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.