A warning to owners of “Visit” domain names.
A National Arbitration Forum has handed the domain name VisitNorway.us to Innovasjon Norge, dba Innovation Norway, which owns the domain name VisitNorway.com. The basis for transfer is that the complainant owns common law rights to the term “VisitNorway”. It has applied for a U.S. design trademark for the term, but it is still pending.
This case was a bit disturbing, so I did a little digging on “visit location” decisions. Another recent decision was VisitHouston.org, where a National Arbitration Forum panel gave the domain name to Greater Houston Convention & Visitors Bureau. Surprisingly, the convention and visitors bureau has a granted U.S. trademark for “VisitHouston”, which seems like a descriptive term to me.
In both the VisitNorway.us and VisitHouston.org cases, neither domain owner bothered to respond to the complaints. They were also only parking the domains.
That contrasts to the 2007 case for Visit-Copenhagen.com, where a WIPO panel denied The Wonderful Copenhagen Foundation’s complaint for the domain. In this case, the respondent operated a tourism web site at the domain. Furthermore, the panel found the term “Visit Copenhagen” descriptive and that the complainant had not acquired distinctiveness for the term:
There can be no doubt that the terms “visit†and “Copenhagen†are descriptive. Also the combination of both terms does not constitute a distinctive term in the context of the offering of tourist services in the broadest sense, since its general meaning is the invitation to visit Copenhagen. Based on Danish trademark law that corresponds to generally accepted principles, the term “visitcopenhagen†can therefore be considered to be a protected unregistered trademark/service mark only if it has acquired distinctiveness for the Complainant as a result of extensive use as a trademark/service mark.
It sure seems that VisitLocation.com domain names shouldn’t fall prey to adverse UDRP decisions. But it’s clear that panels will award the domains to complainants in cases where they are parked and the complainant has used the term “Visit ___” extensively. So if you hold any of these domain names, it’s probably worth putting some content on them.
Andrew Douglas says
It’s not worth putting content on VisitNorway.us, nor was it worth a UDRP. But hey, someone has to keep the laywers busy, right?
Andrew Allemann says
@ Andrew Douglas – I generally agree, but I can see how VisitForeignPlace.us makes sense as a site geared to US residents looking to travel to that place.
John Berryhill says
Andrew,
For more fun with this decision, have a look at the status and actions in the USPTO filings to which the Panel referred.
There are two parties disputing rights in this term before the Trademark Trial and Appeal Board, and this UDRP was simply a tactic for one of them to attempt to gain some sort of advantage in this directly descriptive term.
Andrew Allemann says
@ John – it looks like Innovation Norway actually abandoned its TM application, but an individual still has one pending?
Gazzip says
Not good at all, I have a few .com ones although there is no Trade Mark on them, looks like they will be jumping to the front of this years development list just in case 🙂
Thanks for the warning !!
Belmassio says
Try that crap with me and I’ll hire Berryhill or Muscovitch to smash you Trademark Lawyers and ruin your winning records….if you have one. 🙂
I don’t play UDRP games. And, if I lose, it’s going to court….even on a .US.
layinglow says
NatArb is a criminal enterprise. Anyone who has had to deal with this one woman operation know that.
Ed Muller says
How could a WIPO panel make a decision about a .US domain which according to NEXUS can only be held by entities with established legitimate interests in the United States? I am not disputing the legitimacy of the Norwegian Entity, but why does WIPO ignore the requirements of the agreement with .US before holding a hearing on this matter?
“Inovation Norway” aka Norwegian Trade Council does not appear in the New York State Department of Corporations. In attempting to register the domain name, they may in fact be able to meet Nexus 3 requirements if they do in fact conduct business in the US. Mention of this is not made in the dispute.
Andrew Allemann says
@ Ed – the complaint states “Complainant has offices in thirty countries, including the United States.”
Ed Muller says
Right, but having an office does not necessarily meet the Nexus agreement of “legitimate interests” in the US. What I am trying to point out is if WIPO is to uphold the Nexus agreement there is more due diligence involved.
Of course it is quite possible that this is not WIPO’s concern.
Andrew Allemann says
@ Ed – correct, it’s outside the scope of UDRP. I know that .us has reclaimed some domains due to nexus, but I’m not sure of the process.