26th Feb 2003

WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Empresa Municipal Promoción Madrid S.A. v. Easylink Services Corporation

Case No. D2002-1110

 

1. The Parties

The Complainant is Empresa Municipal Promoción Madrid S.A. of Madrid, Spain.

The Respondent is Easylink Services Corporation of Edison, NJ, United States of America.

 

2. The Domain Name and Registrar

The domain name that is the subject of the Complaint is <madrid.com>.

The Registrar is Register.com.

 

3. Procedural History

The Complaint was received by WIPO Arbitration and Mediation Center (“the Center”) by e-mail on December 4, 2002. Hard copies with Annexes were received on December 9, 2002. On December 6, 2002, the Center acknowledged receipt of the Complaint. On December 10, 2002, the Center e-mailed the Complainant advising of deficiencies. On December 16, 2002, the Center e-mailed the Complainant advising that an Amendment of the Complaint must be filed with the Center. The Complainant e-mailed the Amendment to the Complaint to the Center on December 16, 2002, followed by delivery of one original and four hard copies on December 19, 2002.

On December 6, 2002, the Center forwarded a Request for Registrar Verification to the Registrar, Register.com. On December 9, 2002, the Registrar forwarded a completed Registrar Verification to the Center.

On December 19, 2002, the Center completed the Formal Requirements Compliance Checklist. On December 19, 2002, the Center forwarded the Complaint and Amended Complaint to the Respondent by e-mail and forwarded hard copies of the documents and Annexes to the Respondent by courier. On January 1, 2003, the Respondent

e-mailed the Center requesting an extension of time to file the Response. On January 6, 2003, the Center granted an extension of time until January 12, 2003, for the Respondent to file the Response. On January 13, 2003, the Respondent filed the Response and Annexes by e-mail. One original and four hard copies of the Response were received by the Center on January 15, 2003. On January 14, 2003, the Center forwarded the Respondent the Acknowledgement of Receipt of Response and a request for additional fees. On January 14, 2003, the Center forwarded a Request for Candidates to the Complainant and a request for additional fees to the Complainant.

On January 29, 2003, the Center forwarded a Notification of Panelist Appointment to the parties by e-mail. On January 29, 2003, the Center requested the Complainant to send one additional copy of the Complaint with Annexes to the Center. On January 30, 2003, the Complainant advised the Center that it was complying with the Center’s request for one additional copy of the Complaint with Annexes. On February 12, 2003, the Center forwarded the parties the Notification of Appointment of Administrative Panel and projected decision date.

The Notification of Appointment notified the parties that an Administrative Panel has been appointed in this case, comprising the following persons: Ross Carson, Presiding Panelist, Paz Soler Masota, Panelist and Geert Glas, Panelist. The Center advised that each of the Panelists have submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center.

 

4. Factual Background

The Complainant is a public company (Annex No. 3, Complaint) owned entirely by the Madrid City Council (Spain), the business purpose of which is: “the sponsoring and promotion of the City of Madrid and its image, in all areas, with particular emphasis on activities that favour institutional projection thereof, at both national and international level, in collaboration with public or private initiatives, using new technologies to achieve this aim.”

The Complainant is the registrant of a number of trademarks registered in Spain. Particulars of the trademark registrations attached as Annex 4 to the Complaint are as follows:

PROMOTION MADRID design, file numbers 2457914 to 2457958 registered in classes 1 to 45 on July 22, 2002.

MADRID LIMPIO, MADRID FACIL, file numbers 1664538 and 166454l filed on October 30, 1991, and registered in classes l6 and 41 on October 5, 1993, and October 5, 1992, respectively. The owner is shown as Excmo. Ayuntamiento de Madrid.

MADRID, CIUDAD HOSTIL CONTRA LA DROGA, file numbers 1769378 to 1769379 filed on June 28, 1993, and registered on March 5, 1996, in classes 6 and 16, respectively, and file numbers 1769380 to 1769383 filed on June 28, 1993, and registered on January 5, 1995, in classes 35, 38, 41 and 42, respectively. The owner is shown as Excmo. Ayuntamiento de Madrid.

MADRID CIUDAD 2000, file numbers 2157897 to 2157902 filed on April 23, 1998, in classes 6,16,35, 38, 41 and 42 and registered on or about November 20, 1998. The owner is shown as Excmo. Ayuntamiento de Madrid.

LINEA MADRID, file number 2160962 filed on May 11, 1998, in class 16 and registered on November 20, 1998. The owner of the registered trademark is shown as Ayuntamiento de Madrid.

The Complainant is the owner of a number of trademark applications filed in Spain in the year 2002, for the trademarks ESMADRID, ENMADRID and PORTAL MADRID design. The applications were in a number of classes and particulars of these trademark applications are found in Complainant’s Annex No. 5.

The Complainant is the applicant named in trademark applications filed at the Office for the Harmonization of the Internal Market (OHIM) for the trademarks ESMADRID, ENMADRID, PROMOCION MADRID and Design and PORTAL MADRID design. The above noted trademarks were filed in the latter part of the year 2002, each for a number of classes as set out in Annex No. 6 to the Complaint. The Complainant is the registrant of the domain name <promocionmadrid.com> registered on January 18, 2002. (Annex No. 7, Complaint). The Complainant submits it is also the owner of numerous registered domain names for ‘esmadrid’ (.org, .net, .biz, .info, .tv and .ws); ‘enmadrid’ (.org, .net, .biz, .tv and .ws); ‘portalmadrid’ (.net, .org, .biz, .info, .tr and .ws); and ‘promocionmadrid’ (.com, .net, .org, .biz, .info, .tv and .ws). The only particulars relating to a domain name registration in Annex No. 7 to the Complaint relate to the domain name <promocionmadrid.com> referred to above.

The Respondent is an electronic transaction delivery service that powers the exchange of information between enterprises and their suppliers, distributors, retailers and consumers (Gorman Affidvit annexed as Exhibit 4 to the Response).

 

5. Parties’ Contentions

A. Complainant

(i) The Complainant’s first contention is that the domain name is identical to the name in dispute of the city of Madrid (capital of Spain) and confusingly similar to the registered and unregistered trademarks or service marks referred to in paragraph 4 above in which the Complainant owns rights. The Complainant submits that the domain name in dispute is registered by an American company with no connection whatsoever with the capital of Spain, which will no doubt lead to error when Internet users attempt to seek information on the city of Madrid, to the detriment of the Complainant and the City Council of the city of Madrid.

The Complainant also submits that reference should be made to the TRIPS Agreement to protect the city of Madrid and its Town Council, represented here by the Complainant, from the damage being caused by occupation of the <madrid.com> domain name. The Complainant consulted “WHOIS” and verified that almost all the top level domains pertaining to Madrid, .info, .org, .biz, .net, .tv, etc. are registered by third parties. The Complainant reserves its rights to proceed against owners of the above referred to domain names commencing with ‘Madrid’.

(ii) The Complainant submits that the Respondent has absolutely no acquired right or legal standing to own the <madrid.com> domain name. It has no registered trademark that contains the word MADRID or refers thereto. The Respondent does not market any products which, given their nature, have the slightest connection with this city, nor does it provide services known to any person or institution that could grant any right to the name MADRID.

Initially, the Respondent merely used the “www.madrid.com” address to redirect those Internet users who accessed the URL assigned to “www.hotelsl.com,” where the possibility was offered to make hotel bookings in Spain. An even more recent query showed that behind the domain name in dispute was the URL “http//www.madrid.com/LOTTERY/index.en.cgi” which is no more than a bridge page to others, such as “www1.londontown.com”; “www.newyorkhotels.com” and “paris.parishotels.com,” which offer presumed hotel booking services (Annex No. 8. Complaint).

The Complainant contends that their search in the Verisign WHOIS database shows that the Respondent, “EASYLINK CORPORATION,” has also registered the following domains names:

<berlin.com> (June 23, 1995);
<london.com> (November 7, 1997);
<dublin.com> (November 7, 1997);
<munich.com> (November 19, 1997);
<paris.com> (February 13, 2002).

The Complainant states that the above noted domain names redirect possible users to various pages shown in the preceding paragraph presumably intended for hotel bookings.

The Complainant submits that the Respondent is a company whose business is evident: the registration of potentially profitable domain names, because they clearly represent some of the most important cities in Europe, for possible use as a “gimmick” to recruit Internet users who wish to obtain information on those cities, or merely to sell these domain names to the lawful owners who wish to claim them.

The Complainant acknowledges the existence of other towns that bear the name Madrid, but submits that the fame of the capital of Spain has a geographic, political, tourism and historical relevance far higher than other towns with the same name, not only because it is the first, but also because it is the capital of the Spanish nation and one of the principal cities of Europe.

(iii) The Complainant submits that the domain name was registered and is being used in bad faith.

The Complainant states that at the present time, the URL “www.madrid.com” offers no specific service or product that associates the Respondent with the city of Madrid, which is, to a certain extent, detrimental to the Internet user who wishes to obtain information on the city of Madrid and on the services offered thereby.

The Complainant submits that the Respondent’s conduct is clearly a crass attempt to side-step paragraph 4 (c)(i) of the Policy, by attempting to give a false appearance of a minimum use of the domain.

There is no connection between the Respondent and the city of Madrid, as Easylink Services Corporation is not known by the name of Madrid, it is not headquartered in any town with that name, nor does it offer products of services that have any relation to Madrid. The only reference Respondent makes refers to hotel bookings in various other large European cities whose domains it has usurped.

Accordingly, the fact that it occupies a domain as significant as <madrid.com> for use merely as a link to other web pages leads us to suspect that this is no more than a way to keep the domain occupied by limiting use and enjoyment by its lawful owners.

The Complainant states that, prior to filing the Complaint, it attempted to resolve this dispute amicably, through phone conversations and by conventional mail, without achieving any positive results. The Complainant, both by phone and by mail, requested assignment of the domain name in dispute and advised that Complainant would assume payment of administrative expenses incurred in the registration and maintenance of the domain. The Complainant states that Respondent replied by phone that they would only consider assigning the domain on the basis of “…a price with more than seven digits….” Complainant then requested Respondent by letter to assign the domain name in dispute. Respondent ignored the letter, kept the domain name blocked and occupied in such banal tasks as redirecting and thus preventing its lawful use by Complainant.

The Complainant submits that the domain name was registered in absolute bad faith and for the sole aim of obtaining unfair and fraudulent enrichment from the subsequent sale of that domain name to its lawful owners, rental to the owners of other pages so that they can profit from hotel bookings and, if this was not possible, merely to keep it blocked, without the slightest concern over the possibility of damaging the rights and interests of the city of Madrid nor the confusion created among Internet users by attracting them to a page with a clear profit-making end when attempting to sell them hotel services, thus breaching paragraph 2, paragraph 4(a) and paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy.

B. Respondent

1. The Respondent submits that the domain name in dispute is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The, Complainant does not have a registered trademark for the word MADRID, standing alone. The Complainant is the owner of trademark or service mark phrases containing the geographic word and it is well established that a trademark phrase including a geographic word does not provide the holder with enforceable rights to the geographic word alone. The city name MADRID is subject to substantial third party use. A <google.com> search for the word “MADRID” yielded over 8.4 million web pages containing the term (Exhibit l, Response). There are over 2000 registered domain names (.com, .net and .org) which incorporate ‘madrid’ (Exhibit 3, Response). Complainant’s trademark registrations and trademark applications which postdate the registration date of the domain name in dispute do not provide rights under the Policy. The International TRIPS Treaty is not applicable in this dispute.

2. Respondent has a legitimate interest in the disputed domain name because it was registered to provide free personalized e-mail addresses in connection with a consumer e-mail service, as well as to be developed as part of a multi-million dollar plan to build a network of geographic based web sites. Registrant registered the domain name <madrid.com> in November 1997, and an e-mail service has been offered in connection therewith since 1998.

The Respondent, located on the Internet at “www.easylink.com,” is an electronic transaction delivery service that powers the exchange of information between enterprises and their suppliers, distributors, retailers and consumers (Exhibit 4, Response).

Respondent has offices in 20 cities around the world, provides services to over 300 of the Fortune 500 companies, and has over 600 employees. Respondent’s revenues in 2002, were in excess of $120 million. Respondent was founded in 1994, under the name Globecomm, Inc. as a web based e-mail company (Exhibit 4, paragraph 2, Response). It went public on the NASDAQ stock exchange in July 1999 as Mail.com, Inc. and operated under that name through March 2001 (Exhibit 4, paragraph 2, Response). Respondent owns many domain names that are offered to consumers as personalized e-mail addresses (Exhibit 4, paragraph 3, Response). <madrid.com> has been offered as a free Mail.com

e-mail address since 1998, (Exhibit 4, paragraph 4, Response).

There are currently 28,898 registered users with <madrid.com> e-mail accounts, and on average over 1,400 users sign-up for new <madrid.com> e-mail accounts each month. Users can also choose from over 90 different domain names for their e-mail service, including: @london.com, @doctor.com, @cheerful.com, @lawyer.com, and @catlover.com. Annexed as Exhibit 5 to the Response is a complete list of domain names for which e-mail service is currently offered. This use of affinity domain names for e-mail addresses, as well as for home pages and Web sites, was a key component of Respondent’s business strategy and was described in its Initial Public Offering (IPO) prospectus when it went public in 1999. Excerpt from IPO prospectus annexed as Exhibit 6 to the Response.

In or around late 1999 or early 2000, Respondent devised a business plan to develop certain of its geographic domain names into Internet Web sites under the umbrella brand of World.com (Exhibit 4, paragraph 5, Response). Annexed as Exhibit 7 to the Response are relevant pages from Respondent’s 1999 Annual Report, which discusses the World.com strategy and e-mail service. Annexed as Exhibit 8 to the Response are selected pages from a Power Point presentation concerning the World.com project. Among the city and country domain names that Respondent planned to develop were: <usa.com>, <asia.com>, <india.com>, <europe.com>, <england.com>, <japan.com>, <singapore.com>, <berlin.com>, <dublin.com>, <london.com>, <madrid.com>, <munich.com>, <paris.com>, <rome.com> and <tokyo.com> (Exhibit 4, paragraph 5, Response). The first two domain names developed were <asia.com> and <india.com>. Over sixty million dollars were invested in the projects (Exhibit 4, paragaph 6 Response).

In early 2001, due to the downturn in the economy, and in particular the Internet sector, Respondent became unable to raise the necessary funding to continue development efforts of its geographic domain names (Exhibit 4, paragraph 7, Response). Nevertheless, e-mail service has continued to be offered and supported in connection with the geographic domain names. On March 30, 2001, Respondent sold its consumer e-mail business and contractually agreed to continue using its domain names, including <madrid.com>, for the consumer e-mail service, which continues to be available at “www.mail.com.” On April 2, 2001, Respondent changed its name to Easylink Services Corporation to focus on the corporate electronic transaction services business as opposed to the strictly consumer e-mail services that had been offered under its Mail.com name (Exhibit 4, paragraph 7, Response).

As indicated in the Complaint, Respondent has offered travel-related advertisements, including hotel reservations, in connection with some of its geographic domains including <madrid.com>. Presently, users are able to sign-up and log-in to their <madrid.com> e-mail accounts from “www.madrid.com” as well as at “www.mail.com.” The <madrid.com> page also offers a link, as alluded to in the Complaint, which advertises hotel reservations in Madrid. The specific content on the <madrid.com> log-in page has varied in the past, and at times has been absent, as a result of different advertising programs that were implemented and/or tested by Respondent, but <madrid.com> e-mail users have always been able to log-in to their accounts at “www.mail.com.”

3. The domain name in dispute was not registered and is not being used in bad faith. All of Complaint’s arguments revolve around its belief that, as legal representative of the city of Madrid, it is the only party entitled to register and use a domain name incorporating the word ‘Madrid’. This radical position is contradicted by an overwhelming body of UDRP precedent, as well as the Final Report of the First WIPO Internet Domain Name Process, which expressly states that “geographical indications should not be included within the scope of the UDRP,” a position recently ratified by the WIPO member states in the Second WIPO Internet Domain Name Process. Complainant’s trademark applications and trademarks which postdate the domain name registration date cannot support a finding of bad faith. The only trademarks owned by the Complainant or the City Council that pre-date the registration date of the disputed domain name are MADRID LIMPIO, MADRID FACIL and MADRID, CIUDAD HOSTIL CONTRA LA DROGA. The domain name in dispute is so dissimilar from the above slogans that an argument that the Respondent registered the domain name in dispute with the Complainant’s above trademarks in mind is not sustainable. The Respondent submits that the mere possibility of consumer confusion does not establish bad faith. The Respondent further submits that the quality of the content of the <madrid.com> website is not a factor related to bad faith registration or use. The Respondent did not register the domain name in dispute to sell it to the Complainant. The Respondent’s response to the Complainant’s offer to purchase the domain name for Respondent’s costs was a negative answer having regard to the great expense to the Respondent in order to transition <madrid.com> users to new accounts.

Reverse Domain Name Hijacking

The Respondent submits the filing of the Complaint was with knowledge that the Complaint was unmeritorious and constitutes “use of the Policy in bad faith.” The Respondent requests a finding of reverse domain hijacking.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

“decide a Complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

1. Identical or Confusingly Similar

The Complainant has not filed any evidence of use of the geographical indication MADRID as a registered trademark or service mark. In the absence of substantial proof of acquired distinctiveness or secondary meaning displacing the significance of the geographical indication, a geographical indicator does not serve as a trademark or service mark distinguishing the wares or services of the owner from those of others (Empresa Municipal Promoción Madrid v. Planners Planners, WIPO Case No. D2002-1112 (paragraph 8.4)). The use of MADRID as a geographical indicator is not a trademark or service mark use (HER MAJESTY THE QUEEN, in right of her Government in New Zealand et. al. v. Virtual Countries, Inc, WIPO Case No D2002-0754).

The Complainant did not file any evidence of the extent of use of the registered trademarks on which it relies. The Complainant did file evidence of the registration of the trademarks PROMOCION MADRID Design; MADRID LIMPIO, MADRID FACIL; MADRID, CIUDAD HOSTIL CONTRA LA DRUGA; MADRID CIUDAD 2000; and LINEA MADRID. The record indicates that the registration for MADRID LIMPIO, MADRID FACIL; MADRID, CIUDAD HOSTIL CONTRA LA DROGA; MADRID CIUDAD 2000 and LINEA MADRID are owned by Ayuntamiento de Madrid. Only the recently registered trademarks PROMOCION MADRID are owned by the named Complainant. The Complainant is a public company owned by the Madrid City Council (Spain).

The Respondent has not objected to the reliance by the Complainant on the registrations owned by Ayuntamiento de Madrid.

The Complainant has filed applications in 2002, for the trademarks ESMADRID, ENMADRID and PORTAL MADRID. The Complainant also filed trademark applications at the Office of Harmonization of the Internal Market (OHIM) in 2002, for the trademarks ESMADRID, ENMADRID, PROMOCION MADRID and PORTAL MADRID.

The domain name in dispute is not identical to or confusingly similar to the compound trademark registrations of the Complainant whether registered before or after the registration date of November 7, 1997, of the domain name <madrid.com>. Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348.

While it might appear, at first glance, that the <barcelona.com> decision, Excelentisimo Ayuntamient de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505, reached a result contrary to the Rouen decision, it did not. The Complainant in <barcelona.com> relied principally on a trademark for BARCELONA, alone, arguing that it was “identical” to <barcelona.com>. The additional wording “Excelentisimo Ayuntamiento de Barcelona,” which appeared below BARCELONA in the mark, was deemed to be a separate element, simply indicating the name of Complainant as trademark holder. As the Panel noted, “the Spanish Patent and Trademarks Office when registering this trademark clearly considered that it consisted of one main element, namely the expression “BARCELONA.”

In the Final Report of the First WIPO Internet Domain Name Process, the Report clearly recommended “that geographical indications should not be included within the scope of the UDRP…[in part]…” to alleviate the concerns of certain commentators who feared that a broadly scoped UDRP covering also geographical indications would be too powerful a tool in the hands of intellectual property holders.

As other Panelists have noted, geographical indicators are not, per se, covered under the UDRP, Brisbane City Council v. Warren Bolton Consulting Pty. Ltd., WIPO Case No. D2001-0047.

This conclusion is further supported by the report “Geographical Identifiers” in “The Recognition of Rights and the Use of Names in the Internet Domain Name System,” Report of the Second WIPO Internet Domain Name Process (the “Report”). The Report notes that the “existing legal framework…was developed for, and applies to, trade in goods.” (paragraph 240, Report). The Report was cited with approval in Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273.

The TRIPS Agreement is not applicable in this dispute. TRIPS is intended to provide means for protecting against geographical designations which are geographically misdescriptive of goods. TRIPS does not provide for protection of city, county or country names, as such.

The Complainant has failed to prove that the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

2. The Respondent’s Lack of Rights or Legitimate Interest in respect of the Domain Name

The Complainant submits that the Respondent has no registered trademark for “Madrid” or including “Madrid.” The Complainant also submits that the Respondent initially used the “www.madrid.com” address to redirect those Internet users who accessed the URL assigned to “www.hotels1.com,” where the possibility was offered to make hotel bookings in Spain. The Complainant’s further submission is that the domain name in dispute was a URL which is a bridge to other URLs which offer presumed hotel booking services. The Complainant noted that the Respondent is also the owner of <berlin.com> (June 23, 1995); <london.com> (March 7, 1997); <dublin.com> (March 7, 1997); <munich.com> (March 19, 1997), and <paris.com> (February 13, 2002).

The Complainant submits that all of these domain names redirect the user to pages in the various URLs referred to above relating to hotel bookings. The Complainant submits that the Respondent has registered the domain names in dispute and the other domain names of cities as a device to attract Internet users who wish to obtain information on these cities, or merely to sell the domain names to lawful owners. This last part of the Complainant’s submission is based on the mistaken presumption that domain names comprising the name of a town, city, county or country, per se, are the property of the legal entity of the geographical area (HER MAJESTY THE QUEEN, in right of the Government of New Zealand, v. Virtual Countries, Inc, WIPO Case No. D2002-0754).

The Respondent demonstrated rights and a legitimate interest in the domain name in dispute as provided by paragraph 4(c)(i) of the Policy.

The Respondent registered the domain name <madrid.com> in November 1997, and the domain name has been offered in connection with free e-mail service since 1998. There are currently over 28,000 registered users with <madrid.com> e-mail accounts. Over 1000 registered users apparently apply for new “madrid.com” e-mail accounts each month. This free e-mail service has not been proven by the Complainant to represent a lack of rights or legitimate interest in respect of <madrid.com>.

The Respondent has offered e-mail accounts at numerous affinity domain names including several geographical areas, including <rome.com>, <london.com>, and <berlin.com>. In the circumstances of this case, the use of a domain name for the purpose of offering personalized addresses for an e-mail service establishes the Respondent’s legitimate interest under the policy (Buhl Optical Co. v. Mailbank.com, Inc., WIPO Case No D2000-1277).

The evidence shows that the Respondent made “demonstrable preparations” to use the domain name in dispute as part of a network of geographical related Web sites. Annexed as Exhibit 7 to the Response are relevant pages from the Respondents 1999, Annual Report which reviews the World.com strategy and e-mail service. Annexed as Exhibit 8 to the Response are selected pages from a Power Point presentation relating to the World.com project. Among the city and country domain names which the Respondent planned to develop as part of the World.com project were: <usa.com>; <asia.com>, <india.com>, <europe.com>, <england.com>, <japan.com>, <singapore.com>, <berlin.com>, <dublin.com>, <london.com>, <madrid.com>, <munich.com>, <paris.com>, <rome.com> and <tokyo.com>. The first two domain names developed by the Respondent were <asia.com> and <india.com>. Apparently, over sixty million dollars were invested in the project. Due to the downturn in the Internet sector in early 2001, the Respondent was unable to raise the necessary capital to continue its development efforts of the geographical domain name project. While the Respondent had to abandon its World.com project in 2001, the Respondent’s legitimate interest is still established by virtue of its bona fide interest to use the domain name in dispute in the World.com project (Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No D2000-1769).

As noted by Complainant, Respondent has used, and continues to use, its geographic domain names in connection with advertising programs offering hotel reservations in various locations, including the use of <madrid.com> to offer “hotel bookings in Spain.” This use of the disputed domain name in connection with a related advertising program in the present case also establishes Respondent’s legitimate interest (Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No D2001-0031).

The Panel finds that the Complainant has failed to establish that the offering of hotel bookings including hotel bookings in Spain through redirection to associated Web sites is in discord with honest practices in industrial and commercial matters. The Respondent has acquired a legitimate interest in the domain name <madrid.com> (City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001).

Complainant’s criticism of the quality of Respondent’s Web site is not relevant. There are no “minimum standards for development” under the Policy (Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No D2000-0204).

The Respondent has established rights and a legitimate interest in the domain name in dispute and the Complainant has failed to establish that the Respondent does not have rights or a legitimate interest in the domain name in dispute.

3. The Domain Name has been registered and used in bad faith.

The Complainant has failed to prove the elements as required under paragraphs 4(a)(i) and (ii) of the Policy. The Panel will not address the third element.

Reverse Domain Name Hijacking

The Respondent submits that the submissions and evidence in the Complaint establish that the Complaint was unmeritorious with respect to the three elements required to be proven by the Complainant to succeed under the Policy. The Complainant did establish the registration of compound words or phrases including MADRID, facts which were non-existent, for example, in the <new zealand.com> case referred to above. The Panel finds against reverse domain name hijacking.

 

7. Decision

Because the Complainant has failed to prove the required elements, the Panel declines to order the transfer of the domain name <madrid.com>.

 


 

Ross Carson
Presiding Panelist

Paz Soler Masota
Panelist

Geert Glas
Panelist

Dated: February 26, 2003