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December 14, 2010 / Nate Harris

“Havana” Translates to UDRP Win for Owner of Havanna.com

Summary of Havanna S.A. v. Brendhan Hight, Mdnh Inc

(WIPO Case No. D2010-1652)

Filed: September 30, 2010; Decided: November 26, 2010 (Panelists: Ross Carson, Pablo A. Palazzi, and Wolter Wefers Bettink)

Disputed domain name: <havanna.com>

havanna.com

The Parties

For over 70 years, Complainant Havanna S.A. (“Havanna”) or its predecessor has baked and sold confections in South America as well as parts of Europe. Since 1975, it has also operated over 200 cafes throughout South America and Spain. Havanna has also owned a U.S. Trademark Registration for HAVANNA since 1982.

Respondent Brendhan Hight is an IT employee of Respondent MDNH Inc. (collectively “MDNH”). MDNH is in the business of registering domain names comprising common generic terms and short phrases. It owns thousands of domain names, including the disputed domain name, which was originally registered in 2000 and acquired by MDNH in 2005.

Identical or Confusingly Similar

“The Panel finds that Complainant has proven that the disputed domain name <havanna.com> comprised of the term ‘havanna’ and the top level domain descriptor ‘.com’ is confusingly similar to Complainant’s registered trademark HAVANNA.” [Isn’t it identical?]

Rights or Legitimate Interest

Havanna argues that MDNH cannot be making a bona fide use of the term “Havanna” because the word has no meaning apart from Havanna’s business. According to Havanna, MDNH’s claim that the term refers to Havana in Cuba are bogus, since the term is spelled differently.

MDNH points out, however, that in many European languages the name of the Cuban city translates to “Havanna.” Thus, to millions of people around the world, the disputed domain name refers to the Cuban city, and in fact the disputed domain has links to travel sites for people interested in traveling to Cuba.

The Panel agrees with MDNH, finding that there is no evidence that MDNH should have known of Havanna’s rights at the time it registered the disputed domain in 2005. Thus, “[t]he Panel finds that generic use of the disputed domain name in association with links to the City of Havana and Cuba is a legitimate interest.”

Bad Faith

As Havanna has not shown MDNH’s lack of rights or legitimate interest, the Panel does not proceed to this prong of the test.

Decision

The Complaint is denied.

Commentary

This is a rather long decision that apparently goes through the entire complaint and response in detail. While it could have been edited down substantially, I think the outcome is sound.

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