A company owned by Madrid City Council, which promotes the city and its image, took proceedings before the World Intellectual Property Organisation (WIPO)'s Arbitration and Mediation Centre. The registrant of Madrid.com was Easylink Services Corporation, which also offers e-mail addresses at London.com, Paris.com, Munich.com, Berlin.com and Dublin.com.
A key argument was that the City's company owned Spanish registered trademarks incorporating the word Madrid – and the City's company argued that Easylink's name was identical or confusingly similar to these marks. It said that Easylink's services have nothing to do with the city – and that this is "detrimental to the internet user" who wants information on the city of Madrid. Easylink's service was described as a mere "gimmick".
However, the panel of three arbitrators pointed out that the registered trade marks did not include the word Madrid in isolation – and "the use of MADRID as a geographical indicator is not a trade mark or service mark use".
Distinguishing the case from that of Barcelona.com, the panel wrote that that case concerned different circumstances: the City of Barcelona "relied principally on a trade mark for BARCELONA, alone, arguing that it was 'identical' to barcelona.com." That case was decided by WIPO and was then re-tried by a US court, but again the City won.
As for the complaint that users would expect to find information about the city at madrid.com, the panel wrote that this submission was "based on the mistaken presumption that domain names comprising the name of a town, city, county or country, per se, are the property of the legal entity of the geographical area".
The page at madrid.com now carries a notice: "This site and domain are not affiliated with or owned by any government or municipal authority"
The full text of the ruling in favour of Easylink is available at this page of WIPO's site.
