Domain Name Registration Revoked Based On Prior Trademark Rights

• Published date: 21 January 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Fross Zelnick Lehrman & Zissu, PC
• Author: Ms Alejandra Camacho Luna

Banmédica S.A. v. Arbitrator, Corte de Apelaciones de Santiago, Chile. Case number C-14654-2019 (decision dated July 1, 2020).

On July 1, 2020, the Chilean Court of Appeal overturned an arbitrator's decision granting the domain name "multimed.cl" due to Banamerica S.A. ("BSA")'s prior trademark rights. This decision holds that domain names are an extension of trademarks on the Internet and illustrates the limitations of the "first-come, first-serve" principle in domain-name disputes in Chile.

Banamerica S.A. ("BSA") filed a petition to revoke the registration of the domain name "multimed.cl" by Vit Vrba ("VV") before the Network Information Center in Chile, the department that administers the registration of ".cl" domain names (also known as "NIC Chile"). BSA's petition was based on its prior trademark registration for MULTIMED for clinic and medical center services in Class 44.

Any dispute involving a ".cl" domain name is resolved through an arbitration proceeding before NIC Chile. BSA submitted evidence (i) that BSA was the legitimate owner of the trademark registration for MULTIMED, (ii) use of the mark MULTIMED by BSA, and (iii) VV's use of the domain name "multimed.cl" for a medical center. However, the arbitrator rejected BSA's petition on the ground that a prior trademark registration for MULTIMED was not sufficient to prove that BSA had a better right than VV to the disputed domain name. Under the "first-come, first-serve" principle, VV had the right to use the domain name "multimed.cl" given that it was the first party to register it.

Under the CL Domain...