba and the city of Havana makes this no different. Previous UDRP panels have found that a landing page associated with a generic domain name incorporating advertising links relating to the generic subject matter can be a legitimate interest.”"
“”The Panel finds that generic use of the disputed domain name in association with links to the City of Havana and Cuba is a legitimate interest.
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The Small Five O
So was it indeed the original “Five Members” (on a all night tipsy bender binge )
that drafted the Registrar’s Model Policy and Model Rules of Procedure submitted to the ICANN Board in Santiago?
://www.icann.org/en/comments-mail/comment-udrp/current/msg00058.html
“to do this, one would have to look at all registered domains that are “apparently” infringing (all “apparent” murders), not simply ones that are subjected to the udrp (murder trials).”
Mmmm… the general approach in Western political philosophy relative to any system of justice is how well it protects the rights of the innocent, and not its effectiveness at rooting out the guilty.
It’s kind of interesting that if you look at, say, the US Constitution, you have the following things in the Bill of Rights:
4 – protection against unwarranted search and seizure
5 – protection against self-incrimination
6 – representation, speedy trial, jury, confrontation of witnesses, compulsory process
7 – jury trial in civil cases, facts not at issue on appeal
8 – no cruel and unusual punishment
There’s not a word in the whole shootin’ match about whether this is going to be an efficient method of fighting crime or righting wrongs.
It always makes me chuckle when Constitushun-lovin’ people complain about how “we are too concerned about the rights of criminals”. The bulk of the Bill of Rights doesn’t even kick in until you are accused of a crime. I mean, good golly, how many of us ever get a chance to exercise our Eighth Amendment rights! A whole Amendment – just for people who have been convicted of a crime.
Now, in the context of things like criminal acts, we are used to the notion that we normally aim to err on the side of letting a guilty person go free in the systems we construct to address crime. But we don’t evaluate whether, say, the Federal Rules of Criminal Procedure have an impact on the crime rate. We evaluate those rules in terms of fundamental fairness in terms of procedural outcomes, and nobody says, “Well, the murder rate is really high”.
To put it another way, I guess you could look at the UDRP as:
1. a “system for combating online infringement”, or
2. a “system for adjudicating claims of online infringement”.
Those two alternative views probably account for a lot of the differences in style and method among UDRP panelists.
And – last comment – ltd, remember it was Dec 13. In a few weeks you’ll see what I was doing in between posts on this thread.
always interesting to hear the jb perspective.
my thoughts were leaning toward view 1.
not sure why. might have been something i was reading recently. perhaps i was imagining that the problem of tm infringing domain names would seem, from a tm holders’ perspective, far too “unwieldy” for something like the udrp to “effectively” deal with. being that udrp is optional, and the tm owners are thus in sole control over whether it’s used or not, i think their perspective is worth considering. how do they see the problem? do they, e.g., consider preemptive approaches?
i’m not so much interested in how effective udrp is overall (numerous opinions to be found on that issue) as much as i’m interested specifically in how it’s applied.
as for the FRCP affecting crime rate. well i could see that as possible, in some tenous way, if the result of some rule is that prosecutors or defence counsel are for whatever reason consistently unable to do their jobs as effectively as one would expect them to. and as such this rule constently affects the outcomes of cases. if for example we assume that criminals pay attention to rates of incarceration for certain offences and that this influences their decision whether or not to commit them.
to make the example more concrete, imagine if the udrp had some real “teeth”, and the stakes for alleged infringers was much higher, but the published stats, showed that most all udrp cases were decided in favour of the respondent due to failure of the complainant to comply with some procedural rule. presuming those published stats are read by a large number of domain investors, would this affect the rate of cybersquatting? it seems to raise the question of what determines a person’s decision to engage in a particular behaviour. are the potential consequences for a behaviour more influential than its ethical, moral or legal status?
regarding the bill of rights, i’m not too well versed in the history of the period during which the us consituution was drafted. however i think it is significant in understanding what they were trying to achieve. please correct me if i’m wrong. as i understand it, the framers were looking for protection against a govt that had abused its ability to quickly proclaim what was a “crime” and what was not, not to mention its ability to selectively enforce the law, to suit its own financial interests. i imagine it would be difficult to deal with an overseas business partner that can at any time use its lawmaking and enforcment powers to swiftly put you out of business and lock you up. if that was the situation, it might explain why their focus in the bill of rights was on the abuses of govt power (the “crimes of govt”), not on crimes committed by citizens.
it really is a great document because it seems that almost all govt’s are extremely likely to abuse their power at some point. but how do you pass a “bill of rights” from within such a system? it’s inevitably going to be watered down somewhat to the extent it challenges the power structure of the existing framework. america got the chance to do it “on their own”, outside the system. it seems that the drafters understood the issues well and they did an admirable job addressing them.
correction: incarceration –> conviction
too lazy to do further corrections
“it seems that almost all govt’s are extremely likely to abuse their power at some point”
Exactly.
Where is the Economic IMPACT Study for the [UDRP Kangaroo Court System] that ICANN is supposed to prepare for the U.S. Department of Commerce ?
What has been the Economic IMPACT of UDRP ?
Who are the losers ?
What has it cost the naive ?
Who has Profited from the UDRP ?
How has Artificial Scarcity of new top level domains helped to perpetuate and memorialize UDRP ?
Big
Economic impact can also be measured by saving to trademark holders to get clearly infringing domains quicker and less costly than court cases
“Economic impact can also be measured by…”
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Sounds like MHB should be on the ICANN Drafting Committee for the Economic Impact Study of the UDRP – for the U.S. Department of .COMmerce.
ICANN spends $2,000,000 on studies – Inside work, air-conditioned and no heavy lifting
Big
Just understanding that there is more than 1 point of view on every issue and that there are abuses on both sides of the fence.
Domain holders are not right 100% of the time nor are trademark holders.
The sooner everyone recognizes that the sooner we can put into place some UDRP reform measures so a generic like Haywood is not lost and domain holders do not have to spend $5K to defend stupid complainants like I just did to win carefreehomes.com
“the sooner we can put into place some UDRP reform measures”
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Check out the new ICANN web site for the ICANN.Nation.State
Sounds like MHB should be on the ICANN Drafting Committee for the UDRP REFORM Study for the ICANN.Nation.State
ICANN.Nation.State will likely spend $20,000,000 on studies – Inside work, air-conditioned and no heavy lifting – Geneva.Switzerland
If the average-Joe, sitting at home watching the Godaddy ad on Super Bowl Sunday knew just how f*cked up the entire domain-process is, and that they could easily lose that great domain name they just thought-up, through a reverse-hijacked UDRP…well, they’d probably leave the visa card in their wallet and keep on watching the game.