Pueblo International, Inc. v. Pueblo On-Line
Claim Number: FA0007000095250

Everyone once in a while you read a really good UDRP decision, and this
is one of them.  The arbitrator, in this case retired Judge Irving H.
Perluss, who was acting on behalf of the National Arbitration Forum,
rejected the domain name owners concession that was identical
to the service mark of a supermarket chain.  Indeed, Judge Perluss said
that was clearly different, because the top level domain,
.org, was not the same as the .com domain that would normally be
associated with a supermarket.  Moreover, the Judge discussed in some
detail the 1997 IAHC plan to create 7 new gTLDs, which he said were
designed to permit more than one firm to use the same name in different
gTLDs.  The decision itself should be useful for those applying for new
TLDs, who are faced with questions regarding how they will address
trademark concerns.  Jamie 

	From the Decision:

	Identical and/or Confusingly Similar

	The Panelist does not understand, nor is he willing to accept,
Respondent's concession that its domain name is identical to
Complainant's service mark, for it is not when appropriate domain names
are considered. This is because a domain name combination must include a
top-level domain which can be "com.," "net.," "org.," "gov.," or "edu.,"
among others. The combination also must include a second-level domain,
which can be any word not already reserved in combination with the
top-level domain. [See, Avery Dennison Corporation v. Jerry Sumpton (9th
Cir. 1999) 189 F.3d 868, 871.

	The top-level domain "org" customarily is in usage by non-profit or
"miscellaneous" entities and not by a supermarket chain such as

	Professor McCarthy teaches us in 4 McCarthy (4th ed. 1996) Trademarks
and Unfair Competition, 25:72.1, as follows:   

      [text appears to be missing from the html version]

	The 1997 IAHC (Internet International Ad Hoc Committee) recommended the
adoption worldwide of seven new generic top level domains (gTLDs) in
addition to existing ones:

        .firm (for companies) 

        .shop (goods for sale) 

        .web (world wide web activities) 

        .arts (culture) 

        .rec (recreation) 

        .info (information) 

        .nom (individuals? web sites). 

This new agreement is called the Generic Top Level Domain Memorandum of
Understanding (gTLD-MoU) and was published on February 4, 1997. While
implementation of the seven new top level domains was originally
scheduled for 1998, transfer of Internet authority to ICANN in 1999 put
that plan on hold. One reason for the opening of new top level domains
was to permit more domain names to be available to companies with the
same name. Under trademark law, several concurrent users can legally
coexist in different territories (parts of the U.S. or in separate
nations) or in different product and service markets. But there can only
be one domain name. Thus, although there are several concurrent users of
marks like ACME, BEST or NATIONAL, there can only be one ","
"," and "" The new gTLDs would permit, for example,
four different companies using the name or mark ACME to have "acme.firm"
(for a furniture company); "acme.web" (for an Internet service
provider); "acme.rec" (for an owner of a soccer team); and ""
(for a trade journal). [Emphasis supplied.]

	Thus, by a parity of reason, it must follow that the domain name of
"PUEBLO.ORG" is not identical to the domain name of "PUEBLO.COM," or
"PUEBLO.NET," either of which would be a more appropriate domain name by
custom and usage for an enterprise such as Complainant?s. [See, Avery
Dennison Corporation v. Jerry Sumpton, supra, at 880-881.]