Yesterday a federal judge in Washington, DC ruled that the sovereign state of Libya and its embassy in the United States could not prevent a private individual from registering and maintaining the domain names embassyoflibya.org, libyaembassy.com, libyaembassy.org, and libyanembassy.com. Libya v. Miski, No. 1:06-cv-02046 (D. D.C. Sept. 6, 2012).
The defendant, Ahmad Miski, operates a business which involves expediting the lodging and processing of documents filed with the Embassy of Libya in Washington. The Libyan government and its American embassy had previously used the domain name LibyanBureau.com subsequently began using LibyaUSAEmbassy.com. They sued Miski, claiming that his use of the domain names infringed their unregistered trademarks in the terms “Embassy of Libya” and “Libyan Embassy,” which they argued were protectable source identifiers for the document legalization services provided in the United States by the Libyan government. They also alleged that Miski’s actions violated the Anticybersquatting Consumer Protection Act.
In yesterday’s decision, after a bench trial, the court rejected the Libyan government plaintiffs’ claims. The court found that the plaintiffs had no protectable trademark rights in “Embassy of Libya” or “Libyan Embassy,” because the terms were merely descriptive, and there was no evidence that the words had acquired secondary meaning. In the absence of admissible testimony regarding public perceptions of the terms, the court wrote, it could not be assumed that the public would associate those terms with the legalization services provided by the government of Libya.
The court also concluded “that the length and purpose of the [U.S. government’s 1986] severing of diplomatic ties and [its] imposition of sanctions” on Libya until recently “compels a finding that the plaintiffs have failed to show secondary meaning.” The court reasoned that, as a result of the severance of diplomatic relations and sanctions, the Libyan embassy in the United States had been unable to provide legalization services for many years: “[T]he services in question were not provided (and, indeed, could not be) during the sanctions period. The sanctions period thus interrupted the purported continuous use of the alleged marks” that is required to prove secondary meaning.