WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Landeshauptstadt Muenchen v Beanmills, Inc.
Case No. DBIZ2002-00147
1. The Parties
The Complainant the Landeshauptstadt Muenchen, a municipality of Muenchen, Germany. The Complainant is represented by Mr. Florian Baier, of Muenchen, Germany.
The Respondent is Beanmills, Inc., a Nevada corporation of Carson City, NV, United States of America. The Respondent is represented by Mr. Stephen Anderson of Anderson & Shippey, Attorneys of Newport Beach, CA, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <munich.biz>. The domain name is registered with Registrars Asia Pty Ltd. of Melbourne, Australia ("the Registrar").
3. Procedural History
The Complaint was received on April 27, 2002, (email) and May 16, 2002 (hard copy), by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for <.biz> adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP") and the Rules under that Policy ("the STOP Rules"). On May 18, 2002, (email) the Complainant filed an amendment to the Complaint.
The STOP is incorporated into the Respondent’s registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.
Having verified that the Complaint as amended satisfied the formal requirements of the STOP and the STOP Rules, the Center on May 22, 2002, transmitted by courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the STOP Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on June 4, 2002 (email and hard copy).
The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The STOP requires that Complaint be determined by a sole Panelist.
The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.
On June 17, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record.
The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
The language of the administrative proceeding is English. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been confirmed.
4. Factual Background
The Complainant is the municipality of Muenchen, the capital city of Bavaria, Germany. Like many municipalities worldwide, it operates a variety of utility infrastructures as well as exhibition sites, a telephone company and an accommodation service. It owns several domain names including <muenchen.de> and <muenchen.com>.
The German Civil Code prevents the "abuse of the name of services, companies and organizations."
The Complainant does not own a registered trademark for the word "Muenchen", nor for its English translation "Munich".
5. Parties’ Contentions
The disputed domain name is identical to Complainant’s alleged common law mark.
Respondent has no rights or legitimate interests in respect of the domain name which is the name of the City of Muenchen in its English translation. The Respondent does not appear to be doing any business under the domain name.
The provisions of the German Civil Code prevents the use of the Complainant’s name.
Respondent has no independent website presence on the internet.
The Complainant has no exclusive rights in the disputed domain name. A <.biz> name must be used for bona fide commercial or business purposes and Complainant has alleged none.
The Respondent registered the name with the intent of providing software services aimed at supplying information concerning local amenities and facilities of the City of Munich.
The name has a generic and geographic descriptive meaning. The Respondent was unaware of any exclusive rights of the Complainant.
Complainant has no registered mark and the local law cited by it has not been shown to be applicable.
Cases under the UDRP show that geographic names cannot be monopolized by registering a trademark. Reservation of a common business name does not grant common-law trademark rights. Respondent has a legitimate interest in the domain name in connection with a bona fide offering of goods and services. It intended to launch a website before receiving notice of the Complaint. Searches of the internet reveal 1.68 million websites referencing the word "Munich" and 40 advertisers use paid keyword listings for the geographically descriptive term "Munich".
Other top-level domains (e.g. <munich.com>) and country-code TLD’s (e.g. <munich.it>) are not owned by Complainant.
There are 49 trademarks registered in the US Patent & Trademark office containing the word "Munich". Where third parties have claimed rights to marks including the word, they have disclaimed the "Munich" portion of their mark. Such marks include ‘Munich 2000’ and ‘Bob’s ’47 Munich-style lager’.
Respondent did not register the name in bad faith and Complainant has offered no proof of bad faith.
6. Discussion and Findings
Under STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a <.biz> domain name, NeuLevel, the Registry Operator of the <.biz> gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. NeuLevel determines priority orders if there are multiple claimants on a randomized basis (STOP Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP Complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is pled by the priority claimant.
Under STOP, the Complainant must show:
(a) That the domain name is identical to the Complainant’s trademark or service mark (Paragraph 4(a)(i)).
(b) That the Respondent has no rights or legitimate interests in the domain name.
(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).
A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent.
Likewise, the instances of bad faith exemplified in the UDRP can be invoked by a Complainant. However, because the STOP and the STOP Rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration.
If the alleged mark claimed by the Complainant is "Muenchen", the name of a German city in the German language, then the disputed domain name is not identical with any mark owned by the Complainant. That finding would be decisive. The fact that the disputed domain name is the English translation of an alleged mark in another language would be irrelevant. Under the STOP, the mark and the name must be identical. Confusing similarity is not enough.
Assuming that the municipality known as ‘Muenchen’ in German had a common-law mark in the translation of ‘Muenchen’ into English or any other language, then the mark is identical with the disputed domain name.
Assuming also that a common-law mark provides a sufficient basis for a claim under STOP, a mere geographical name is not a proper basis on which to claim a mark.
Several cases under the UDRP show this. In Port of Helsinki v. Paragon International Products Ltd, WIPO Case No. D2001-0002, the Panel found that the Complainant had established no trademark. It had merely a geographical indication. A unique geographical name could not be held as belonging to the legal authority in the geographical area in question. In Neusiedler Aktiengesellschaft v Vinayak Kulkarni, WIPO Case No. D2000-1769, the Panelist said: "Geographic names cannot be monopolized by registering a trademark or company name. The use of geographic terms as such in domain names or otherwise by these parties is generally possible despite a trademark registration." The statement does not sit easily with the decision in Excellentisimo Ayuntamiento de Barcelona v Barcelona. Com, WIPO Case No. D2000-0505. There the governing body of the City of Barcelona owned many trademarks for the name Barcelona and the domain name <barcelona.com> was ordered to be transferred to the Complainant. The Panel prefers the approach in the Helsinki case and in the later cases to which reference will be made. The Barcelona case can be distinguished because the Complainant owned registered marks for the city name.
The Panel agrees with the succinct summary by the learned Panelist in Brisbane City Council v Warren Bolting Consulting Pty Ltd., WIPO Case No. D2001-0047. Thus:
"In both of the above two cases, the Panel was of the view that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right to the name of that area. This Administrative Panel agrees with that view. In both of the above two cases, the Panel did recognize that, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trademark right in the name of that area. Again, this Administrative Panel agrees with that view. Thus, the important issue in a case, such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade."
To similar effect is the decision of the Panel in Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500, where the municipality of another German city unsuccessfully complained about the registration of a domain name, <heidelberg.com>. In that decision, the learned Panelist referred to Second WIPO Report on the Domain Name process which accepted as a starting point that geographical names per se were not within the scope of the STOP.
In the present case, the Complainant, like the Complainant in the Heidelberg, Brisbane and Helsinki cases, has adduced no evidence to show that its name has acquired distinctiveness as a trademark in respect of any goods or service which it may offer. Accordingly, it has no rights in the name as a trade or service mark. The first criterion under the STOP has not been proved and the Complaint must fail.
Accordingly, the first criterion under STOP is not proved. It is unnecessary to consider the others. The Complaint must be dismissed.
For the above reasons, the Panel decides that the Complaint is denied.
Hon. Sir Ian Barker Q.C.
Dated: July 1, 2002