The National Arbitration Forum, like the World Intellectual
Property Organisation, is an ICANN approved domain name dispute
resolution provider. A complaint was brought before it by Pueblo
International Inc., supermarket chain which had a US registered
trade mark for the word “Pueblo”.
It argued that an internet service company, using the name
Virtual City Visions or VCV, registered the domain name pueblo.org
in bad faith, and that the name should be transferred to the
supermarket chain. The name was registered, but not in use. VCV
said the name would be used in future for a site functioning as a
guide for the City of Pueblo, Colorado and that the domain name was
registered before the supermarket’s trade mark.
The panellist, Irving H. Perluss, a retired judge, refused the
transfer request, saying “the top-level domain ‘org’ customarily is
in usage by non-profit or ‘miscellaneous entities and not by a
supermarket chain.” He observed that the chain should use the .com
or .net names and observed that ICANN’s proposal to open new top
level domains “was to permit more domain names to be available to
companies with the same name.”
In two separate cases, Perluss found that Pueblo.com should not
be transferred from another company because the failure to use the
name was insufficient to evidence bad faith use of it; however,
another arbitrator ordered the transfer of Pueblo.net, in this case
also from VCV, to the supermarket chain.
