Puerto Rico Loses Puertorico.com Dispute

In its April 14, 2003 decision in Puerto Rico Tourism Company v. Virtual Countries, Inc., the WIPO Arbitration and Mediation Centre refused to transfer puertorico.com on the basis that Puerto Rico was not a trade-mark of the government owned complainant. Under section 4(a) of the Uniform Dispute Resolution Policy (UDRP) governing disputes over .com domain names, a complainant must establish the following three criteria for the transfer of a domain name:

• that the domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights;
• that the Respondent has no rights or legitimate interests in respect of the domain name; and
• that the domain name was registered and is being used in bad faith.

In arbitration decisions dealing with geographic indicators, the primary issue is whether a trade-mark exists. The national law of the complainant must be examined to determine if the complainant has trade-mark rights in the geographic indicator. In this decision, the panel distinguished the barcelona.com WIPO decision that accorded trade-mark right in BARCELONA to the complainant under Spanish law. The panel followed the newzealand.biz WIPO decision where no trade-mark rights existed in the words "NEW ZEALAND" under New Zealand law. As a protectorate of the United States, Puerto Rico is subject to U.S. law. The panel examined U.S. law and found that as used by the complainant the words "PUERTO RICO" did not have the necessary acquired distinctiveness to amount to a trade-mark. Accordingly, the panel refused to transfer the domain name. For a copy of the puertorico.com decision, visit: http://arbiter.wipo.int/domains/decisions/html/2002/d2002-1129.html (note the printed decision incorrectly cites the case number as 2003-1129). For a copy of the barcleona.com decision, visit: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0505.html For a copy of the newzealand.com decision, visit: http://arbiter.wipo.int/domains/decisions/html/2002/dbiz2002-00270.html Summary by: Nicholas J. Whalen