Aberdeen Airport Limited, which operates the airport facility near Aberdeen Scotland, sought transfer of the domain name <aberdeenairport.com> from a respondent located in the United Arab Emirates. 

The thorough decision by Panelist Warwick Smith considers the requirements under UK law for establishing common law trademark rights in a place name.  BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, Case No. D2004-0717 (WIPO October 21, 2004).

The case is a good example of the well-reasoned cases that require Complainants to prove common law rights to obtain relief, as opposed to merely accepting a claim of rights because the domain name happens to match the name of a person or business.

Finding for the Complainant, the Panel states in part:

Common Law Trade Marks and Service Marks – General

What must be proved to establish a common law trademark in the United Kingdom, was discussed by the Panel in WIPO Case No. D2004-0182; Luis Cobos v. West, North. In that case the Panel said that “… a common law trademark is a trademark … the use of which by an unauthorized third party can be restrained in a passing off action. …To succeed, the complainant would have to establish a reputation and goodwill in the United Kingdom under his name …; he would have to prove that the third party’s use of his name would be likely to lead to deception in the marketplace … and he would have to prove a likelihood of consequential damage to his goodwill.”

Place Names as Trademarks or Service Marks

There have been numerous WIPO Panel decisions which have considered this issue. The Panel has found one of the most helpful statements of principle in WIPO Case No. D2001-0047; Brisbane City Council v. Warren Bolton Consulting Pty Limited, where the Panel had to decide whether the city authority in Brisbane, Australia, had trademark or service mark rights in the expression “brisbanecity”. The Panel referred to Port of Helsinki v. Paragon International Projects Ltd., WIPO Cases No. D2001-0002 and City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001, and said:

“In both of the above two cases, the Panel was of the view that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right to the name of that area. This Administrative Panel agrees with that view. In both of the above two cases, the Panel did recognize that, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trademark right in the name of that area. Again, this administrative Panel agrees with that view. Thus, the important issue in a case such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade”.

That test seems to be generally consistent with the requirement for registration of a place name as a trademark or service mark, in section 3(1)(c) of the Trade Marks Act 1994 (UK) – a “distinctive character”, derived from the applicant’s use of the mark.

The quoted passage from the Brisbane City case provides an adequate statement of general principle – the rest depends on the facts of this case. The question in this case, then, is: has the expression “Aberdeen Airport” been used in trade to distinguish the Complainants’ goods or services from the goods or services of other traders?

Airport Cases

In one respect, this case is different from the Brisbane City case, and other cases dealing with domain names which are also the names of cities or countries. “Aberdeen Airport” is not just the name of a city – the expression refers to a particular facility, the airport, which serves that city. It appears also that the airport is the only commercial airport which serves the city of Aberdeen (neither party has suggested that there is another).

The Panel has therefore considered two “airport” panel decisions. In WIPO Case No. D2000-0638, Manchester Airport plc v. Club Club Limited, the domain name at issue was “<manchesterairport.com>”. The three-member Panel was divided on whether the complainant had established rights in the expression “Manchester Airport”. The presiding Panelist took the view that the complainant had established rights in “Manchester Airport”, being the name under which it trades, and that that expression was an unregistered trademark or service mark of the Complainant. The majority of the Panel took the view that the Complainant had not provided arguments or evidence to establish a common law trademark. The complaint in that case accordingly failed.

The second “airport” decision the Panel has considered, is a decision of an Independent Expert in a case decided under dispute resolution policy of the (United Kingdom) Nominet UK Dispute Resolution Service – Case No DRS01009 – Humberside International Airport Limited v. Lincolnshire Trading Company Limited (date of decision July 10, 2002). While some care is necessary having regard to the different wording of the Nominet Dispute Resolution Service Policy, that policy does require that a complainant must show that it has rights in respect of a name or mark which is identical or similar to the domain name in issue.

The Independent Expert in that case found that the complainant had proved sufficient use of the HUMBERSIDE INTERNATIONAL AIRPORT name to give it unregistered trademark rights.

The decision goes on to consider the evidence presented in detail, finding it sufficient to establish common law rights.