Tuesday, 5 November 2013

LATAM does not stand for Latin America

Searching at the WIPO Arbitration and Mediation Center I noted a recent decision involving two parties in Chile. The dispute is about the domain name <latam.com.es>The case was brought on April, 2 2013 and decided on August 9, 2013.

Background
The claimant was the Chilean company dedicated to airline operations -- merged in 2010, LAN Chile Airlines TAM Brazil Airlines (for more information re. this merge see previous post here). The report submitted by the claimant shows that the company is the largest airline companies in Latin America and the tenth globally. The claimant runs its business under the brand LATAM, which is a registered trade mark in many jurisdictions as well as having a CTM (no. 9351271 ) in classes 35 , 37, 38 and 39 the International Classification. Moreover, they argued that the trade mark has significant reputation at least in Chile, where both the claimant and defendant are located. Moreover, it was claimed that the defendant did not hold any right or legitimate interest in the domain name and so, tried to take unfair advantage of LATAM’s reputation. Furthermore, the defendants had registered the domain name in bad faith. The claimant also added that during correspondence with the defendant, in order to reach an amicable settlement, the defendant demanded payment of USD 6,000 in order to transfer the domain name and to end the dispute. All of these factors fulfilled the requirements established in the Uniform Domain Name Dispute Resolution Policy (UDRD).

The defendant, Mr Maximiliano Arriagada was a Chilean citizen residing in Chile. As a civil engineering and business entrepreneur, he noted as an argument that he was “developing a business plan”, a project which was based on the development of an Internet portal specifically aimed at Latin America. He selected the ‘latam’ word as a commonly used word to identify the region of Latin America. He also argued that the request of USD 6,000 made to the claimant was a normal commercial negotiation after the claimant made an initial offer of USD 1,000. It was also acknowledged that while the project was developed, the domain name was connected to a website operated by Godaddy.com which included a number of advertising links to websites which offer products and services to third parties.

Conclusion
The panel ordered the domain name be transferred to the claimant due to the fact that the claimant proved the concurrence of the following three conditions (as established by the UDPR Policy):
a)The domain name was identical or confusingly similar to the claimant’s trade mark;
b) the defendant did not hold any rights or legitimate interests in respect of the said domain name; and
c) domain name was being used in bad faith.

Source WIPO.

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