Gets a Win for Geo Domain Owners — Mrs Jello

Domainer wins case over geographic domain name brought by petroleum firm.

What do you do when the name of a place has also been incorporated into a business name?

This was the issue in a recent UDRP case involving a Brazilian petroleum firm and the domainer commonly known as “Mrs Jello”.

Ipiranga Produtos de Petróleo S.A. filed the case in an effort to get the domain name ipiranga.com.

Ipiranga happens to be the name of a famous river in Brazil as well as a historical district of São Paulo, Brazil.

The three person WIPO panel made a detailed argument regarding place names that are also brand names:

The incorporation of the name “Ipiranga” into the trademark of what is now a sizable oil firm might be compared with other examples such as Sudan Petroleum Firm; British Petroleum (BP); Gulf Oil International; Royal Dutch Shell; China National Petroleum Corporation; and Saudi Aramco. It is recognised, for the Complainant, that the location “Ipiranga” may now have a diminished meaning as a source of the Complainant’s products or activities. Nevertheless, it is unlikely in the context that a firm name could grant exclusive rights to a geographical term such as Sudan, British, Dutch etc., or to a common dictionary word such as “shell” or “petroleum” unless used in a trademark sense in conflict with the trademark holder. Not even the use of a geographical descriptor standing alone, such as the one-time marketing of the brand “British” standing alone by British Airways, or “Danish” for bacon, could necessarily grant the trademark holder exclusive rights in the geographical description except in strictly a trademark sense. Only where a place name is associated more readily with its product than with the place, for instance Champagne, might the word arguably be claimed to stand alone as a trademark for the product.

This is well written and can be used in similar cases in the future.

It also didn’t help Ipiranga that it registered ipiranga.com.br back in 1996. Ipiranga.com wasn’t registered until 2003 and then the firm didn’t even send a cease and desist letter until 2010, prompting the panel to write:

…the Panel notes that the rights the Complainant asserts so strongly were slept upon for at least the 7 years between the registration of the disputed domain name and the issuance of the cease and desist letter

Mrs Jello won the case.