WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kur- und Verkehrsverein St. Moritz v. StMoritz.com
Case No. D2000-0617
1. The Parties
Complainant is Kur- und Verkehrsverein St. Moritz, Gemeindehaus, 7500 St. Moritz, Switzerland, represented by J. David Meisser, Esq., Meisser & Weinmann, attorneys at law, Bahnhofstrasse 8, 7250 Klosters, Switzerland, hereinafter the "Complainant".
Respondent is StMoritz.com, P.O. Box 24323, Sharjah, United Arab Emirates, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "stmoritz.com", hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainantís complaint on June 16, 2000 (electronic version) and June 19, 2000 (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). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 8, 2000.
On June 26, 2000, the Center transmitted via email to Network Solutions Inc. a request for registrar verification in connection with this case. On July 3, 2000, Network Solutions Inc. transmitted via email to the Center, Network Solutionsí Verification Response, confirming that the Respondent is the registrant and that the administrative, technical, zone and billing contact is Cecilia Ng (email@example.com), Vanilla Limited, P.O. Box 24323, Sharjah, United Arab Emirates.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on July 8, 2000, to Respondent and to Network Solutions, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail, in accordance with the following contact details:
P.O. Box 24323
United Arab Emirates
Fax : +1 212 253 42 16
The Center advised that the Response was due by July 27, 2000. However, no Response was submitted. Accordingly, the Center issued a Notification of Respondent Default on July 29, 2000.
On August 1, 2000, in view of the Complainantís designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received on August 1, 2000, Mr. Geert Glasí Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
According to Complainant, Complainant is an official organisation of the community of St. Moritz. The community of St. Moritz itself is represented in the board of Complainant and practically all enterprises that have built up the world-wide reputation of the place St. Moritz are members of the Complainant. Originally, St. Moritz acquired its fame thanks to its medicinal springs.
According to Complainant, the reputation of St. Moritz is excellent and for more than 100 years, St. Moritz has been regularly attracting worldwide attention through its sports events, for example by organising Alpine Ski World Championships in 1928, 1948 and 1974, World Championship in Boblet and Bobsleigh in 1955, 1965, 1970, 1974, 1977 and 1982 and Olympia Winter Games in 1928 and 1948. St. Moritz is one of the best-known holiday and sports resorts of the world.
The name "St. Moritz" is also used for a wide range of goods and services in connection with this Swiss village and its tourist aspects, for example, organisation of congressional, cultural, sportive and political events, as well as travelling and gastronomic services etc. This trademark is continuously and extensively used by its owner, Complainant, its members and several licensees since 1930.
According to Complainant, "St. Moritz" is a registered trademark in 27 countries, namely in Switzerland, Algeria, Germany, Austria, Benelux, Egypt, Spain, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Portugal, Democratic Peopleís Republic of Korea, Romania, San Marino, Czechoslovakia, Tunisia, Soviet Union, Vietnam, Yugoslavia, Canada, United States of America, Kuwait, United Arab Emirates, Saudi Arabia. In other countries trademark applications for "St. Moritz" are pending.
The complaint is based upon several trademarks for "St. Moritz", of which Complainant is the owner, according to copies of trademark registrations submitted in annex to the complaint. These are:
- Swiss registration with priority date of May 22, 1985, No. 342618, for goods in classes 14, 16, 18, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 34;
- Swiss registration with priority date of the year 1930, No. 426956, for services in classes 35, 39, 41, 42;
- International registration dated December 10, 1985, No. 499591, for the countries being Algeria, -Germany, Austria, Benelux, Egypt, Spain, France, Hungary, Italy, Liechtenstein, Morocco, Monaco, Portugal, Democratic Peopleís Republic of Korea, Romania, San Marino, Czechoslovakia, Tunisia, Soviet Union, Vietnam, Yugoslavia for the goods in classes 14, 16, 18, 19, 20, 21, 24, 25, 28, 29, 30, 31, 32, 33, 34;
- Canadian registration dated February 2, 1994, No. 901131, for goods in class 42;
- US-registration dated August 18, 1987, No. 1453708, for goods in classes 14, 16, 18, 20, 21, 29, 30, 32, 33;
- Kuwait registration with priority date of October 19, 1993, No. 25511, for goods in class 25;
- United Arab Emirates registration with priority date of February 6, 1994, No. 5169, for goods in class 25; and
- Kingdom of Saudi Arabia registration with date of September 29, 1993, No. 318/79, for goods in class 25.
There is no relation between Respondent and Complainant and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainantís marks.
The Domain Name resolves to a web site which contains information on St. Moritz in particular (e.g. lists of hotels, restaurants Ö) and on Switzerland in general (history, economy, visa requirements Ö). The website also contains a number of banners. It appears that all the banners (with the exception of the banner "amazon.com") resolve to active web sites connected to domain names owned by Serenade Limited or Vanilla Limited having always the same address as the Respondent: P.O. Box 24323, Sharjah, United Arab Emirates. In the same way, the contact person is always the same person as is the case for the Respondent, namely Cecilia Ng (firstname.lastname@example.org), Vanilla Limited, P.O. Box 24323, Sharjah, United Arab Emirates. These domain names are: netcafes.com, safcon.com, cities.com, worldnews.com and swissdaily.com. The web sites to which they are connected provide information on respectively, internet cafes throughout the world (netcafes.com), different cities (cities.com), news in general (worldnews.com) and news on Switzerland in particular (Swissdaily.com).
It furthermore appears that Serenade Limited has also registered other city names as domain names. This is among others the case for praha.com, rostock.com, malaga.com, luanda.com, linz.com, majorca.com, etc., with as contact Vanilla Limited, P.O. Box 24323, Sharjah, United Arab Emirates. The look and feel of these web sites as well as the kind of information provided by them is very much like what appears on the stmoritz.com web site.
The Domain Name was registered on September 24, 1998.
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical to Complainantís "St. Moritz" trademark, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
Consequently, Complainant requires the transfer of the Domain Name registration.
No response has been submitted.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
The Domain Name is "stmoritz.com".
"St. Moritz" is a registered trademark of the Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark "St. Moritz" of the Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.
On the one hand, by not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4c of the Policy, any rights or legitimate interests in the Domain Name. On the other hand, however, it appears that Respondent provides informational services about the city of St. Moritz and about Switzerland. Indeed, upon analysis of the web sites connected to the different domain names registered by Respondent or its "affiliated" company, Serenade Limited, it appears that Respondent has built a whole network of web sites providing information about subjects as various as different cities, countries, general news, net cafes, etc., which activity the Panel finds does qualify as a bona fide activity.
The Administrative Panel therefore finds that Respondent may have a legitimate interest in the Domain Name.
c. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
In consideration of, and weighing up the facts above stated, the Administrative Panel finds that the circumstances present do not indicate that Respondent would have registered and is using the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name "stmoritz.com" registered by Respondent is identical to the trademark of Complainant, that Respondent may have a right or legitimate interest in respect of the Domain Name, and that Respondentís 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 Complainant.
Dated: August 17, 2000