202107.16

UDRP on parramatta.com: the difficulty of requesting the transfer of a geographical name

In disputes between, on the one hand, an administrative entity defined by geographical boundaries (city, region, or state) and, on the other hand, the holder of a domain name composed, in whole or in part, of the name of this administrative entity, out-of-court decisions resulting from the regulation governing generic top-level domains (gTLDs) are rendered, almost systematically, in favor of the defendant.

As a reminder, the success of a UDRP procedure depends on the ability, for the claimant, to demonstrate, cumulatively, i) that he is the owner of a trademark, ii) that the disputed domain name is identical or similar to this trademark, iii) that the defendant has no right or legitimate interest in the said domain name, iv) that he registered the domain name in bad faith and v) that he also uses it in bad faith.

Often the failure of the claimant is due to the lack of a trademark. In such a situation, the UDRP complaint is flawed from the start. In the presence of a trademark, the claimant remains required to prove that the defendant has no right or legitimate interest in the disputed domain name and that he acted in bad faith. The burden is heavy for the claimant, confronted with the probatio diabolica. This is why the burden of proof can easily be reversed. However, in the context of a dispute over a geographical name, defense finds its foundations in fundamental rights, starting with freedom of expression and freedom of trade. Trying to get such a domain name transferred through UDRP is utopian.

Recently, the city of Parramatta, on the outskirts of Sydney, initiated proceedings against the domain name parramatta.com, registered in 2004 and last acquired in 2012. Unsurprisingly, the city of Parramatta did not succeed. (WIPO, D2021-0773, City of Parramatta Council v. Hayden Quarman, May 12, 2021). However, the claimant was in a relatively favorable position since, unlike most administrative bodies that have entered into such proceedings, the claimant brandished several marks incorporating the name “Parramatta,” one of which dates from 1983. However, the panelist wisely made it clear that this trademark was limited in its scope, its certificate bearing the inscription: “Registration of this trade mark shall give no right to the exclusive use of the geographical name PARRAMATTA NSW”. Moreover, the panelist added that the claimant had not demonstrated that its trademark “Parramatta” had acquired a secondary meaning. As a result, the request was rejected. In addition, the panelist considered it unnecessary to address issues relating to law or legitimate interest, on the one hand, and bad faith, on the other. As the conditions are cumulative, some panelists consider that it would be superfluous to extend the reasoning. In the present case, it would have been discovered that the defendant could not demonstrate any website initiation and, thanks to Archive.org, that the domain name was for sale at least since 2014, enough to question the real motivations of the domain name holder, clearly far from a use honestly relating to freedom of expression or freedom of trade.

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