WIPO Panel splits on descriptiveness of bocaresorts.com

An arbitration panel of the World Intellectual Property Organization has decided 2-1 in favor of Complainant Boca Raton Resort & Club in an action under the Uniform Domain Name Dispute Resolution Policy over the domain name bocaresorts.com.

In 1995, the Complainant registered the domain name bocaresort.com for use in connection with resort facilities it maintains in Boca Raton, Florida. In 2002, Respondent GNO, Inc. registered bocaresorts.com to develop a website providing links for media, travel, fishing, events and real estate which are “under development”. Complainant asserted that Respondent’s use of the similar domain name was likely to cause confusion, that Respondent had no legitimate rights in the domain name, and that the domain name had been registered in bad faith.

Respondent argued that it did not register the domain name in bad faith because it believed the domain name to be descriptive of resorts in a resort city. Given such descriptiveness, Respondent argued, it had no predatory intent in registering the domain name. In analyzing the element of bad faith, the majority of the Panel concluded that the Respondent “knew, or should have known, about Complainant’s ‘www.bocaresort.com’ website and that he pluralized that name to benefit from web traffic generated by unsuspecting potential users of Complainant’s website.”

The Presiding Panelist, Dennis Foster, disagreed with the majority’s conclusion, and issued a dissent that addressed the issue of bad faith. Foster asserted that the Respondent was “entitled to believe that the phrase ‘Boca Resorts’ is geographically descriptive and means resorts in the city of Boca Raton, Florida, which is primarily a city full of resorts catering to a public seeking leisure.” He compared it to other activities of well-known cities:

“It is comparable to trying to claim to have become ‘the Vegas casino’ in Las Vegas or ‘the Washington, D.C. lobbyist’. These are all common geographically descriptive terms that the public, in good faith, is entitled to believe are free for all to use because they describe goods or services found in abundance from many providers in the named city.”

Panthers BRHC L.L.C. v. Gregg Ostrick/GNO, Inc., Case No. D2005-0681 (September 1, 2005).