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Recent Case Notes & Commentary

REPUTATION OF MONUMENT DOES NOT EQUAL REPUTATION OF TRADEMARK


Patronato de la Alhambra y el Generalife v. Domain Admin, Indefinite Ltd

 

WIPO Case No.: D2024-0182

 

March 29, 2024

 

RATIO

 

Relief was denied to the Complainant in this case on the grounds that it had failed to establish that the Respondent had registered the domain name <alhambra.com> in bad faith and that the domain name was being used by the Respondent in bad faith.

 

BACKGROUND

 

Patronato de la Alhambra y el Generalife (“the Complainant”), is an autonomous administrative body based in Andalusia, Spain created in 1985, and entrusted with the protection, administration and conservation of the Monumental Complex of the Alhambra and the Generalife, which was declared a World Heritage site by UNESCO in 1984. The Complainant maintains a portfolio of registered trademarks consisting of, or containing, the ALHAMBRA mark. For instance, the graphical representation of the mark ALHAMBRA is registered in favour of the Complainant under EUIPO trademark no. 7226897, in several trademark classes. According to the evidence presented before the Panel, “Alhambra” can refer to the monument with which the Complainant is entrusted. Even though the name is found in several other instances, including geographical locations in USA as well as multiple theatres and entertainment complexes in Denmark, France, Israel, United Kingdom, and United States, as far as the Panel is aware, the term “Alhambra” most probably originates with the said monument, which dates from the thirteenth century. The derivation of its name is from the Arabic “al hamra” reflecting the colour of the monument’s walls.

 

Domain Admin, Indefinite Ltd (“the Respondent”) is a Maltese company which describes itself as a professional domain name investment firm.  The Respondent acquired the disputed domain name <alhambra.com> on or about December 15, 2023.

 

The Complainant has stated that the disputed domain name was registered after the date that the Complainant was created, after the date of declaration of World Heritage Site status by UNESCO, and after the date of some of the Complainant’s trademarks. The Complainant has asserted that it has been allocated a budget of EUR 120,000 for publicity. The Complainant has also stated that it has no connection to the Respondent, and that the Respondent is preventing the Complainant from using its trademark as a “.com” domain name, which is the most commercially relevant suffix. The Complainant has contended that the Respondent has no interest other than to make an unfair profit at the expense of the reputation of the Complainant’s mark.

 

The Respondent has contended that it purchased the disputed domain name within a portfolio of common, descriptive, and generic terms that are of general appeal and not due to any value derived from the Complainant’s trademarks. The Respondent has contended that the Complainant’s rights in its “Alhambra” trademarks do not prevent a domain name dealer from using the disputed domain name for nominative fair use, or for pay-per-click advertising, or as an investment corresponding to a common descriptive word and historical landmark. The Respondent has alleged that the Complainant has provided no evidence of its, or its trademark’s renown but has conflated the monument’s renown with itself and its marks. The Respondent asserted that several other parties coexist and share the word “Alhambra”, and the Respondent did not target the Complainant while acquiring the disputed domain name.

 

DECISION

 

The Panelists reviewed the matter in accordance with the UDRP Rules.


Identical and/or confusingly similar

 

The Panelists found that the Complainant had established its rights in the trademark “Alhambra”, and that any graphical elements of the trademark are readily separable from the textual element for comparison purposes. The Panelists found that the disputed domain name <alhambra.com> included the entirety of the “Alhambra” trademark. Therefore, the disputed domain name was indeed identical or confusingly similar to the Complainant’s trademark and therefore the first element in a domain dispute matter was satisfied.


Rights or legitimate interests

 

Considering the Panel’s conclusions with regard to registration of the Disputed Domain Name and Use in Bad Faith in the following paragraph, there was no need to make a finding under this second element.

 

Registration and Use in Bad Faith

 

The Panelists stated that while the reputation of the Alhambra monument was not in doubt, awareness of the monument does not necessarily amount to awareness of the Complainant or of its trademark, and fame of the monument does not necessarily amount to fame of the Complainant’s trademark. Further, there was no evidence that the Complainant would be entitled to conflate such reputation and goodwill as it may have built up in its trademark since being tasked with protection of the monument in 1985 with the reputation of the monument itself. The Respondent had also produced evidence that it had undertaken sufficient public searches to determine whether “Alhambra” denoted a particular rights holder.

 

The Panelists found that “Alhambra” means many things to many people, and it could just as easily be used to refer to a new product, new business, or any entity which wished to call to mind a character of sophistication, opulence or grandeur. While many usages of the term “Alhambra” originate from the monument, the Panelists accepted the Respondent’s submission that the Complainant could not claim exclusivity on such name.

 

Therefore, the Complainant had failed to satisfy the third element in a domain dispute matter.

 

ORDER

 

Having failed to establish all the three elements necessary in a domain disputes matter, relief was denied to the Complainant.

 

REVERSE DOMAIN NAME HIJACKING (“RDNH”)

 

The Panelists denied the Respondent’s prayer for a finding of RDNH, since they concluded that the present action was not brought by the Complainant in bad faith since it is the legal custodian for its eponymous world-famous monument and is the owner of related trademarks. The Complaint had failed to produce adequate evidence to substantiate its case, but such failure does not equal bad faith.

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