14th Jun 2004
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kur- und Verkehrsverein St. Moritz v. Domain Finance Ltd
Case No. D2004-0158
1. The Parties
The Complainant is Kur- und Verkehrsverein St. Moritz, of St. Moritz, Switzerland represented by Meisser & Partners, Switzerland.
The Respondent is Domain Finance Ltd., of, Sharjah, United Arab Emirates, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <stmoritz.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on February 27, 2004, and in hard copy on March 2, 2004. On February 27, 2004, the Center transmitted by email to Network Solutions a request for registrar verification in connection with the Disputed Domain Name. On March 1, 2004, Network Solutions transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2004. The Respondent’s representative contacted the Center on March 22, 2004, and requested an extension to March 26, 2004, to file the Response, having already sought and received the Complainant’s consent to this extension. The Response was filed with the Center on March 26, 2004.
The Complainant filed an Additional Submission with the Center on March 31, 2004, and the Respondent filed a Reply to Complainant’s Additional Submission with the Center on April 14, 2004.
The Respondent requested a 3-member Panel for this Administrative Proceeding and the Center appointed Alistair Payne, David E. Sorkin and Kamen Troller as Panelists in this matter on April 26, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Supplemental Filings
There is no provision in the Policy, the Rules or the Supplemental Rules that deals with the issue of filing of Supplemental Filings by either party to the administrative proceeding without leave from the Panel. However, a number of parties to previous administrative proceedings have sought to have supplemental filings considered by Panel when determining the proceedings. As stated by the learned Panelist in the recent case of Custom Bilt Metals v. Conquest Consulting (WIPO Case No. D2004-0023):
“Appropriate reasons [to support the admissibility of Supplemental Filings] may include the existence of new, pertinent facts that did not arise until after the submission of the Complaint, Top Driver, Inc., v. Benefits Benifits, WIPO Case No. D2002-0972 (January 7, 2003), the desire to bring new, relevant legal authority to the attention of the Panel, Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105 (April 13, 2000), or the need to rebut factual arguments that could not have been anticipated in the Complaint, Radan Corp. v. Rabazzini Winery, WIPO Case No. D2003-0353 (July 28, 2003). Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions.World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001).”
The Panel has considered the Supplemental Filings of both parties and finds that none of the above reasons are present in this case and that the Supplemental Filings of both parties add little to the contentions and evidence put forward by each party in their original filings. Accordingly the Panel does not admit these Supplemental Filings to this administrative proceeding.
5. Preliminary Issue to this Administrative Proceeding
The Complainant has previously filed a Complaint with the Center under the Policy in respect of the Disputed Domain Name against “StMoritz.com”, a different named Respondent to the Respondent in this current administrative proceeding (the “Original Respondent”) (Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 - the “Original Proceedings”).
The Original Proceedings were uncontested by the Original Respondent and after due consideration of the factual background and the Complainant’s contentions, on August 17, 2000, the learned Panelist to the Original Proceedings denied the Complaint and concluded as follows:
“In light of the foregoing, the Administrative Panel decides that the Domain Name “stmoritz.com” registered by Respondent is identical to the trademark of the Complainant, that Respondent may have a right or legitimate interest in respect of the Domain Name, and that Respondent’s Domain Name has not been registered and is not being used in bad faith.
Accordingly, pursuant to paragraph 4, i of the Policy, the Administrative Panel denies the request that the registration of the Domain Name “stmoritz.com” be transferred to the Complainant.”
Both the Complainant and the Respondent to the current administrative proceeding refer to the Original Proceedings in their filings.
A. Complainant’s Contentions with regard to the Original Proceedings
The Complainant contends that as this current Complaint is filed against a different Respondent to that named in the Original Complaint, there is no need to prove that the conditions for a re-filing are given. However, should this Panel disagree with this conclusion, it submits that for the following reasons the conditions for a re-filing are fulfilled:
- According to constant practice, re-filing is justified if for example new evidence comes to light, which was not available to the Complainant at the time of the original Complaint. Such new evidence can be that the nature of the website to which the domain name is connected, has changed (the Complainant refers to a number of previous WIPO Cases under the Policy including GA Modefine S.A. -v- Sparco P/L (WIPO Case No. D2001-0370),Grove Broadcasting Co. Ltd., v. Telesystems Communications Limited (WIPO Case No. D2000-0703) and Creo Products Inc. v. Website In Development (WIPO Case No. D2000-1490)).
- The Respondent’s website was not used for more than one and a half years and the Respondent started to use this website only after receiving the Complainant’s email of February 3, 2004, requesting transfer of the Disputed Domain Name. By not using the Disputed Domain Name for a lengthy period, the Respondent has proven bad faith “use” by preventing the Complainant from having its “.com” domain name and by starting to use the Disputed Domain Name after receiving the Complainant’s transfer request, the Respondent has proven its bad faith.
- The use of the website by the current Respondent is different to the use by the Original Respondent. This also shows the Respondent’s bad faith.
B. Respondent’s Contentions with regard to the Original Proceedings
The Respondent contends that the Disputed Domain Name is now properly registered to the Respondent having previously been registered by the Original Respondent, however ownership of the Disputed Domain Name has remained the same - the current registrant mailing address is identical to the address in the Original Proceedings and, as the Complainant admits, the administrative contact for the Disputed Domain Name is also the same. A director of the Respondent’s parent company WorldNews, Inc, Charlotte Gomez, provides evidence by way of a Declaration that the Respondent is a wholly owned subsidiary of WorldNews, Inc and that it has changed the registrant name from “Stmoritz.com” to “Domain Finance”. Ms. Gomez declares that there has not been a change of ownership of the Disputed Domain Name since the Original Proceedings.
The Respondent further contends that the Complainant has flagrantly abused the Policy and is guilty of reverse domain name hijacking for the following reasons. The Complainant has filed a Complaint against the same Respondents with identical addresses on a virtually identical set of facts which has already been rejected by a previous Panel. Further, the two websites that the Complainant refers to are both clearly identified as World News Network sites, and there is no credible basis for alleging bad faith against the Respondent.
6. Panel’s Decision in relation to the Preliminary Issue
The initial issue for the Panel to consider is whether the filing of the Complaint by the Complainant constitutes a “refiling” of a previous Complaint by the same Complainant against the same Respondent in respect of the same domain name. If it does, then the Panel must then consider, based on the evidence submitted by both parties, whether the refiling is justified. If it is justified, the Panel must proceed to a decision based on each of the three elements set out in paragraph 4(a) of the Policy that a Complainant is required to establish in order to obtain its requested remedy (i.e. that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Disputed Domain Name has been registered and is being used in bad faith). If the Panel finds that the refiling is not justified, the Complaint must be dismissed with prejudice.
(i) Is this a “refiled” Complaint?
As stated by the learned Panelist in the case of Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel (WIPO Case No. D2001-0907):
“The Panelist treats as a Refiled Complaint “a subsequent complaint under the Uniform Policy in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint”.”
It is clear that the Complainant and the Disputed Domain Name are the same as in the Original Proceedings and therefore the Panel finds that the first two elements of this definition are present.
With regard to the issue of whether the Respondent in the Original Proceedings is the “same” as the Respondent in the current administrative proceeding, the Panel notes that the Respondent provides evidence in its Response (by way of a declaration by a director of WorldNews, Inc. being the parent company of the current Respondent Domain Finance Ltd.) that there has been no change in ownership of the Disputed Domain Name since the Original Proceedings. The Complainant contends that there are in fact two different Respondents in question but fails to provide any evidence to rebut the declaration of the Respondent’s parent company director, for example by providing company searches or the results of other investigations that prove that there are in fact two different Respondent entities, or that ownership of the Disputed Domain Name has “changed hands” since the Original Proceedings and therefore that the two Respondents are not the “same” for the purposes of the Policy.
Accordingly, on the evidence submitted by both parties, the Panel finds that although the Respondent has a different name to the Respondent named in the Original Proceedings, the Respondent is essentially the same as the Original Respondent and therefore the Complaint constitutes a “refiled” Complaint within the scope of the Policy.
(ii) Is this Refiled Complaint justified?
A number of Panels have been asked to adjudicate on cases where the Complainant has filed a refiled Complaint within the scope of the Policy and have therefore been required to determine whether the refiling is justified in the circumstances. The Panel adopts the summary of the general consensus amongst Panels with regard to this issue as set out in the case of Maruti Udyog Ltd. v. maruti.com (WIPO Case No. D2003-0073):
“A summary of the leading decisions under the Policy is set out in WIPO Case No. D2001-1041 <jonesapparelgroup.com>. The guidelines set out inGrove Broadcasting Co Ltd .v. Telesystems Communications Ltd., WIPO Case No. D2000-0703 and in Creo Products Inc. v. Website in DevelopmentWIPO Case No. D2000-1490 have subsequently been applied by Panelists and are adopted for the purpose of this administrative proceeding. In Grove Broadcasting the Panelist identified the limited grounds justifying reconsideration of a decision rendered as including:
- serious misconduct by a judge, juror, witness or lawyer;
- perjured evidence being offered to the Court;
- the discovery of credible and material evidence which could not have been reasonably foreseen or known at the time; and
- a breach of natural justice / due process.
As to the admissibility of new evidence:
- first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at trial;
- second, that the new evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive; and
- third, the evidence must be apparently credible, although it need not be incontrovertible.
In the Creo Products case, the Panelist agreed that where the act complained of in both Complaints is the same, the grounds for permitting re-litigation should be limited. Acts which have occurred subsequent to the decision on the original Complaint must be such as to give rise to “… a truly new action under the Uniform Policy”. The burden is on the Complainant to establish that the refiled Complainant should be entertained and that burden is high.”
The Complainant contends that the following new evidence relating to the Respondent’s bad faith has come to light since the Original Proceedings and that this evidence justifies a refiling within the scope of the Policy:
- The Respondent’s website was not used for one and a half years and the Respondent started to use the website only after receiving the Complainant’s email of February 3, 2004, requesting transfer of the Disputed Domain Name. Such passive holding can be bad faith use when other circumstances are present, for example when it appears that the Respondent has warehoused thousands of names that correspond to the trademarks of others;
- By holding the Disputed Domain Name without providing any justification, the Respondent has “used” the Disputed Domain Name to prevent the Complainant from having a “.com” domain name that corresponds to its mark;
- The Respondent only started to use the Disputed Domain Name after receiving the Complainant’s transfer request; and
- The use of the website by the Respondent is different from the use by the Original Respondent.
The Respondent counters some of this evidence as follows:
- The non-use of the Disputed Domain Name was due to the Respondent redesigning the website and other websites within its WorldNews.com network;
- It did not register the Disputed Domain Name to sell it to the Complainant or to any other party; and
- The re-launch of the modified website had nothing to do with the Complainant’s correspondence but was simply published in the normal course of business.
The Respondent did not actively use the Disputed Domain Name for an 18-month period subsequent to the Original Proceedings. As the Complainant contends, non-use of a domain name has in certain limited circumstances been held to support an inference of registration and use of the domain name in bad faith for the purposes of paragraph 4(b) of the Policy. The circumstance that the Complainant seeks to rely on to bring this issue into play in these proceedings is the alleged “warehousing” of domain names by the Respondent, but this alleged warehousing activity or “pattern of conduct” of the Original Respondent and its “affiliated” company Serenade Limited was considered by the learned Panelist in determining that the Original Respondent had not registered and was not using the Disputed Domain Name in bad faith.
However, from the evidence there has been a material change in use of the Disputed Domain Name by the Respondent since the Original Proceedings. From the screenshots provided by the Complainant in its Complaint, the main difference between the Respondent’s website in 1999, and its website at the time of this Complaint appears to be that the content of the current website appears to be more news-related whereas the 1999 website contained only factual information on St. Moritz and Switzerland in general together with some links to news related sites. Although both websites provide information or news relating to Switzerland and to a lesser extent the town of St. Moritz, a primarily news-related website that also contains links to news and current affairs articles on the Respondent’s WorldNews website is materially different to a website that contains general factual information on Switzerland and St. Moritz in particular. Accordingly in this Panel’s opinion such a change of material emphasis does give rise to a “truly new action” under the Policy. Having found that this administrative proceeding is not an unjustified “refiling” within the scope of the Policy, the Panel goes on to consider each of the elements set out in paragraph 4(a) of the Policy.
7. Factual Background
The Complainant is an official organization of the community and well-known tourist resort St. Moritz and is the proprietor of the following trademark registrations:
- Swiss trademark registration with priority date of May 22, 1985, No. 342 618 ST. MORITZ (script characters) for goods in classes 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33 and 34;
- Swiss trademark registration with priority date of November 10, 1994, No. 426 956 ST. MORITZ (script characters) for services in classes 35, 39, 41 and 42;
- International trademark registration dated December 10, 1985, No. 499 591 ST. MORITZ (script characters) in Algeria, Germany, Austria, Benelux, Egypt, Spain, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Macedonia, Portugal, Democratic People’s Republic of Korea, Romania, San Marino, Czech Republic, Slovakia, Tunisia, Soviet Union, Vietnam and Serbia and Montenegro for the goods in classes 14, 16, 18, 19, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33 and 34;
- Canadian “official” trademark registration dated April 22, 1993, No. 906 131 ST. MORITZ (wordmark) for all classes (“pour marchandises et services”);
- US-registration dated August 18, 1987, No. 1453708 ST. MORITZ for goods in classes 14, 16, 18, 20, 21, 29, 30, 32 and 33; and
- United Arab Emirates trademark registration with priority date of February 6, 1994, No. 5169 ST. MORITZ (script characters) for goods in class 25, such as dresses, suits, ties, T-Shirts, boots, etc.
In addition, there are further ST. MORITZ trademark registrations all over the world for various goods and services as well as registrations for the trademark ST. MORITZ TOP OF THE WORLD (logo) in more than 37 countries.
8. Parties’ Contentions
1. The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights
The Complainant contends that the Disputed Domain Name is identical to its ST. MORITZ trademark.
2. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for a number of reasons, including the following:
- Trademark registrations pre-date the registration of the Disputed Domain Name
The Complainant’s trademark registrations in its home country as well as the Respondent’s home country pre-date the Respondent’s registration of the Disputed Domain Name.
- Non-use of the Disputed Domain Name for approximately 18 months
The Respondent has not used the Disputed Domain Name since it was transferred to the current Respondent from the former registrant StMoritz.com sometime between December 2, 2002 and March 5, 2003. The current Respondent only started to use the Disputed Domain Name after the Complainant’s request of February 3, 2004, and therefore there was no bona fide offering of goods and services by the current Respondent before it received the Complainants’ request on February 3, 2004.
- No bona fide use of the Disputed Domain Name
The Respondent’s website is split up in two sections, one section contains information concerning international, national and regional news which covers most of the information given and this website is therefore similar to the website of the domain name <wn.com>, and the other section, which accounts for less than 10% of the content of the home page, adds information about the well known region St. Moritz.
Further, the information given on the Respondent’s website about St. Moritz is incorrect. For example, a screenshot of the website claims to provide information about “today’s” weather but shows the date of the following day.
- Intent to mislead consumers for commercial gain and tarnish the Complainant’s trademark
The section of the Respondent’s website that contains information about St. Moritz creates the impression of a semi-official site as it provides some information about the region St. Moritz, for example about the weather and various other information available through different links on the left hand side of the website, some of which come from the Complainant’s official website at <stmoritz.ch>.
The Respondent’s website also misleads the Internet user into believing that the website is ‘official’. For example, the link “St. Moritz Headlines” (on the right hand side of the website) leads to a website “Genevapost” that provides no information about St. Moritz. Moreover, only some of the links listed under the link “St. Moritz Headlines” are about the region St. Moritz, the others are about different subjects.
- No consent
The Complainant has never given its consent or a license to the Respondent for the use of ST. MORITZ as part of a domain name, but has repeatedly expressed its protests.
3. The Disputed Domain Name has been registered and is being used in bad faith
The Complainant contends that this element of the Policy is proved for the following reasons:
- Knowledge of Complainant’s prior rights
The administrative contact has remained the same since the Original Proceedings and therefore the current Respondent was certainly aware of the well known name and trademark ST. MORITZ of the Complainant when the domain name was assigned to Respondent sometime between December 2, 2002 and March 5, 2003. The knowledge of the administrative contact must also be attributed to the domain name owner, at least under the present circumstances. It appears that the current Respondent only activated the website of the Disputed Domain Name as an insufficient defense against legal proceedings.
In addition, the Complainant has been the owner of a trademark registration in the United Arab Emirates for many years and the Respondent is providing information and services relating to the famous location St. Moritz. This demonstrates that the Respondent is well aware of the Complainant’s famous location. There are no good reasons for a person in the United Arab Emirates to maintain a website about a Swiss location if not with the intention to attract, for commercial gain, Internet users to this website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorships, affiliation and endorsement of this website and location and of products and services on this website and location.
- The Respondent is a notorious cybersquatter
The Respondent and its administrative and technical contact for the Disputed Domain Name (Cecilia Ng from Vanilla Ltd.), are notorious cybersquatters who have been the subject of a number of previous administrative proceedings under the Policy (Europay International S.A. v. Domaines Lt.,. and Cecilia Ng, WIPO Case No. D2000-0513, Mars, Incorporated v. Vanilla, Ltd., WIPO Case No. D2000-0586 and NAF decision No. FA0002000093674).
- No reply to warning letters
The Respondent has never responded to the Complainant’s e-mails or telephone messages. In addition, the Complainant has been unable to successfully transmit a facsimile to the facsimile number provided in the Whois Database. However, the Respondent only started to use the Disputed Domain Name after the Complainant’s e-mail of February 3, 2004, which implies that the Respondent did receive its e-mail request.
1. Identical or confusing similarity
The Respondent does not dispute this element of the Policy.
2. Rights or legitimate interests in respect of the Disputed Domain Name
The Respondent contends that it has a legitimate interest in respect of the Disputed Domain Name for the following reasons:
- The Complainant does not have exclusive rights to a geographic term
The Respondent registered the Disputed Domain Name because it is the name of a city. It has used and continues to use the web site to offer news and information about the Swiss city of St. Moritz. The Respondent’s web site contains St. Moritz news headlines, other links to things related to St. Moritz, St. Moritz weather information, and links to other Swiss news sites offered by the Respondent. The Complainant does not have exclusive rights to this geographic term (there are some 670,000 third party uses of the term “St. Moritz”) and utilizing a geographic domain name for a web site constitutes a legitimate interest under the Policy (the Respondent relies on a number of previous decisions under the Policy to support this contention, including the Original Proceedings, Brisbane City Council v. Joyce Russ Advertising Pty Ltd., WIPO Case No. D2001-0069, Port of Helsinki v. Paragon International Projects Ltd., WIPO Case No. D2001-0002 and Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769).
The Respondent also rebuts the majority of the Complainant’s contentions in respect to this element of the Policy. The lapse in content at the website to which the Disputed Domain Name resolves to was due to the Respondent redesigning its website and was published in the ordinary course of business and not because of the Complainant’s correspondence. The Complainant’s criticism of the quality and accuracy of the content on the Respondent’s website is irrelevant and unwarranted (the Respondent relies on the case of Empresa Municipal Promocion Madrid S.A. v. Easylink Services Corporation, WIPO Case No. D2002-1110). There can be no intent to misleadingly divert consumers for commercial gain as the Respondent’s website is clearly identified as a WN Network website, and none of the links that the Complainant refers to go to the Complainant’s official website. The Respondent does not require the Complainant’s consent to operate its website as the Complainant does not have exclusive rights to the term “St. Moritz”.
Further, a prior Panel has already determined the Respondent’s rights or legitimate interests in respect of the Disputed Domain Name (see the Original Proceedings).
3. Registration and use in bad faith
The Respondent contends that this element of the Policy is not established for the following reasons:
- The Complainant has failed to make any valid argument under the Policy to demonstrate that the Respondent registered and is using the Disputed Domain Name in bad faith.
- The Respondent operates a world news network from United Arab Emirates and provides information about locations around the world to users around the world, and St. Moritz is one of those locations.
- There is no evidence that proves that the Respondent has intended to confuse Internet users. The Complainant’s mark is subject to substantial third party use and there is no evidence that the Respondent has specifically targeted the Complainant’s mark.
- The Respondent has no duty to respond to threats from a complainant whose challenge had already been rejected pursuant to the Original Proceedings.
- The argument that geographic domain names should belong to the legal authority of the areas in question has been rejected in a number of previous cases under the Policy (for example Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047, City of Hamina v. Paragon International Projects, WIPO Case No. D2001-0001).
- There is no evidence that the Respondent registered the Disputed Domain Name with the Complainant’s trademark in mind. The evidence demonstrates that the Disputed Domain Name was registered because it is a city name, and the Respondent has registered numerous other city names as domain names including <abudhabi.com>, <helsinki.com>, <mexicocity.com>, <prague.com> and <warsaw.com>.
- Nothing on the Respondent’s website suggests that the Respondent is associated with the Complainant.
- The Respondent is not a cybersquatter as the Complainant alleges. It owns thousands of domain names which are predominately generic, common words or city names, and they have all been registered for development in connection with one or more sites which are part of the Respondent’s WorldNews, Inc. network of websites. The Respondent did not file a Response in those cases cited by the Complainant, and those cases involved a common word, a descriptive term and a geographically descriptive term. Further, the Complainant has failed to mention that the Respondent has been successful in a number of previous decisions under the Policy, including the Original Proceedings, John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, and Amana Company, L.P. v. Vanilla Limited, WIPO Case No. D2001-0749).
9. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the Disputed Domain Name), the Complainant must prove that each of the three following elements are present:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has proved that it is the proprietor of a number of registrations for the trademark ST. MORITZ. The Disputed Domain Name incorporates this mark in its entirety, the only difference the addition of the generic .com suffix.
Accordingly, the Panel finds that this element of the Policy is established.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel has already found that the Respondent in this administrative proceeding is essentially the same as the Respondent in the Original Proceedings. The hiatus in use of the domain name for some 18 months between the Original Proceedings and these proceedings is in this Panel’s opinion not determinative. The Respondent has deposed that it was developing its site network during this period. It has not in this Panel’s view acted during that period, or subsequent to it, in a manner which is inconsistent with legitimate usage.
The Disputed Domain Name resolved previously and resolves now to a website used for bona fide informational service purposes. The learned Panelist in the Original Proceedings found that the Respondent may have relevant rights or legitimate interests on the basis that the Respondent’s network of sites carry out the bona fide activity of providing information about various subjects including cities, countries and general news.
The key difference justifying the re-filing of this proceeding is the material change in the emphasis of the website content from being Switzerland/St. Moritz fact based to containing less historical factual material and being predominantly a news site but with some factual content about the town of St. Moritz. As was the case previously there is no suggestion on the website that the site is a semi-official site linked to the Complainant organization and it is apparent that the site is part of the WN network website. If anything the change in site content detracts from any impression that this could possibly be the case. In this Panel’s view this content change has no material effect on the Original Panelist’s findings concerning bona fide use. In short the change in emphasis of the site content in no way renders the Respondent’s current use mala fides.
Neither is there anything to suggest that the Respondent is merely warehousing domain names or otherwise acting in a manner inconsistent with that of a legitimate domain name owner. The Respondent has provided evidence that although it owns numerous geographical domain names (including the Disputed Domain Name) these form part of the Respondent’s network of city websites under its umbrella <cities.com> site and its WN World News Network. Active use of the Disputed Domain Name in this context with no other evidence that the Respondent is attempting to cybersquat also confirms the Respondent’s legitimate interest in the Disputed Domain Name.
This Respondent has provided evidence that satisfies the Panel that the Respondent has made and is making a bona fide use of the Disputed Domain Name for the purposes of paragraph 4 (c)(i) of the Policy.
C. Registration and use in bad faith
The Policy requires the Complainant to prove all 3 elements set out in paragraph 4(a) of the Policy in order to succeed with its Complaint. The Complainant has failed to prove the second element and accordingly there is no requirement for the Panel to consider this third element.
However, in the interests of completeness the Panel notes that paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith. The Panel finds that none of these circumstances exist and as described more fully under the succeeding section, the Complainant has not fulfilled the onus upon it of showing that the Respondent has both registered and used the Disputed Domain Name in bad faith. Accordingly the Complainant has also failed to establish this element of the Policy.
10. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
At the time of filing the Complainant had the benefit of the conclusions and findings of the learned Panelist in the Original Proceeding concerning the third limb of the Policy. It seems to this Panel that in spite of the change of website content there was no reasonable basis for the Complainant’s assertion that the Disputed Domain Name was being “used” by the Respondent in bad faith, let alone registered in bad faith.
The Complainant made no attempt to make out a case in relation to any of the circumstances set out in paragraph 4 (b) (i), (ii) or (iii). Its allegations in relation to subparagraph (iv) amounted to no more than an unsubstantiated suggestion that people might be confused into thinking that the Complainant sponsored, endorsed, was affiliated with or was the source of the Respondent’s website. However on arriving at the website it is quite clear the website is one of the WN World News Network sites – there is absolutely no suggestion of any connection of the website with the Complainant. Nor does the Complainant attempt to assert that it has ever used St. Moritz as a trade mark for similar or related purposes in such a manner as might encourage people to incorrectly assume that there is some connection between the Respondent’s website and the Complainant.
The Panel notes that a finding of bad faith under paragraph 4(a) of the Policy must require more than the mere use of a geographical based domain name to resolve to a website containing a limited number of descriptive facts about the geographical location together with a preponderance of unrelated factual news items. To hold otherwise would be to grant the Complainant unwarranted rights to a geographical name which should be available for descriptive use by all.
The Panel finds that the Complainant should have known that it did not have sufficient justification in relation to bad faith under paragraph 4(b) and has put the Respondent to unnecessary expense in having to participate in these proceedings. Accordingly the Respondent’s claim for Reverse Domain Name hijacking is made out.
For all the foregoing reasons, the Complaint is dismissed.
Dated: June 14, 2004
I concur in the result and in most of the decision set forth above. However, on the Preliminary Issue, I dissent from the Panel’s conclusion that the Respondent’s current website differs sufficiently from the website considered in the Original Proceeding. If every significant change in website content entitled a trademark owner to refile the same action in the hope of drawing a more sympathetic panel, UDRP decisions would lose any semblance of finality and the entire UDRP process would be rendered a mockery. See, e.g., Corbis Corp. v. Hochul Jung (NAF Case No. FA140624), effectively reversing Corbis Corp. v. Zest (NAF Case No. FA98441). At a bare minimum, a complainant should be required to allege changes in circumstances relevant to every element on which the respondent prevailed in the previous proceeding. Here the new circumstances, viewed in a light most favorable to Complainant, relate at most only to bad faith use and rights or legitimate interests, whereas the panel in the Original Proceeding also found for Respondent on the question of bad faith registration. I would therefore conclude that Complainant has failed to meet its burden of proving that this is a “truly new action” or is justified as a “refiling,” and would dismiss the Complaint on that basis.
In all other respects I concur in the decision set forth above.
David E. Sorkin
Dated: June 14, 2004
Since the majority of the Panel finds that the Complaint constitutes a justified “re-filing”, my dissenting opinion is now limited to the Panel’s majority considerations on the merits.
I Consideration on the merits
I agree with Complainant that each of the three elements specified in paragraph 4(a) of the Policy is applicable to the disputed domain name, i.e.:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark for which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(i) The domain name <stmoritz.com> is identical to or confusingly similar with the Complainant’s trademark “ST.MORITZ” for which the Complainant has prior rights:
a) The Complainant has registered “ST.MORITZ” in Switzerland with priority date of May 22, 1985 (in classes 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33 and 34), another Swiss trademark registration with priority date of November 10, 1994 (in classes 35, 39, 41 and 42), in Canada dated April 22, 1993 (for all classes), USA dated August 18,1987 (classes 14, 16, 18, 20, 21, 29, 30, 32 and 33), United Arab Emirates with priority date of February 6, 1994 (class 25) and it is the owner of international trademark registration dated December 10, 1985, in Algeria, Germany, Austria, Benelux, Egypt, Spain, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Macedonia, Portugal, Democratic People’s Republic of Korea, Romania, San Marino, Czech Republic, Slovakia, Tunisia, Soviet Union, Vietnam and Serbia and Montenegro (in classes 14, 16, 18, 19, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33 and 34).
b) The Respondent has registered the domain name <stmoritz.com>.
c) The Respondent does not dispute that the complainant’s trademark and the domain name <stmoritz.com> are identical.
d) Therefore, Complainant has established the first of the three elements specified in paragraph 4(a).
(ii) Respondent has no rights or legitimate interests in the domain name <stmoritz.com>.
Paragraph 4 (c) of the Policy defines the circumstances required for the Respondent to demonstrate “rights to and a legitimate interest in the domain name”. Under that provision, the Respondent is only required to demonstrate one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:
(1) before any notice of the dispute is given to Respondent, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(2) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(3) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Contrary to the majority of the Panel, I find that, in the present case, Respondent has not established that it made, prior to the lodging of the present claim by Complainant, any use or any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
It cannot be contested that Complainant has a priority registration in the home country of the Respondent (the United Arab Emirates) since February 6, 1994, that is before the domain name <stmoritz.com> was registered on September 24, 1998.
Respondent has not offered any evidence that there was a bona fide offering of goods and services by Respondent before it received the Complainant’s request on February 3, 2004. It results from the documents filed that the Respondent started to use the domain name <stmoritz.com> only after it received notice of the dispute.
Since the Panel finds that the website forming the object of the present complaint constitutes a ground for a “truly new action”, the website of the prior Respondent is to be considered to have been essentially different, and therefore the use, in the year 2000, of a different website by Respondent’s predecessor cannot constitute a “bona fide offering of services prior to the lodging of the present complaint” by Respondent for the present proceedings.
Respondent is certainly not commonly known by the domain name. The city of St. Moritz, the Complainant, is however world-famous as one of the best known and most exclusive holiday resorts in the world, like Aspen, Sun Valley, Acapulco, Monte-Carlo, to name only a few. Therefore, and this is a particularity of the present case and has obviously a bearing on the third requisite for justifying the use of a designation as a domain name, Respondent is not only not commonly known under the domain name it registered, but someone else (Complainant) is very well known worldwide under that name.
Contrary to the majority of the Panel, I come to the conclusion that Respondent is not making a “bona fide” or fair use of the domain name, that it is misleadingly diverting consumers and that it creates at least a risk of tarnishing Complainant’s Name and Trademarks.
Since the question of the “fair use of the domain name without intent ... to misleadingly divert consumer” leads to essentially the same argumentation as the discussion of paragraph 4(a)(iii) of the Rules, I revert to the following paragraph.
(iii) Respondent has registered and uses the Domain name in bad faith.
With regard to the third requisite, i.e. Complainant’s proof that the litigious domain name has been registered and is being used in bad faith, this is covered by article 4b) of the UDRP, which lists the circumstances which shall be considered to be evidence of the legislation and use of a domain name in bad faith.
It is obvious that, by using the domain name <stmoritz.com>, Respondent has intentionally attempted to attract for commercial gain Internet users to its website. Respondent knows since many years that Complainant has the trademark “ST.MORITZ” registered. It knows also that St. Moritz is the official name of the Complainant and that Complainant has all the personality rights to that name. It is furthermore very well aware, at least since the proceedings held in 2000, that Complainant is a world famous holiday resort.
Whereas, in the year 2000, when Respondent’s predecessor was attacked by Complainant for having registered the domain name <stmoritz.com>, Respondent’s predecessor’s website contained essentially some information about St. Moritz and general information about Switzerland, and had only four banners to Respondent’s proper services (Internet Café Guide, Safety Construction, Cities.com and Worldnews.com), today the actual website gives practically only very little information about St. Moritz and Switzerland, but corresponds essentially to Respondent’s main activity of providing world news.
It is obvious from looking a the present website of Respondent that its primary purpose is not to give information about the famous resort St. Moritz and, in a more general way, Switzerland, but about any news of the day and any events of common interest on a worldwide level. It is obvious that Respondent has chosen the domain name <stmoritz.com> only for the purpose to divert the persons who look for information about Complainant to the website of its mother company, World News Inc., and to have them study its contents.
Respondent tries to camouflage its intentions by giving some information about Complainant. It indicates the weather conditions in St. Moritz, it indicates the list of St. Moritz hotels, it indicates some general indications under the title “St. Moritz vacations”. Furthermore, the site contains a title “St. Moritz headlines”, which however gives practically no information on St. Moritz, but on all other kinds of world events. This information is probably just inserted to give some apparent legitimacy for the use of Complainant’s name “St. Moritz”.
By calling its website “STMORITZ”, Respondent does not only take advantage of the reputation of the world famous resort to attract people to its own websites, but it creates the impression (or at least the risk of such an impression) that there exists some relationship between World News Inc. (not the Respondent) and the famous resort, and this might even tarnish the reputation and the image of Complainant. By using the Complainant’s proper name and by giving only little information about Complainant itself, Respondent might create amongst some uncritical visitors to its website the impression that Complainant has granted Respondent a license to use its name or event that this site is an official site of Complainant. And then, the visitor may be very astonished that this famous resort does not care to give more information about itself and that apparently it cannot fill its website with interesting information about itself, but that it projects on its own website generally available worldwide information and publicity and links to commercial sites, which have absolutely no direct connection with it.
Therefore, in my opinion, it is clearly established that Respondent has acted in bad faith when registering the domain name <stmoritz.com>.
II Respondent’s argumentation
Respondent argued that the Complainant cannot acquire exclusive rights to a geographical term. Therefore, Respondent thinks that he has a right to register and use a Domain name incorporating the name of a city in Switzerland.
However, it is worldwide acknowledged that a trademark registration and the right to one’s own name grant an exclusive right to their owner without consideration whether this is a geographical name or a family name. In the present case, St. Moritz is one of the World’s most famous mountain resorts. What is even more, the township “St. Moritz” enjoys a right of personality to its name. Therefore, the use of the homonym “ST. MORITZ” as a trademark for products, services and as distinctive elements of a domain name is a personal reserve and constitutes a valid and exclusive right for Complainant only and its members.
I furthermore cannot agree with Respondent’s general contention (which is apparently shared by the majority of the Panel) that anyone may register generic names or geographical designations for its own exclusive use as a domain name.
Generic names and geographical denominations must remain free for concomitant use by all those who show a reasonably sustainable interest for such use. In my opinion, the times of the unrestricted “first come first served” policy of the first Internet users, regardless of the terms and designations they registered, are over. Since the Internet has become an important world economic factor, is it desirable (and admissible) that the Internet remains an unrestricted playground bare of any rules of fair commercial behavior, allowing indelicate players to take advantage of the reputation which others have built with great efforts and (financial) means? I do not think so.
III. The Reverse Domain Name Hijacking
I strongly dissent with the majority of the Panel concerning the question of Reverse Hijacking.
As developed above, and contrary to the majority, I am of the opinion that the changed content of the Website is evidence of the use in bad faith of the name “St. Moritz”.
The fact that when arriving on Respondent’s website called St. Moritz, the attentive visitor finds out that it is in reality one of WN World News Network sites, must lead that attentive visitor to assume that there exists some link between the famous resort and World News Inc.
Contrary to the majority’s finding, I do not concur that it is Complainant’s duty to prove that it has used the trademark St. Moritz for similar purposes as the ones Respondent uses its website for - it is the latter’s duty to establish that there is no risk of passing-off.
I can agree with the majority’s last finding - that for purposes of domain names, a geographical name should be made available for a descriptive use by all. But, contrary to the majority, I find that Respondent does not use the name St. Moritz in a descriptive way. It might be admissible, under the Rules, for Respondent to open a website STMORITZ which limits itself to give objective information about the famous resort. By using the name STMORITZ for giving general information related to or provided by a third party, World News Inc., Respondent does not use the website for a descriptive purpose, but for exploiting the fame of Complainant to the advantage of World News Inc.
Therefore, in my opinion, one cannot accuse Complainant of having attempted a RDNH and pursuant to paragraphs 4(a) of the Policy and 15 of the Rules, the domain name must be transferred to the Complainant.
Dated: June 14, 2004