18th Jun 2001
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel
Case No. D2001-0348
1. The Parties
The Complainant is the Rouen Chamber of Commerce of BP641-76007, Rouen, France.
The Respondent is Marcel Stenzel of 3011 Santa Fe Court, Santa Cruz, CA 95062, United States of America.
2. The Domain Names and Registrar
The domain names at issue are <rouen.com> and <rouen.net> and the Registrar is The N@me IT Corporation.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on March 12, 2001, (electronic version) and on March 14, 2001, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is March20,2001.
On March 13, 2001, the Center transmitted via email to The N@me IT Corporation request for registrar verification in connection with this case and on March 16, 2001, The N@me IT Corporation transmitted by email to the Center The N@meIT Corporation’s verification response confirming that the registrant is Marcel Stenzel who is also the contact for both administrative and billing purposes.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 20, 2001, by e-mail the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by April 8, 2001. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to Marcel Stenzel, 3011 Sante Fe Court, Santa Cruz, CA 95062, United States of America.
A Response was received from the Respondent on April 9, 2001, (according to Paragraph 2.f(iii) of the Rules, the Response is deemed to have been received in due time). On the same date Acknowledgement of Receipt of Response was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceeding.
Having received Declarations of Impartiality and Independence and Statements of Acceptance the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as Presiding Panelist and Messrs. Milton L. Mueller and MichelVivant were appointed co-Panelists. The Projected Decision Date was May29,2001. The Panel finds that the Administrative Panel was property constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules “to employ reasonably available means calculated to achieve actual notice to Respondents”. Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
A. The Complainant
4.1. The Complainant’s Charter
The Complainant is the Rouen Chamber of Commerce and Industry. It is a public body governed by French law dated April 9, 1898. Its main objects are to represent and defend local businesses in the geographical area of Rouen; to advise, support, train and inform local business people, manufacturers and service providers located in that geographical area; and to support and promote the economy located in the Rouen geographical area or originating from that area.
4.2 The Complainant’s Trade Mark
The Complainant is the registered proprietor of French Trade Mark No. 92 419 789 of May 18, 1992, for a variety of goods and services in Classes 9; 16; 25; 35; 36; 38; 39; 41; and 42. The mark is C.C.I. ROUEN E.S.C. ROUEN L’ESPRIT DE CONQUETE.
4.3 Use of the Complainant’s TradeMark
The Complainant states that the City of Rouen has organised a number of cultural events, which received international media coverage and which provided substantial economic benefit for the local economy. The Complainant states that it was active in those events. The only event particularised is the ARMADA, a gathering of tall sailing ships, which has taken place in Rouen in 1989, 1994 and 1999. On the last occasion it attracted some 10 million visitors. The Complainant managed the on-line data service for those ARMADA events.
4.4 The Complainant does not, however, identify use of the trademark in relation to the goods and services specified in the registration. They are recorded computer programs, image and sound media, appliances for instruction and educational purposes, newspapers, books, and other printed materials, instruction and educational material, clothing, shoes, hats, publicity, business activities, assurances and finances, communications, high grade education services, and all educational and leisure services, hotels, restaurants, professional consulting and expert activities, travel agencies, seminar organisations.
B. The Respondent
The Respondent is a resident of the United States of America. As to the Respondent’s business the Response is silent, except to assert that the Respondent registered the domain name in issue – <rouen.com> on April 22, 1997, and <rouen.net> on September 2, 1999, – with intent to use them for a travel information site. This is confirmed in a short Declaration signed by the Respondent.
5. The Parties’ Contentious
5.1 The Complainant
5.1.1 Identical or Confusingly Similar
The Complainant’s case is that:
• The registered trade marks contains the name of the city, ROUEN, twice. That ROUEN part of the trade mark is identical to the substantive element of the two domain names in issue.
• ROUEN is the main and distinctive element of that trademark. The sign C.C.I. is a well-known abbreviation in French for Chamber of Commerce and Industry.
• The Complainant relies on the Decision in WIPO Case No.D2000-0505 involving the domain name <barcelona.com>
5.1.2 Rights or Legitimate Interests
• There is no evidence of actual use or bona fide preparations to use the domain names, or either of them. The <rouen.com> domain name has been inactive for the 4 years since it was registered and the <rouen.net> domain name has not been used for the 18 months since its registration. Both web sites to which the domain names resolve are stated to be under construction.
• The Respondent is not commonly known by the domain names, or either of them.
• Because ROUEN is difficult to pronounce for English speaking people, it does not readily lend itself as useful as an Internet address or reference for that class of people.
• The <rouen.com> domain name is such a natural sign for the Rouen Chamber of Commerce to use in relation to supporting and promoting commercial activities within the geographical area of the City of Rouen that it can only be concluded that the Respondent registered that name for the purpose of attracting customers from the Complainant’s own Rouen.cci.fr website.
• The <rouen.net> domain name is the natural sign for the Rouen Chamber of Commerce to use for services delivered via the Internet. On its Rouen.cci.fr website the Complainant provides assistance to find local business premises, practical information in relation to use of the Euro currency, assistance to create a commercial website and to develop an e-business.
In other words, the Complainant avers that the Respondent is unable to satisfy any of the circumstances set out in paragraph 4c of the Policy demonstrating rights or legitimate interests to the two domain names.
5.1.3 Registered and Used in Bad Faith
• The Complainant relies upon the Respondent’s lack of rights or legitimate interests in the domain names [see, paragraph 5.1.2. above].
• The Complainant asserts that registration of the two domain names in issues evidence a pattern of conduct which was not only designed to but, in fact, did prevent it from registering <rouen.com> for its own activities, thus obliging it to register rouen.cci.fr instead.
• The Complainant asserts that the public will inevitably be confused into thinking that the two domain names are affiliated to or endorsed or approved by the Rouen Chamber of Commerce [see paragraph 5.1.2. above].
• The Respondent indicated that he might sell the <rouen.com> domain name if he received a substantial offer, suggesting that the Complainant should make an offer to buy if it is interested.
In other words, the Complainant avers that all the circumstances set out in paragraph 4 b of the Policy as evidencing registration and use in bad faith are present in this case.
5.2 The Respondent
5.2.1 The Complainant’s TradeMark Rights
• The Respondent’s case is that a distinction must be drawn between the Complainant’s registered trademark -C.C.I. ROUEN E.S.C. ROUEN L’ESPRIT DE CONQUETE – and the name ROUEN. The latter is asserted by the Complainant to be the dominant and distinctive element of the trademark. The Respondent states that ROUEN is a geographic term. It is not a trademark.
5.2.2 Identical or Confusingly Similar
• The two domain names in issue incorporate the geographic term, not the Complainant’s trade mark. In this respect, the Respondent cites the following Decisions under the Policy:
• Neusiedler A.G..v.Vinayak Kulkarni WIPO Case No.D2000-1769.
The Complainant was an Austrian Company in the pulp and paper industry and owned an Austrian trade mark registration for NEUSIEDLER in Class 27 dating from 1939. The Complainant asserted the mark was distinctive, despite it also being one of the biggest lakes in the Eastern part of Austria known as Neusiedlersse.
The Panel found, however, that NEUSIEDLER even without the suffix, SEE [i.e. Lake] – was a geographic term in which the Complainant did not have trade mark rights for the purpose of paragraph 4 a(i) of the Policy.
“The entitlement to and the admissibility of the use of geographic terms in domain names is an often discussed issue; especially in cases where the geographical region (e.g. a city) itself claims to have better right in the name and consequently in the Domain Name (and even these decisions are not beyond controversy). In contrast to that, Complainant in the present case is not factually connected to the geographic term (such as a city would be), but it is the owner of an identical trademark and is therefore merely commercially related to the geographic term at issue.
Complainant did not adduce any substantiation or evidence that the term “Neusiedler” is sufficiently famous to be considered as a non-generic word. Furthermore, the word is not generally associated with Complainant’s brand by the general public, but with the lake in Austria. Outside of the paper business – and from a worldwide viewpoint – it has a stronger significance as a geographic term than as a trade mark or company name. Since the parties in this proceeding apparently are not direct competitors, the Panel needs not to investigate the legal implications of that situation.
The trademark – as well as the company name – “Neusiedler” of Complainant can not grant a right of exclusive use of the geographic term. Geographic names can not be monopolised by registering a trade mark or company name. The use of geographic terms such as in domain names or otherwise by third parties is generally possible despite of a trade mark registration.
The Panel finds that the word “Neusiedler” is a geographic term. The identical trade mark and company name of Complainant does not have an exclusive effect with regard to use of the geographic term as such in domain names or otherwise by third parties. Thus, Complainant’s trade mark or company name does not exclude the rights in the Domain Name of Respondent”. [Emphasis added].
• Maui Land and Pineapple Co., Inc and Kapalua Land Co., Ltd .v. Sullivan Properties Inc Case No. FA0008000095544
Here, the domain names were <kapalua.net> and <kapalua.com>. The Complainant was a real estate company founded in 1909, trading on the island of Maui, Hawaii. In 1975, the Complainant began a resort development in Maui under the name Kapalua Realty.
The Respondent operated a general real estate brokerage business engaged in real estate sales and management of vacation rentals in West Maui. It operated a website under the <kapalua.com> domain name including, inter alia, rental properties at the Kapalua resort.
Kapalua is a popular resort area located near Kapalua Bay, Maui. Sixteen businesses unrelated to the Complainant operated businesses using Kapalua as part of the business name. KAPALUA is a registered trademark belonging to a German company from Hamburg. Two other entities, again unrelated to the Complainant, have US registrations for KAPALUA. Kapalua is a geographical name for an area in Western Maui and has been known as such since the 1950s.
The Panel held that the evidence supported a finding that the Complainant had trade mark rights both by virtue of its registrations and by virtue of common law. The Decision then goes on to state that the Complainant’s trade mark was founded on a geographic place name, descriptive in nature and did not afford the Complainant exclusive rights to use the disputed name. But, notwithstanding those findings, the Panel found in favour of the Complainant on the basis that the two domain names in issue were identical to the Complainant’s registered KAPALUA trademark. The Complainant, however, failed under paragraph 4 a(ii) of the Policy, the Panel holding that the Respondent had prior existing rights and legitimate interests in the <kapalua.net> and .com registrations.
• Sorel Corporation .v. Domaine Sales Ltd Case No. FA 0102000096674
The Complainant had since 1959, marketed a line of cold-weather footwear under the SOREL mark. The Complainant had an U.S. trademark registration for SOREL with a date of first use in 1963, with an earlier Canadian registration in 1959, and registrations in several dozen countries for many years.
The Respondent’s domain name in issue was <sorel.com>. Sorel is the name of a village in the province of Quebec, Canada.
As to paragraph 4 a(i) of the Policy, the Panel found as follows:
“The domain name sorel.com registered by the Respondent is identical to a trade mark or service mark in which the Complainant has rights”.
The Complaint, however, failed under paragraph 4 a(iii) of the Policy – registration and use in bad faith. The Panel stated under this requirement:
“Respondent has shown that Sorel is used as a geographic term. Complainant cannot claim an exclusive right to use the name SOREL as it is not exclusively associated with Complainant’s business”.
• Port of Helsinki .v. Paragon International Projects Ltd. WIPO Case No. D2001-0002
The domain name in issue was <portofhelsinki.com>. The Respondent had also registered over 50 portof prefixed domain names. The Respondent’s case was that the domain name in issue was part of its <portof.com> network containing about 23 sites on-line with more than 200 additional ones to follow as part of the Respondent’s global plan to launch a comprehensive search engine for the shipping industry.
The Panel rejected the Complaint on the basis that the Complainant Helsinki Port Authority had no trade mark rights in the denomination PORT OF HELSINKI. The Panel stated:
“The Policy consequently does not presently apply to, for instance, conflicts between domain names and geographical indications of signs or symbols that are not supported by trade marks/service marks. The Panel cannot agree with the contention that a unique geographical name should be considered as belonging to the legal authority of the geographical area in question under the Policy. Protection for geographical names can be provided through other means, such as the special protection for geographical indications and not per se under trademark law”. [Emphasis added].
The Policy was concerned only with trade mark or service mark rights, not with geographical indications of origin.
• In any event, the domain names and the Complainant’s trademark are quite dissimilar. The Respondent cites the Captain Snooze Case [WIPO Case No. D2000-0488]. There, the domain name in issue was <snooze.com>. The Complainant’s registered trademark was CAPT’N SNOOZE registered in Classes 20, 22 and 24 in a number of countries and also CHOOSE SNOOZE registered in Australia.
The Complaint was rejected for failure to satisfy the requirement of paragraph 4 a(i) of the Policy. The Panel stated:
“Prima facie, the Panel does not consider that the word SNOOZE is either identical or confusingly similar to either the trade mark CAPT’N SNOOZE or the trade mark CHOOSE SNOOZE. The name selected by the Complainant is a distinctive mark that combines two generic words to make a distinctive combination under which it trades and promotes its products.
This prima facie opinion could be altered by evidence showing that the Complainant’s use of the trade mark was such that it was entitled to protection for the word SNOOZE alone”.
The Panel found no such evidence, hence its holding that the <snooze.com> domain name was not identical or confusingly similar to the CAPT’N SNOOZE or CHOOSE SNOOZE trade mark registrations. The fact that the word SNOOZE was an integral part of those trade mark registrations did not provide the Complainant with protection for the word alone.
• ROUEN is not distinctive of the Complainant. A search on the ALTAVISTA Internet search engine produces over 100,000 results for the mark ROUEN.
• As further evidence of the lack of distinctiveness of the Complainant’s trademark, the Respondent points to:
• U.S. Trade Mark Registration No. 833, 682 ROUEN in Class 21 for china dinnerware owned by Shenango Ceramics Inc filed in 1961; and to A Canadian Trademark Registration ROUEN in Class 16 for paper products owned by Domtar Inc registered since 1932.
• As to the Barcelona Case (supra), the Respondent distinguishes it on the basis that the Complainant owned Spanish trade mark registrations for the mark BARCELONA simpliciter, together with International Registrations in all classes for the mark BARCELONA-BCN and some 1,000 Spanish registered trade marks for a wide variety of goods and services incorporating BARCELONA as part of the mark, for example, TEATRE BARCELONA; CANAL BARCELONA; BARCELONA TV etc. By contact, in this case ROUEN is a part only of the trademark. Further, the Respondent considers that the Barcelona Case was wrongly decided on the basis that the mark was a geographical name, not a trademark. Also, the Respondent states that the Decision is currently under appeal before the U.S. District Court for the Eastern District of Virginia.
5.2.3 Rights or Legitimate Interests
The Respondent asserts in his Declaration:
“I registered the domain names <rouen.com> and <rouen.net> because they contain the name of the city of Rouen, located in France. I registered these domain names for the purpose of developing a travel information website related to Rouen. While I have committed substantial time and effort planning the development of the website, I have had trouble raising necessary capital due to the downturn in the Internet economy. My interest is to launch the website in the near future”.
The Respondent goes on to state that he is a resident of the State of California.
“When I registered the domain names, I had no knowledge of Complainant or Complainant’s trade marks”.
5.2.4 The Respondent cites a number of Decisions under the Policy, which establish that preparations for use of a domain name in bona fide commerce are sufficient to demonstrate the rights or legitimate interests required by paragraph 4a(ii) of the Policy. These are:
• Shirmax Retail .v. CES Marketing Case No. AF0104
There the domain name in issue was <thyme.com>. The Complainant marketed maternity clothing and other merchandise under the names THYME and THYME MATERNITY. It owned a Canadian trade mark registration for THYME for maternity clothing. The Panel held that the registration and the domain name were identical and that the Complainant, therefore, succeeded in establishing its case under paragraph 4 a(i) of the Policy.
The Complainant failed, however, to meet the requirements of paragraph 4 a(ii) of the Policy. The Respondent asserted it had made preparations to use <thyme.com> for the bona fide offering of goods or services. The Respondent was also the registrant of over 50 other domain names, mostly generic: for example, <decimals.com>; <default.com>; <dill.com> and <doughnut.com>. The Panel held:
“Where the domain name and trade mark in question are generic and in particular where they comprise no more than a simple, short, common word, the rights/interests inquiry is more likely to favour the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of cybersquatting and cyberpiracy, not every dispute that might arise over a domain name. See e.g., Second Staff Report on Implementation documents for the UDRP (Oct 24, 1999).
The Panel finds that the admittedly perfunctory preparations made by CES for use of the domain name <thyme.com> in bona fide commerce are sufficient to demonstrate the rights or legitimate interests required under paragraph 4 a(iii).”
• The Respondent also cites the Port of Helsinki; Neusiedler; and Maui Land Decisions noted in paragraph 5.2.1 above.
5.2.5 The Respondent’s case is that the Complaint fails to contain evidence of any of the circumstances evidencing registration and use in bad faith set out in paragraph 4 b of the Policy. The Respondent cites the following Decisions under the Policy:
• Nicholas Perricone .v. Martin Hirst Case No. FA0007 00009514
This concerned the domain names <wrinklecure.com> and <wrinklecures.com>. The Complainant was the author of a popular book entitled “The Wrinkle Cure” published in April 2000. He had applied on December 9, 1998, for a registered trademark (with intent to use) THE WRINKLE CURE. The domain names were respectively registered on December 2 and December 16, 1999, and in February 2000, the Respondent created a website linked to the <wrinklecure.com> domain name, indicating that beauty products and cosmetics would soon be available on line.
In a majority Decision, the Panel held:
“While it is clear that the Respondent’s domain names wrinklecure.com and wrinklecures.com are substantially similar to the Complainant’s mark THE WRINKLE CURE, the majority finds that Complainant has not provided evidence that Respondent registered these generic, or at best descriptive, domain names in bad faith”.
The dissenting Panelist considered that the Complaint failed to satisfy the requirements of both paragraph 4 a(ii) and (iii) of the Policy. The Helsinki Decision: see paragraph 5.2.1 above.
• Etam .v. Alberta Hot Rods WIPO Case No. D2000-1654
There the domain name in issue was <tammy.com>. The Complainant had French, United Kingdom and Community trade mark registrations for TAMMY for clothing, leather bags and luggage, jewelry, cosmetics, soaps and other personal grooming products. There were also applications to register the TAMMY mark in other countries.
The Respondent had used the <tammy.com> domain name since 1997, to direct visitors to an adult website.
The Respondent held that the Complainant failed because the Respondent had demonstrated rights and legitimate interests in the domain names before being put on notice of the dispute. For similar reasons, the Panel also held that the Complainant had failed to establish registration and use in bad faith.
“Though TAMMY may be inherently distinctive as applied to Complainant’s goods, that does not make the mark strong. As Respondent points out, to many English speakers, “Tammy” is readily recognisable as a name for a woman. Because it cannot be said that Complainant has exclusive rights to this fairly short, non-fanciful name, Respondent may legitimately develop its own use of the name in an unrelated field”.
The Panel in assessing bad faith, also accepted the Respondent’s contention that, as a Canadian business, it had neither actual nor constructive knowledge of Complainant’s mark at the time it registered the domain name.
“Complainant’s mark is not registered in Canada, nor did Complainant provide any evidence that its mark is otherwise known in that country”.
• VZ Vermögens Zentrum A.G. .v. Anything.com WIPO Case No. D2000-0527
There the domain name at issue was <vz.com>. The Complainant was a Swiss Company established in 1992, offering financial consultancy advice. It had Swiss registered trademarks for VZ VERMÖGENSZENTRUM and for VZ in script with logo.
The Respondent, located in the Cayman Islands, was in the business of developing generic and/or easy-to-remember domain names into viable websites to sell products and services. It registered the <vz.com> domain name for a Virtual Zone website offering virtual reality software and products and featuring a unique virtual reality game for Internet visitors.
By a majority, the Panel held that the Respondent had failed to provide evidence of preparations to use the domain name for that purpose.
“… the mere speculation in generic domain names without showing any demonstrable evidence of plans for the bona fide use is not sufficient to prove legitimate interest in a domain name”.
However, the Complaint failed for the Complainant’s lack of proof of registration in bad faith because it provided no evidence.
– that the Respondent in the Cayman Islands knew or should have known of the Complainant’ service mark in Switzerland;
– that the Respondent was even aware of the Complainant’s existence; and
– that the Respondent chose the domain name for the purpose of making a profit from a sale of the domain name to the Complainant.
• Allocation Network GmbH .v. Steve Gregory WIPO Case No. D2000-0016
There the domain name was <allocation.com>. The Complainant was based in Munich, Germany and had traded since 1997, operating a market place for industrial access inventory especially via the Internet. It owned a German trade marks registration for ALLOCATION in Classes 9, 35 and 42 and had a Community trade mark application for that mark pending.
The Respondent, located in the Philippines, operated under the domain name <rockbottomdomains.com> a website offering for sale some 400 different domain names, including the domain name in issue.
The Panel did not address the bad faith issue, since to do so was unnecessary in the light of its finding that the Respondent had rights or legitimate interests in the <allocation.com> domain name. The offering for sale of domain names as such could, and did in the circumstances of this case, amount to use of the domain name in connection with a bona fide offering of goods and services.
“Respondent’s explanation that he selected many of the domain names offered for sale at random from a dictionary appears prima facie acceptable. Complainant has not disputed the fact that (many of) Respondent’s domain names – including <allocation.com> – represent words or short phrases found in an English language dictionary.
The fact that, as Complainant has shown, a number of other domain names registered by Respondent are identical to different national trade marks from different owners is in itself insufficient evidence of the intent to profit from or otherwise abuse such trade mark rights. After all, this is to be expected, in view of the territorial nature of trade mark rights and the fact that, as set out in the above, terms which are descriptive or generic for particular goods or services and/or in a particular country may be considered valid trade marks for other goods or services and/or in a country with a different language.
Complainant has not provided any evidence of facts which might indicate that Respondent knew or should have known of its trade mark registrations, such as a direct relationship or a wide reputation of or extensive publicity in connection with Complainant’s trade name or trade marks. Nor has it been shown that Respondent is in particular (also) active in the German market.
Furthermore, it does not appear likely that Respondent had such knowledge when registering the domain name <allocation.com> as in Germany trade mark applications are not published, while in this case the German trade mark registration of Allocation (which is published) was not granted until April 19,1999, therefore after the registration of the domain name <allocation.com> by Respondent.
In this connection it is noted that nothing in the Policy can be construed as requiring a person registering a domain name to carry out a prior trade mark search in every country of the world for conflicting trade mark rights, as advocated by Complainant.”
5.2.6 Further, the Respondent takes the position that the Complaint discloses no evidence of registration of the domain name in issue with a view to disrupting the business of the Rouen Chamber of Commerce and Industry, or confusing consumers, or of preventing the Complainant from registering its trade mark as a domain name. Nor is there any evidence of the Respondent registering the domain names in issue primarily, or at all, for the purpose of selling them to the Complainant for a sum in excess of the out of pocket costs directly related to those domain names. In this respect, the Respondent cites five Decisions under the Policy. Three are the Shirmax and Perricone and Etam Decisions noted in paragraphs 5.2.4 and 5.2.5 above. The others are:
• General Machine Prods Co .v. Prime Domains Case No. FA 0001 0000 92531
There the domain name was <craftwork.com>. The Complainant had been using the registered trademark CRAFTWORK to identify a wide range of products in the construction field since 1989. The Respondent was in the business of identifying domain names comprised of generic or descriptive terms, registering those domain names, selling them to interested parties and developing websites using those domain names for clients. The Respondent offered to lease the domain name in issue to the Complainant for US$ 300-500 per month (depending upon the length of the lease) or to sell it outright for U.S $25,000 or $30,000 (depending upon the date of transaction).
The Panel held that the Complainant failed to establish that the Respondent had no legitimate interests in respect of the domain name in issue. They found that the CRAFTWORK trademark was neither fanciful not arbitrary, nor did it have a strong secondary meaning such that consumers were likely to associate the domain name in issue only with the Complainant.
“As Prime Domains has demonstrated, the term craftwork is in widespread use in a descriptive sense. The Panel finds therefore that Prime Domains has rebutted General Machines’ arguments and has proven that it is in the business of selling generic and descriptive domain names such as craftwork.com. That Prime Domains has offered to sell this descriptive, non-source identifying domain name does not make its interest illegitimate”.
As to bad faith, the Panel found that the Respondent did not seek to sell the domain name to the Complainant. Rather, the Complainant solicited the offer to sell using an anonymous agent. That did not indicate bad faith on the part of the Respondent.
• The New Piper Aircraft Inc. .v. Piper.com Case No. FA 94367
There the domain name was <piper.com>. The Complainant owned an U.S. registered trademark PIPER for airplanes, with a first use in commerce dating from 1937. It operated a website under the <newpiper.com> domain name.
The Respondent was involved in the sale of new and used aircraft, including PIPER aircraft. The Panel found that the Respondent’s use of <piper.com> was a legitimate non-commercial or fair use without intent for commercial gain to misleading divert customers or to tarnish the trade mark or service mark of the Complainant.
As to bad faith, the Decision reads:
“Sale of the site only came up as an option after Complainant raised issue with Respondent. There is no evidence that Respondent made an effort to sell the domain name to the Complainant, a competitor or anyone else before the Complaint. Respondent’s counter-offer to the Complainant’s unsolicited offer to transfer the domain name for compensation does not constitute bad faith.”
6. Discussion and Findings
6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following:
• that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
• the Respondent has no rights or legitimate interests in respect of the domain name; and
• the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4c of the Policy defines circumstances which, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent’s rights or legitimate interests for the purposes of paragraph 4a(ii) of the Policy.
6.3 Paragraph 4b of the Policy sets out circumstances which, again in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.4 Does the Complainant have rights in a trademark/servicemark?
Clearly, the Rouen Chamber of Commerce and Industry satisfies this part of the requirement of paragraph 4 a(i) of the Policy. It has a French registered trade mark for various goods and services registered in 1992, before either of the two domain names in issue were registered. That trademark is
C.C.I. ROUEN E.S.C. ROUEN L’ESPRIT DE CONQUETE.
6.5 Is there identicality or confusing similarity?
This is the key issue to be addressed in this dispute. The Complainant contends that the substantive and distinctive element of its trademark is ROUEN. Hence, there is identicality with the two domain names in issue. Whilst the Panelists are not ad idem as to the underlying reasons for their conclusion, they are agreed on the result. That is that the Complaint fails to meet the requirements of paragraph 4 a(i) of the Policy.
6.6 Geographic name versus Trade Mark
The Interim Report of the Second WIPO Internet Domain Name Process dated April 12, 2001, recites that a number of National Courts in Europe have found that the registration of domain names constitutes an infringement of the rights of certain cities. For example, the domain names <saint-tropez.com>, <heidelberg.de> and <luzern.ch> were all held to contravene the rights of the cities of St. Tropez, France: Heidelberg, Germany: and Luzern, Switzerland respectively. In the Windsurfing Chiemsee Case  2 WLR 205 the European Court of Justice addressed the issue of whether Art.3 (i)(c) of the European Trademark Directive (89/104/EEC) precludes registration of a trademark consisting of a geographical name. That article provides that trade marks consisting of signs which may serve, in trade, to designate the geographical origin of goods shall not be registered or, if registered, are liable to be declared invalid.
6.7 The WIPO Interim Report cites a number of Decisions under the Policy relating to place names, including not only the <barcelona.com>, <stmoritz.com> and <portofhelsinki.com> cases referred to above but also the <portofhamina.com> case [WIPO Case No. D2001-0001]. At paragraph 250 the Interim Report states:
“It should be noted that the complaints in many of the Court and UDRP cases referred to above were based on the alleged abuse of a trade mark registered in the name of the complainant and incorporating the place name subject to the dispute. Furthermore, usually the domain names were deemed infringing in light of the nature of the activity conducted under the domain name and the motivation of the registrants. The cases therefore do not necessarily stand for the proposition that the registration of a city name or the name of a region, as such, is to be deemed abusive”.
6.8 In the <portofhamina.com> case the Panel rejected the view that as a matter of principle, a geographical name should belong to the owner of the geographical area in question. But, applying the Chiemsee decision, the Panel found that the Port of Hamina in Finland had acquired distinctiveness as a trademark relating to services originating from the City and Port of Hamina. But, relying on Art.6.1.(b) of the EEC Directive, the Panel noted that a trademark did not entitle the proprietor to prevent a third party from using in the course of trade, indications concerning the geographical origin of goods or rendering of services provided the third party uses them in accordance with honest practices in industrial and commercial matters. In that case, the Panel found that the Respondent had acquired a legitimate interest in the trade mark and domain name.
6.9 The WIPO Interim Report goes on to state in paragraph 282 that to provide protection for place names within the gTLDs would necessitate revision of the Policy to incorporate into it a separate cause of action. The assumption which underlies this discussion in the Interim Report is that, as a general rule, place names per se are not trade marks for the purposes of the Policy. The assumption was regarded by the Panel in Brisbane City Council .v. Warren Bolton Consulting Pty Ltd WIPO Case No. D2001-0047 as well-founded, stating:
“Unless the evidence demonstrates that the name of a geographical location is in fact performing the function of a trademark, such a name should not be considered a trademark for the purposes of the Uniform Policy”.
6.10 That case concerned the domain name <brisbanecity.com>. The Complainant owned 4 registered trademarks that included the words BRISBANE CITY. It had pending trademark applications for the mark BRISBANE CITY simpliciter. The Respondent owned a number of domain names for cities in Australia, including <perthcity.com>, <canberracity.com>, and <hobartcity.com>.
6.11 Thus, as in this case, where the Complainant has no registered trade mark for ROUEN, the Complainant did not have a registered trademark for BRISBANE CITY simpliciter. The first question addressed by the Panel was whether or not the Complainant’s alleged unregistered trademark BRISBANE CITY is a trademark to which the Policy applies. That question does not, however, need to be addressed in this case because the Rouen Chamber of Commerce & Industry are not relying on unregistered trade mark rights but only on what they characterise as the main element and distinctive character of their registered mark, the word ROUEN. Nevertheless, the Panel’s conclusion is set out in paragraph 6.9 above.
6.12 The Panel then went on to consider confusing similarity, which (as noted in paragraph 6.5 above) is the key issue to be addressed here. In relation to the BRISBANE CITY WORKS Australian registration the Panel held:
“…. the distinguishing feature (if there is indeed one) is the conjunction of the words WORKS with the words BRISBANE CITY; the words BRISBANE CITY themselves are not distinctive. Thus, it follows that the domain name brisbancecity.com is not confusingly similar to the Complainant’s Australian registered trade mark 768,670”.
In relation to the Complainant’s claimed common law rights in BRISBANE CITY, the Panel concluded that the Complainant had no such rights.
“The reason for this is as previously stated – the words BRISBANE CITY, on their own, do not perform the function of a trade mark”.
6.13 The Brisbane City Council was also Complainant in a Case brought against Joyce Russ Advertising [WIPO Case D2001-0069] relating to the domain name <brisbane.com>. Again the Complainant asserted the same Australian registered trademarks, none of which were for BRISBANE simpliciter. The Complainant also relied on claimed unregistered trade mark rights in BRISBANE.
The Respondent was an established full service-advertising agency. It conceived a plan to develop a network of visual information booths or kiosks to be located in areas including major shopping centres. It proposed in an Australian business magazine the idea of the Australian National City portals. To this end it purchased the domain names <melbourne.com>; <perth.com>; <brisbane.com>; <adelaide.com> and itself registered <a-sydney.com> and <s-sydney.com>.
6.14 The Panel quoted paragraph 250 of the WIPO Interim Report – see paragraph 6.7 above. The Panel concluded that the Complainant had not established any trade mark or common law rights to the words BRISBANE CITY or to BRISBANE. The reasons for that conclusion were, inter alia, that the Australian Intellectual Property Office in its examination report on the Respondent’s trade mark applications to register <brisbane.com>, rejected registerability. The report stated:
“However the test of registrability is not a simple question of descriptiveness. Rather it is whether other traders are likely to need the sign or something close to it in indicating their similar goods or services. Any other trader in similar goods or services who is situated in BRISBANE or who have BRISBANE as the theme or content manner of their goods and services, are equally likely and entitled to use the words <brisbane.com> without improper motive as part of their electronic address when advertising or indicating the place of origin of the goods. The trade mark has no inherent adaptation to distinguish the applicant’s goods or services”.
Further, there were 47 registered corporate/business names in Australia that included the words BRISBANE CITY and at least 30 registered corporate/business names in Australia which feature the word BRISBANE on its own. There were also 94 registered trademarks and 37 applications featuring the word BRISBANE found from a search of the Australian Trademark Register. Having found no common law trademark rights, the Panel did not need to go on to consider the issue of confusing similarity. In fact, the Panel held that, on the evidence, the Complainant also failed to satisfy the requirements of paragraphs 4 a (ii) and (iii) of the Policy.
6.15 The Panel refers to two other decisions involving geographical names. The first one of these is Lapponia Jewelry Oy .v. Rautelin Oy WIPO Case No. D2000-1728. The domain names at issue were <lapponia.org> and <lapponia.net>. The Complainant, a company located in Helsinki, Finland had been in the jewelry and luxury goods business since 1970, and had trade mark Registrations for LAPPONIA in Classes 6, 8 and 14 in 37 countries.
The Respondent’s case was that LAPPONIA means Lapland, a geographical area in the northern parts of Finland, Sweden, Norway and Russia.
The Panel nevertheless found confusing similarity on the basis of an objective comparison of the domain names at issue and the trademark. This was against the following background discussion:
“Under trade mark law identity or confusingly similarity is present only if they relate to goods of the same or similar kind, with the addition that confusing similarity may, at least under the trade mark laws of the European Union countries, be invoked for the benefit of marks which have a reputation in the country concerned if the use of another similar mark would take unfair advantage of, or would be detrimental to, the distinctive character or reputation of the symbol having the reputation.
As regards this specific aspect, Complainant has stressed that the mark enjoys wide reputation at least in Finland because it has been extensively promoted for luxury goods in that country. Respondent has stressed that its business does not operate in the same sector as the Complainant.
The Panel notes that there is considerable difference between the character of the rights in the trademark and those in a domain name. Trademarks are registered for use in relation to certain categories of goods or services and a change in the scope of protection presupposes a change in the registration, at least as a matter of principle. Domain names can, on the other hand, be registered without any mentioning of the activities of the person effecting the registration, and Domain names may be changed at any time.”
6.16 The final case is Teollisuuden Voima .v. Jarno P.Vastamäki WIPO Case No. D2001-0321. There the domain names were <olkiluoto.com> and <olkiluoto.net>. The Complainant operated nuclear power plants situated on the island of Olkiluoto, Finland, a small island of approximately 10 square kilometres. The Complainant had no registered trademarks for OLKILUOTO but contended that it had become established as a trademark. The Respondent contended that OLKILUOTO had not been used by the Complainant as a trademark and that as a geographical name, it could not be treated as a trademark in any event and was like a generic word and free for anyone to use.
Section 2 of the Finnish Trademark Act states that exclusive rights in a trademark may be acquired, even without registration, after the mark has been established. On the evidence the Panel considered that the Complainant failed to establish trademark rights in OLKILUOTO under that section.
6.17 Can the Complainant’s French registered trademark C.C.1 ROUEN E.S.C. ROUEN L’ESPRIT DE CONQUETE be stripped of the abbreviations and the tag or epithet Spirit of Conquest, such that in essence the distinctive element is ROUEN? The Panel does not consider that it properly can. Panelist Mueller considers that to do so would be tantamount to accepting that a geographical indicator qualifies as a trademark right for the purpose of the Policy, which it clearly cannot. He cites paragraph 188 of the WIPO Interim Report:
“Geographical indications were discussed in the final Report of the first WIPO Process in the context of the debate on the proper scope of the UDRP. In light of emerging evidence suggesting that geographical indications were the target of abusive domain name registrations, the question was raised whether the UDRP should also cover this category of intellectual property. While there were conflicting views on the matter and a number of commentators had expressed a preference for a procedure covering the full range of intellectual property disputes, the final Report recommended that geographical indications should not be included within the scope of the UDRP, at least not in the initial phase of the existence of the UDRP. This recommendation was made essentially for two reasons. First, it was felt that it would be more prudent to adopt, in the initial stage, a restricted procedure, while retaining the possibility of broadening its scope in the future, once more experience has been gained and some confidence had been established in the procedure. Second, a conservative approach was recommended in light of the need 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”.
6.18 He cites the Neusiedler Case as supporting that view, where notwithstanding the finding that the Complainant’s trademark and the domain name in issue were identical, the Panel held:
“The Panel finds that the word Neusiedler is a geographical term. The identical trademark and company name of the Complainant does not have an exclusive effect with regard to use of the geographical term as such in domain names or otherwise by third parties. Thus, Complainant’s trademark or company name does not exclude the rights of the domain name of the Respondent.”
Panelists Vivant and Perkins note that if a Complainant has a registered trademark and the domain name is found to be identical, then the requirements of paragraph 4 a(i) of the Policy are met. The mark may be a geographical place name but if it is a registered trademark, then there are trademark rights for the purpose of paragraph 4 a(i) of the Policy. Further, in the Neusiedler case the Panel distinguished the facts of that case which involved a lake in Austria – from where the trademark concerns a City, which might “…have a better right in the name and consequently in the Domain Name….” [see, paragraph 5.2.2 above].
As to the Sorel case to which Panelist Mueller and the Respondent refer, the relevance of the geographical nature of the village in Canada was to the Panel’s holding under paragraph 4 a(iii) concerning bad faith, not trademark rights under paragraph 4 a (i).
6.19 But, the end result for Panelists Vivant and Perkins is the same. Although the attractive element of the Complainant’s French trademark registration may be ROUEN, can it really be said that the registration be dismantled in the way necessary to find identically or confusing similarity with <rouen.com> and .net? Panelist Mueller proposes a graphic illustration. There is a company in Syracuse which has a registered trademark for SYRACUSE BANANA. Can it seriously be contended that it is identical or confusingly similar to <syracuse.com>? Obviously, it cannot be.
6.20 Nor can it be in this case where ROUEN is a geographic name which, as the Respondent evidences, returned over 10,000 results from a search on the Altavista.com search engine. Further, applying the principle laid down by the European Court of Justice in the Chiemsee case, there is quite simply no evidence presented by the Complainant in this case which would overcome the hurdle of distinctiveness under the European Trademark Directive Act 3(1)(c) – see paragraph 6.6 above.
6.21 The Panel is, therefore, unanimous that the Complaint fails to establish the first requirement of paragraph 4a of the Policy. Incidentally, the Captain Snooze decision cited by the Respondent in this respect is not, the Panel believe, relevant. There the SNOOZE trademark registration was applied for only after registration of the domain name in issue. See, further, the analysis of that Decision in paragraph 6.6 above.
6.22 Rights or Legitimate Interests
Thus, it is not necessary to address whether the Complainant satisfies the requirement of paragraph 4a(ii) of the Policy. Panelist Mueller takes the view that the Complainant has failed to demonstrate that the Respondent lacks relevant rights or legitimate interests. Panelists Perkins and Vivant are not convinced by the mere assertions in the Respondent’s Declaration, which are set out in paragraph 5.2.3 above. More than mere assertions are required – see Do the Hustle WIPO Case No. D2000-0624.
“A Panel is not required to blindly accept assertions offered by a Respondent any more than it is required to accept unsupported assertions by a Complainant. It is especially important under this procedure to test Respondent’s assertions for evidentiary support and credibility, since normally the Complainant has no opportunity to counter the Respondent’s assertions, whilst the Respondent does have the opportunity to counter those of the Complainant”.
If the Respondent had made demonstrable preparations to use the <rouen.com> and <rouen.com> domain before notice of this dispute, it would have been simple to exhibit to the Response documentary evidence to that effect.
6.23 Registered and Used in Bad Faith
All three Panelists are agreed that the Complaint contains no evidence which satisfies the requirements of paragraph 4 a(iii) of the Policy.
For all the foregoing reasons, the Panel decide that the Complainant has failed to satisfy the requirements of paragraph 4a of the Policy. Accordingly, the Panel dismisses the Complaint. No order for transfer of the domain names <rouen.com> or <rouen.net> is made.
Milton L. Mueller
Dated: June 18, 2001