Madrid.com

**Ari Goldberger** · 03-14-2003, 03:08 PM

Score one for city domain name owners. The City Council of Madrid's complaint in Madrid.com was denied by a 3-member panel in a decision issued on February 26th. I represented the respondent, Easylink Services Corporation (formerly Mail.com, Inc.). The decision's not yet posted but, if anyone wants a copy, hit me with an email at ag@ESQwire.com.

**fizz** · 03-14-2003, 03:13 PM

Congrats on the win Ari! This goes a long way to balancing the crazy Barcelona.com decision. Last I heard, that one was going to court after the UDRP decision.

**Drewbert** · 03-14-2003, 05:45 PM

Congrats Ari!

**Banned: timechange.com** · 03-14-2003, 06:39 PM

Would the same apply to national bank domains? E.g. BankOfEngland.com

**DomainGoon** · 03-14-2003, 07:46 PM

Originally posted by timechange.com
Would the same apply to national bank domains? E.g. BankOfEngland.com

I doubt it.

**David G** · 03-14-2003, 08:41 PM

Originally posted by Ari Goldberger
Score one for city domain name owners. The City Council of Madrid's complaint in Madrid.com was denied by a 3-member panel in a decision issued on February 26th. I represented the respondent, Easylink Services Corporation (formerly Mail.com, Inc.). The decision's not yet posted but, if anyone wants a copy, hit me with an email at ag@ESQwire.com.

Congrats Ari, I sure know where to go for legal help!

BTW, would that also apply to US Govt type of names such as DepartmentOfAgriculture.com SocialSecurityAdministration.com FederalHousingAdmin.us, etc??

Would putting a site online and a notice on the top it is NOT the official govt website and perhaps a link to it (maybe even with their clickable image icon) help defend any claim or satisfy them so as to not complain?

I doubt they would pursue it anyway since they use the dot-gov extension and frequently abbreviations too. Just wondering. Thanks for your legal opinion.

**Drewbert** · 03-14-2003, 09:22 PM

NEVER put someone's logo on a site when you're directing lost websurfers. Text link ONLY.

Or else at a glance, it look's like they are supporting/affiliated with/aware of your site.

**pljones** · 03-15-2003, 11:19 AM

Nice job Ari. Let us know what happens with the PuertoRico.com case too.

**David G** · 03-15-2003, 12:18 PM

Originally posted by RealNames Congrats Ari, I sure know where to go for legal help! BTW, would that also apply to US Govt type of names such as DepartmentOfAgriculture.com SocialSecurityAdministration.com FederalHousingAdmin.us, etc??

Would putting a site online and a notice on the top it is NOT the official govt website and perhaps a link to it (maybe even with their clickable image icon) help defend any claim or satisfy them so as to not complain?

I doubt they would pursue it anyway since they use the dot-gov extension and frequently abbreviations too. Just wondering. Thanks for your legal opinion.

A reply would be appreciated Ari.

**fizz** · 03-15-2003, 12:25 PM

Er, RealNames, I'm sure Ari will get 'round to replying when he gets time. DNF is lucky to have great laywers like him even posting here.

**David G** · 03-15-2003, 12:34 PM

Originally posted by fizz Er, RealNames, I'm sure Ari will get 'round to replying when he gets time. DNF is lucky to have great laywers like him even posting here.

Agree, very lucky to have Ari and others.

Excuse me for asking but since I think Ari posted in another thread after that I was thinking he may not have seen my post in this thread.

**DaddyHalbucks** · 03-15-2003, 05:03 PM

Ari,

CONGRATS!

Nice job.

**DaddyHalbucks** · 03-15-2003, 05:13 PM

Would the same apply to national bank domains? E.g. BankOfEngland.com
+++++++++

Your defense would be what..

"gee there are alot of companies doing business as Bank of England?" or "gee, 'Bank of England' is a dictionary phrase?" or "gee, Bank of England is not distinctive?"

or perhaps my favorite defense:

"gee, I have been known as Bank of England my whole life. when I was a toddler, I lent a friend some money, and since then I have always been called Bank of England as a nic-name. I even have it tatooed on my arm. me Mum even sends me birthday cards to that name"

LOL.

**Ari Goldberger** · 03-15-2003, 05:54 PM

>BTW, would that also apply to US Govt type of names such as >DepartmentOfAgriculture.com SocialSecurityAdministration.com >FederalHousingAdmin.us, etc??

I need to take a closer look at the above issue before providing a comprehensive opinion. However, at first glance, I believe those marks are different from the case of geographic names. Unlike a geographic name that can be used by anyone in a non-confusing manner for many purposes, a name like socialsecurityadministration.com refers to a specific government body. I think it's more difficult to make the case of bona fide non-confusing use. Also, there are U.S. laws specifically applicable to the use of government names. I'm heading out at the moment so will give a more comprehensive answer later, but I didn't want you to think I was ignoring you.

Also, thanks for the nice words from all. Of course, any of the good lawyers on this Board would have likely achieved the same results. I had good facts on my side, and made sure I had a 3-member panel, which was not the case in Barcelona.com.

**fizz** · 03-18-2003, 05:17 AM

WIPO has just published the administrative panel decision for madrid.com.

Nice work Ari

http://arbiter.wipo.int/domains/deci...2002-1110.html

**Ari Goldberger** · 03-18-2003, 06:44 AM

Gracias.

**Banned: timechange.com** · 03-20-2003, 09:27 PM

Originally posted by DotComCowboy
Would the same apply to national bank domains? E.g. BankOfEngland.com
+++++++++

Your defense would be what..

"gee there are alot of companies doing business as Bank of England?" or "gee, 'Bank of England' is a dictionary phrase?" or "gee, Bank of England is not distinctive?"

or perhaps my favorite defense:

"gee, I have been known as Bank of England my whole life. when I was a toddler, I lent a friend some money, and since then I have always been called Bank of England as a nic-name. I even have it tatooed on my arm. me Mum even sends me birthday cards to that name"

LOL.

Your tongue in cheek reply lacked some substantial usefulness and humor.

Since the name contains a location (England) and Madrid.com was a similar case, all I asked was if that same decision would apply.

The rest is fluff and questionable cowboy machismo.

**jberryhill** · 03-21-2003, 04:45 PM

Dotcomclownboy is not very far off the mark in his comments.

For a city to claim a trademark in the name of their city is a very different situation for a financial institution to claim a trademark in the name of their financial institution.

Your question is answered precisely on point in this case:

bankofnewzealand.com
http://arbiter.wipo.int/domains/deci...2000-0988.html

...in which the outcome was quite different than newzealand.com.

There are a lot of 'bank of X' type cases.

banqueroyaleducanada.com
http://www.disputes.org/eresolution/decisions/0147.htm

bankofameria.com
http://www.arbforum.com/domains/decisions/102615.htm

bancodechile.com
http://arbiter.wipo.int/domains/deci...2001-0693.html

**think** · 03-21-2003, 04:52 PM

Originally posted by RealNames

Congrats Ari, I sure know where to go for legal help!

BTW, would that also apply to US Govt type of names such as DepartmentOfAgriculture.com SocialSecurityAdministration.com FederalHousingAdmin.us, etc??

Would putting a site online and a notice on the top it is NOT the official govt website and perhaps a link to it (maybe even with their clickable image icon) help defend any claim or satisfy them so as to not complain?

I doubt they would pursue it anyway since they use the dot-gov extension and frequently abbreviations too. Just wondering. Thanks for your legal opinion.

Not sure that this is an applicable example but the following site is site owned by a lawyer.

www.Whitehouse.com

**Banned: timechange.com** · 03-21-2003, 05:34 PM

Originally posted by jberryhill
Dotcomclownboy is not very far off the mark in his comments.

For a city to claim a trademark in the name of their city is a very different situation for a financial institution to claim a trademark in the name of their financial institution.

Your question is answered precisely on point in this case:

bankofnewzealand.com
http://arbiter.wipo.int/domains/deci...2000-0988.html

...in which the outcome was quite different than newzealand.com.

There are a lot of 'bank of X' type cases.

banqueroyaleducanada.com
http://www.disputes.org/eresolution/decisions/0147.htm

bankofameria.com
http://www.arbforum.com/domains/decisions/102615.htm

bancodechile.com
http://arbiter.wipo.int/domains/deci...2001-0693.html

Many thanks for the pointers, I appreciate the time and effort you put to your response. Apologies to DotComCowboy for being harsh in my remarks.

PS Thank God it's Friday!