WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Her Majesty the Queen, in right of her Government in New Zealand v. iSMER

Case No. DBIZ2002-0270

 

1. The Parties

The Complainant is Her Majesty the Queen, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs, with address in Auckland, New Zealand.

The Respondent is iSMER, with address in London, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name is <newzealand.biz>.

The registrar of the disputed domain name is Philippine Registry.com, Inc., with business address in Quezon City, Philippines.

 

3. Procedural History

(a) Complainant initiated this proceeding under the Start-Up Trademark Opposition Policy for .biz ("STOP") by filing a complaint received via e-mail by the WIPO Arbitration and Mediation Center (the "Center") on June 11, 2002, and received in hardcopy on June 17, 2002. Respondent via e-mail communicated with the Center regarding certain technical aspects of Complainant’s submission. Following notice from the Center of a filing deficiency, Complainant filed an amended complaint received by the Center via e-mail on June 19, 2002, and received in hardcopy on June 27, 2002. The Center verified that the amended complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("Supplemental STOP Rules"). Complainant paid the requisite filing fees.

(b) On June 28, 2002, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent by courier and e-mail, and advised that the deadline for transmission of a response was July 18, 2002.

(c) By e-mail received by the Center on July 15, 2002, Respondent asserted various legal objections to the proceeding, indicating that "Participation in the STOP proceeding is by no means a waiver to our legal rights".

(d) Following an e-mail request from Respondent, by e-mail of July 16, 2002, Complainant consented to a 20-day extension of the deadline for filing a response, and by e-mail of July 16, 2002, the Center granted an extension for filing a response until August 7, 2002.

(e) By e-mail of July 25, 2002, Respondent requested a further 20-day extension for filing a response, indicating that Complainant had agreed to such extension. By e-mail of July 25, 2002, the Center advised Respondent that no further extensions could be granted because this would constitute a de facto suspension of the proceeding, and would not be fair to other potential IP Claimants.

(f) On August 5, 2002, the Center received a response from Respondent via e-mail and telefax, and notified the parties of receipt of the response.

(g) By e-mail of August 10, 2002, Complainant requested to the Center that "the decision in this matter, when it issues, not be published", and indicated that Respondent had agreed to this request. By e-mail of August 10, 2002, Respondent "confirm[ed] our consent that the decision in this matter, when it issues, not be published".

(h) Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on August 14, 2002, the Center appointed the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter and notified the parties of the appointment. The Center advised the Panel that absent exceptional circumstances it would be required to forward its decision to the Center by August 28, 2002.

(i) In its transmission of the case file to the Panel, the Center noted that "there are further IP claimants in the queue regarding the disputed domain name".

(j) The Center notified the parties by e-mail of August 29, 2002, that the Panel, on its own motion and based on exceptional circumstances, had extended the due date for rendering its determination until September 5, 2002. By e-mail of September 26, 2002, the Center notified the parties that in accordance with paragraph 10(c), STOP Rules, the decision date was further extended until October 11, 2002.

(k) The Panel has received no additional requests or transmittals from the parties, and has not found it necessary to request additional information. These proceedings have been conducted in English.

 

4. Factual Background

Complainant is a sovereign state, describing itself as "a sovereign constitutional monarchy situated in the South Pacific Ocean with a population of approximately 3.8 million people". (Complaint, para. 13). Complainant is a Member State of the United Nations (Panel visit to "http://www.un.org" of August 30, 2002, indicating New Zealand on the current list of Member States, with October 24, 1945, as date of admission), and is generally recognized by the international community as meeting the criteria for statehood under customary international law[1].

Complainant has applied for registration of the term "New Zealand" as a word trademark at the Intellectual Property Office of New Zealand, Trade Mark Number 640615, filed June 29, 2001, in International Class (IC) 22, covering "all goods in class; fibres (both natural and artificial); wool (both raw and treated)"; Trade Mark Number 640616, filed June 29, 2001, in IC 29, covering "all goods in class; meats and dairy products; preserved fruits and vegetables"; Trade Mark Number 640617, filed June 29, 2001, in IC 31, covering "all goods in class including fresh fruits and vegetables"; Trade Mark Number 640618, filed June 29, 2001, in IC 33, covering "all goods in class; alcoholic beverages except beers; wines"; Trade Mark Number 640619, in IC 41, filed June 29, 2001, covering "all services in class; education and entertainment services". The current status for each of the aforesaid applications is "Examination". (Complaint, para. 34 and Annex 5)

Complainant indicates that "‘NEW ZEALAND’ is a trade and service mark owned collectively by all NZ citizens, organizations and the State, i.e. by the Complainant. It is used to identify those goods and services produced by and for citizens, organizations and the State of New Zealand from the goods and services produced by citizens, organizations and/or states of other countries". (Id., para. 17)

Complainant supports its use of "NEW ZEALAND" in a trademark and service mark sense through an affidavit dated June 13, 2002, of Rod MacKenzie, General Manager of Auckland, also the General Manager, Marketing and eBusiness for the New Zealand Trade Development Board, "which trades as Trade New Zealand". Trade New Zealand is an agency of the New Zealand Government. Mr. MacKenzie has served in several senior trade promotion roles for New Zealand. He states, inter alia:

"9 … I have effectively been a supervising sales manager or sales facilitator for NEW ZEALAND products, and have come into contact with customers for New Zealand products quite literally on an hourly basis.

AWARENESS OF THE NEW ZEALAND BRAND

10. As a result of my experience as Senior Trade Commissioner in the United States and my other roles, I confirm that people, organizations and states around the globe recognize the integrity and singularity of the name and brand NEW ZEALAND.

11. In particular, people in the jurisdictions for which I have been responsible, recognize products and services as being of better than average quality, simply by reference to the words NEW ZEALAND.

12. In my experience, customers of products branded NEW ZEALAND are regularly disinterested and uninterested in which particular integer of the Complainant made the product. They are satisfied with the fact that the product is branded NEW ZEALAND.

14 [sic]. In further support, I note that The New Zealand Way Ltd. is often known as the ‘Brand NEW ZEALAND project’.

15. The fact that customers also know New Zealand as a place in the South Pacific does not detract in any way from the functioning of the brand NEW ZEALAND as a trade mark."

According to a .BIZ Registry (NeuLevel, Inc.) WHOIS database report furnished by Complainant, Respondent registered the disputed domain name <newzealand.biz> on March 27, 2002. The WHOIS registration data indicates that the Administrative Contact for the disputed domain name is "Soliman, Tarek". The physical and e-mail addresses for Respondent and its Administrative Contact are identical.

Respondent has been complained against in a number of proceedings under the STOP. In at least two such proceedings the complainant has succeeded in obtaining an order for transfer of the disputed domain name[2]. In at least four such proceedings the complainant has failed to obtain such an order, although in two such cases additional STOP claims were authorized[3]. It is apparent from data furnished by Complainant (Complaint, para. 48), and from data presented in the aforementioned earlier proceedings, that Respondent has registered numerous domain names in the .biz gTLD. Because of the particular circumstances of this proceeding, the Panel will not further elaborate on the subject matter of the earlier proceedings, except to note that Respondent generally evidences a sophisticated understanding of the STOP.

There is no evidence on the record of this proceeding that Respondent has made use of the disputed domain name.

By operation of the NeuLevel .biz start-up procedure each applicant for the same domain name was notified via e-mail of all IP Claims submitted regarding that name[4]. The presence of additional IP Claimants also was referenced in the Center’s e-mail to the parties of July 25, 2002, regarding Respondent’s request for an additional extension. Complainant and Respondent thus were aware of the presence of additional IP Claimants prior to requesting that the decision of the Panel not be published.

The .biz Registration Agreement incorporates the STOP and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, revised November 19, 2001). In registering the disputed domain name with the registrar, Philippine Registry.com, Inc., Respondent accepted the .biz Registration Agreement. In doing so, Respondent consented to be bound by the STOP and STOP Rules. The STOP and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which the Center is one. This Panel is appointed by the Center to decide the complaint under the STOP pursuant to the STOP Rules.

 

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a sovereign state with the name "New Zealand", with a gross domestic product of USD $49.9 billion in 2000, and with exports sales in the same year of USD $17.8 billion.

Complainant asserts that "NEW ZEALAND" is a trademark and service mark owned collectively by the citizens of that country and by the state (see Factual Background supra for Complainant’s full statement on this point).

Complainant states in its own words:

"18. The formal owner of the trade mark NEW ZEALAND is the Head of State, Her Majesty the Queen, in right of her Government in New Zealand, as trustee for the citizens, organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade.

19. The combined effect of the citizens’, organizations’ and state of New Zealand’s trading activities, advertising and marketing expenditure, awards received, events sponsored, trade mark registrations and other activities, both within New Zealand and internationally level [sic], is that a considerable reputation and goodwill exists in the mark NEW ZEALAND (goodwill in this common law context meaning an acquired reputation).

20. Indeed, both in the Pacific region and internationally the mark NEW ZEALAND when applied to either goods or services conveys specific and well-understood connotations. In support of this refer to the affidavit of Rod MacKenzie, provided as Annex 3.

21. The term New Zealand cannot be used other than for this apparent and generally understood meaning. It is submitted that the term NEW ZEALAND constitutes a famous mark throughout the world, and that the Complainant is the owner of the reputation and goodwill that exists in the mark NEW ZEALAND.

22. The status of the mark NEW ZEALAND as a common law trade mark has been acknowledged by the courts of New Zealand, which will prohibit the misuse of the mark NEW ZEALAND by a third party under the tort of passing off where a plaintiff shows that:

22.1 it is a partial owner of the goodwill attaching to the New Zealand trade mark;

22.2 that the use of the New Zealand trade mark by the third party is a misrepresentation;

22.3 that this representation will cause damage to the plaintiff.

23. In other words, a third party which, by its use of the New Zealand trade mark, represents that its goods or services are connected in some way with New Zealand when those goods or services are not, will pass his goods or services off as New Zealand goods or services.

24. The New Zealand trade mark is thus recognized and is treated by the courts of New Zealand as a trade and service mark and enforced as a common law trade mark.

25. There is no difficulty with a trade mark being owned and enforced by groups with a common interest. This is demonstrated by the various Champagne cases."

Complainant provides citations to cases referring to the protection of the term "Champagne" in connection with sparkling wines (see J Bolllinger v. Costa Brava Wine Co. Ltd. [1960] Ch 262 and Wineworths Group Ltd. v. Comite Interprofessionel du Vin de Champagne [1992] 2 NZLR 327).

Complainant refers for support to the Paris Convention on the Protection of Industrial Property, stating in its own words:

"28. In further support of the claim that NEW ZEALAND is a common law trade mark owned by the Complainant, not merely a country name, by virtue of paragraph 6 ter of the Paris Convention 1883, participating states recognize the names of other participating states to the extent that those names cannot be used improperly. As a signatory to that Convention, the Complainant is able to enforce its rights to the brand NEW ZEALAND where that name is used in a deceptive manner in any of the other participating states."

Complainant argues that a term may function both as the name of a place and as trademark, and the fact that NEW ZEALAND is the country name of Complainant does not preclude NEW ZEALAND also from constituting a brand.

Complainant states that it has filed applications for trademark registration with the proper authorities in New Zealand (see Factual Background supra). Complainant further states: "individual integers of the Complainant are the proprietors of many further trade mark registrations and applications that contain the mark NEW ZEALAND in countries all around the world".

Complainant alleges that since the trade mark legislation of most countries prohibits the registration of marks that are contrary to law, parties that have no relationship with New Zealand would "in most cases be unable to obtain registrations of trade marks that include the mark NEW ZEALAND, as the use thereof would be likely to mislead or deceive the public, or otherwise cause confusion, and would therefore be contrary to law."

Complainant says, in its own words:

"38. The Complainant is aware that geographical names have been the subject of several earlier WIPO decisions.

39. The key element which distinguishes the name NEW ZEALAND in the trading world is that New Zealand constitutes a singular legal and political entity who is entitled to the entire control of that name politically, emotionally and in commerce.

40. This was not the case in the earlier decisions. For instance, Barcelona is only one region of Spain. It is not subject to overall control by any singular entity.

41. New Zealand is clearly a trade and service mark within the meaning of clause 4(a)(i) of the STOP Policy and is owned by the citizens, organizations and State of New Zealand.

42. The Domain Name is identical to the mark NEW ZEALAND, as previous WIPO decisions have clearly established that a domain name extension performs a functional role only and is not to be considered when comparing trade marks with domain names."

Complainant asserts that Respondent has no rights or legitimate interests in the dispute domain name. Complainant has not been able to find evidence that Respondent resides in or does business in New Zealand, and to the best of its knowledge Respondent is not affiliated with Complainant, is not endorsed by Complainant, does and did not have Complainant’s permission to use its mark in a domain name, is not the beneficiary of a trade or service mark identical to the disputed domain name, has not made demonstrable preparations to use the name for a bona fide offering of goods or services, and has not been commonly known by the disputed domain name.

Complainant refers to seventy-five domain names registered by Respondent, several of which are country names or names of geographical regions, including, e.g., <arizona.biz>, <britain.biz>, <iraq.biz>, <greenland.biz>, <kansas.biz>, <libya.biz>, <luxembourg.biz>, <montana.biz>, <syria.biz> and <turkey.biz> (see Complaint, Annex 8). Complainant states that "The wide diversity of domain names owned by the Respondent makes it highly unlikely that the Respondent has legitimate rights to all or even any of them".

Complaint indicates that when it contacted Respondent requesting transfer of the disputed domain name, Respondent refused and did not provide information to suggest that it had a legitimate right to the name.

Complainant alleges that the disputed domain name was registered and/or is being used in bad faith. Complainant suggests domain names are a major portal by which citizens, organizations and institutions of a country promote their goods and services. Persons seeking to do business in a country via the Internet will assume that the domain name [country].biz is run by or on behalf of its institutions, so that the mere acquisition of a [country].biz name by a person who is not a citizen, organization of or the state is an act in bad faith. Thus, Respondent has registered the disputed domain name in bad faith.

Further, Complainant argues that Respondent was well aware that the mark NEW ZEALAND belonged to Complainant when it registered the name, and since it could not lawfully use the name for itself, Respondent must have intended to sell it to Complainant or one of its "integers".

Complainant asserts that Respondent registered the disputed domain name to prevent Complainant or any of its individuals or businesses from registering it, and that Respondent has engaged in a pattern of such conduct.

Complainant states that Respondent registered the disputed domain with the intention to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or other on-line location.

Complainant indicates that it took reasonable steps to resolve this matter directly with Respondent, and initiated this proceeding after those efforts failed.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

Respondent replies in its own words as follows:

"[6.] iSMER admits, solely for purposes of the present proceeding and without prejudice to any other UDRP or STOP proceeding in relation to this or any other domain name, that:

1. The Domain Name is identical to a trade mark(s) and/or service mark(s)

in which the Complainant has rights; and

2. iSMER currently has no legitimate interests in respect of the Domain

Name; and

3. iSMER has registered the domain name in bad faith.

[7.] iSMER agrees that a transfer of the Domain Name to the Complainant is appropriate and asks that the Administrative Panel order such a transfer."

 

6. Discussion and Findings

a. Background and Summary of Determination

The STOP is a set of rules applying to the resolution of domain name disputes initiated by IP Claimants that have been notified by NeuLevel, the Registry Operator of the .biz gTLD, regarding the registration of a .biz domain name that may be identical to a trademark or service mark in which the IP Claimant asserts rights. The Panel will make findings under the STOP necessary to render a determination in this dispute.

This proceeding involves certain distinctive, if not unique, circumstances. A sovereign state has initiated a proceeding under the STOP asserting trademark and service mark rights in a country name. A number of panels (including this sole panelist) have previously considered the trade or service mark status of geographic areas, or subunits of states (such as cities), under the Uniform Domain Name Dispute Resolution Policy (UDRP). This, however, appears to be the first occasion on which a panel has been asked by a sovereign state to make a determination regarding the trade mark or service mark status of its country name[5].

A second distinctive element involves acceptance by Respondent of the basic allegations of the complaint in the presence of multiple IP Claimants. When there are multiple IP Claimants under the STOP and STOP Rules, a registrant may not transfer a disputed .biz domain name to a complainant in a pending proceeding (STOP, para. 8(a)). In its response, Respondent has agreed that the Panel should direct the registrar to transfer the disputed domain name to Complainant. Assuming arguendo the Panel might otherwise accept the capacity of Respondent to accede to Complainant’s demand for transfer of the disputed domain name, whatever the merits of Complainant’s legal position, the Panel must nevertheless account for the interests of additional IP Claimants waiting in the queue. Thus, despite the expressed will of Complainant and Respondent here, the Panel must make certain findings that may affect the interests of other IP Claimants.

Finally, as a matter of unique interest, Complainant and Respondent requested that the Panel’s determination not be published.

To summarize its determination in this proceeding, the Panel rejects Complainant’s claim to trademark and service mark rights in "NEW ZEALAND". The Panel accepts that Respondent has no rights or legitimate interests in <newzealand.biz>, and that Respondent acted in bad faith in registering that name. Because Complainant has legitimate rights to the disputed domain name, based on paragraph 4(l), STOP and paragraph 15(e), STOP Rules, as explained in detail below, the Panel directs that the disputed domain name be transferred to Complainant, and that no further challenges under the STOP relating to the name are permitted.

b. Findings

i. Notice and STOP elements

Respondent contacted the Center promptly following Complainant’s initiation of this proceeding and, following various interim correspondence, submitted a response to the complaint. Respondent had adequate notice of this proceeding, and an adequate opportunity to participate.

In order to establish the right to transfer of a name from a respondent, a complainant under the STOP must demonstrate pursuant to paragraph 4(a):

(i) The disputed domain name is identical to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

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

The complainant must prove that each of these three elements is present.

ii. Rights or legitimate interests and bad faith

Respondent has conceded that it has no rights or legitimate interests in the disputed domain name (para. 4(a)(ii) and 4(c), STOP), and that it registered the disputed domain name in bad faith (para. 4(a)(iii) and 4(b), STOP). Respondent has participated in a number of STOP proceedings and is in a position to understand its own interests[6]. Respondent does not appear on its face to have rights or legitimate interests in the disputed domain name, and its acceptance of this fact serves to confirm this apparent absence. Complainant alleges that Respondent registered and/or used the disputed domain name in bad faith, and presents evidence to support its allegation. Respondent concedes that it acted in bad faith. Respondent is familiar with its motivation for registering the disputed domain name. The Panel has no factual or legal reason to reject these concessions[7]. The Panel determines that Respondent has failed to establish rights or legitimate interests in the disputed domain name, and that Respondent registered the disputed domain name in bad faith.

Since the Panel’s ultimate determination regarding transfer of the disputed domain name and disallowance of further STOP challenges is made "in light of" its findings under paragraph 4(a), the Panel’s decision to accept Respondent’s concessions regarding rights or legitimate interests and bad faith might affect this determination. While recognizing this, the Panel nonetheless does not find a reason to reject Respondent’s concessions on these two elements.

iii. Rights in a trademark or service mark

The NeuLevel .biz domain name start-up distribution procedure, STOP and STOP Rules create the possibility of a queue of IP Claimants that may (or may not) be authorized to initiate a challenge against a .biz gTLD registrant[8]. Provisions regarding multiple challenges are at paragraph 4(l), STOP, and paragraph 15(e), STOP Rules. When additional IP Claimants are in the queue, a panel must not only render a determination regarding the parties in a pending proceeding, but also determine whether subsequent challenges under the STOP are permitted.

Respondent has conceded that Complainant has rights in the trademark "NEW ZEALAND" and that the disputed domain name is identical to the mark. However, because the Panel’s determination on this element may affect the rights of IP Claimants in the queue, and because the Panel does not consider that Complainant has trademark or service mark rights in "NEW ZEALAND" as a matter of New Zealand law, the Panel does not accept Respondent’s concession on this point[9].

Complainant (in the person of the Queen, and acting through her government in New Zealand) claims common law trademark and service mark rights in "NEW ZEALAND" on behalf of the state as a political entity, and as trustee for organizations and citizens of the state. States may and often do take on the functions of business enterprises, and state-owned or controlled entities may be holders of trademark and service mark rights. By way of illustration, it is not uncommon for a state-owned air transport enterprise to hold rights in a service mark distinguishing that enterprise and its services from those of other air transport enterprises. In this respect, a state may in principle and practice hold rights in a trademark or service mark[10].

With that said, the assertion of rights by the government of New Zealand (i.e., the Complainant) in this proceeding is not of the same character as that of a government-owned business entity claiming rights to a distinctive term on behalf of that entity. Complainant has not limited its assertion of trademark and service mark rights to a specific good or service or class of goods or services, but rather claims rights in the mark (i.e., "NEW ZEALAND") in respect to all goods and services of the state and its "integers"[11].

As a threshold observation, the function of a trademark or service mark is to distinguish the goods or services of one undertaking from those of another undertaking[12]. Complainant appears to claim here that "all" goods and services made in or appropriately associated with the country are within the product and service scope of the mark, and that the undertaking holding the mark is the state and all those appropriately associated with it (including all citizens and organizations). These are exceedingly broad claims and raise a host of conceptual issues. To mention only a few:

1. Does a private enterprise within New Zealand need to seek the advance consent of the government to use the mark, or does it rely on an "implied license"? If there is an implied license, may the government nonetheless withhold or revoke it in certain cases? Would this be through some form of administrative or judicial proceeding? Does the implied license cover all goods and services, or are there limitations?

2. What general powers does the government have to control use of the mark?

3. What are the legal tests for establishing the nexus between goods and services and protection of the mark? Would it, for example, apply to goods produced within the territory of New Zealand by a foreign government-owned state enterprise with non-citizen employees? Would it apply to goods produced outside the territory of New Zealand by an enterprise majority-owned by New Zealand citizens, but staffed entirely by foreign nationals?

Complainant argues that the "NEW ZEALAND" mark is in fact distinctive with respect to all goods and services produced in and with appropriate connection to New Zealand. In support of this assertion, it submits a deposition from a trade promotion official stating that consumers around the world identify "NEW ZEALAND" products as being of high quality. Yet this claim itself raises further questions:

1. On what percentage of goods and services produced in (or appropriately associated with) New Zealand does the trademark or service mark "NEW ZEALAND" appear?

2. Do consumers associate all goods and services produced in or with New Zealand as "NEW ZEALAND" brand goods? Does Complainant’s claimed trademark or service mark extend to goods and services as to which consumers are unaware of an association with "NEW ZEALAND"? If so, on what basis does the distinctive association of the product with an undertaking arise?

3. Are all producers in (and with) New Zealand required to include the "NEW ZEALAND" trademark or service mark on their goods and services? Are they entitled to "opt out" of the brand name identification? Would a sufficient level of "opt outs" constitute abandonment of the mark?

4. Is the country of origin marking "Made in New Zealand" required under the trade law of importing and exporting countries argued to serve a trademark function? If so, does this mean that all trading countries effectively maintain common law trademark and service mark rights in all goods and services that qualify for country of origin designation?

Complainant notes that it has applied for registration of the term "NEW ZEALAND" as a trademark with the Intellectual Property Office of New Zealand (see Factual Background supra). That application has not yet resulted in registration of the mark. The Panel deduces from the lack of contrary argument in the complaint that mere application for registration of a mark in New Zealand does not establish any presumption of registrability or rights in the mark[13]. If the mark were duly registered in New Zealand, the Panel in ordinary circumstances would defer to the determination by the local trademark registration authorities as to the registrability and validity of the mark under New Zealand law.

Because Complainant is basing its claim of rights in a mark on asserted common law rights in New Zealand, the Panel considers its claims under New Zealand law and relevant international law. In the absence of counterpleading from Respondent, the Panel substantially relies on Complainant’s representations as to the law of New Zealand regarding trademarks and service marks. Yet it does not on the basis of Complainant’s statement of the relevant law reach Complainant’s conclusions.

Complainant argues that its rights in the "NEW ZEALAND" mark are recognized as a matter of common law in New Zealand. In support, it refers to a line of "Champagne" cases that do not, however, provide adequate support for its conclusion.

The courts of New Zealand, as certain courts elsewhere, have afforded protection to the geographical indication of origin, "Champagne", as identifying and protecting sparkling wines produced in a region of France[14]. Complainant’s reference to this line of cases and to the protection of geographical indications of origin more generally illustrates the difficulties inherent in its claim of trademark and service mark rights in "NEW ZEALAND".

In Wineworths Group Ltd. v. Comite Interprofessionel du Vin de Champagne, 2 NZLR 327 [1991] ("Wineworths v. CIVC"), decided by the New Zealand Court of Appeal, an importer of Australian sparkling wines was sued by a French semi-official protective body for misuse of the term "Champagne" in connection with its marketing and sales activities. In finding for the French complainant, the court held that the name "Champagne" had acquired distinctiveness among New Zealand consumers as associating a particular product with certain qualities, and that the producers of the "Champagne" region of France had acquired legally protectable goodwill in that name. Judge J. Gault stated:

"Champagne is a geographical name. When used in relation to wine the primary significance it would convey to persons who know that would be as the geographical origin of the product. If the name conveys something of the characteristics of the wine it is because those familiar with wine sold by reference to the name associate those characteristics with it. … For suppliers the attracting force in the name constitutes a part of the goodwill of their business. That will be so whether the name is associated solely with one supplier or with a class of suppliers who stand in the same position to the name. The goodwill may be enjoyed among the whole population or among a particular market segment.

That goodwill will be damaged if someone else uses the name in relation to a product in such a manner as to deceive purchasers into believing the product has the characteristics of products normally associated with the name when it does not. The damage may give rise to a claim for ‘passing off’ although deceptive trading would be a more accurate designation." (2 NZLR 327, 336)

There are several important points in relation to Complainant’s assertion of common law trademark and service mark rights in "NEW ZEALAND" that may be derived from the court’s decision. First, the court did not accord "Champagne" the legal status of a trademark or service mark, though certainly those forms of intellectual property were well known and used in New Zealand. Instead, the name was protected as the identifier of a geographical territory associated with a product. This form of intellectual property is commonly known as a "geographical indication of origin". The geographical indication of origin has different legal characteristics and effects than a trademark or service mark. It is a right held by a community in a place as to its goods.

Second, the importer was found to have engaged in the tort of "passing off", not in "trade mark infringement’. The tort of passing off may in some cases involve circumstances similar to trademark infringement, but it is not the same cause of action. The goodwill right protected in a passing off action is not an assignable property right as is a trademark right[15].

Third, the protectable goodwill in "Champagne" was identified with a particular product, and the court took considerable effort to support its factual determination that there was strong consumer association between the name of the "Champagne" region and quality sparkling wines.

Complainant asserts that the status of "NEW ZEALAND" as a common law trademark "has been acknowledged by the courts of New Zealand, which will prohibit the misuse of the mark NEW ZEALAND by a third party under the tort of passing off where a plaintiff shows" that it is the "partial owner" of goodwill attaching to the "NEW ZEALAND" mark, that the third party’s use is a misrepresentation, and that the misrepresentation will cause damage to the plaintiff (see Complainant’s Contentions, supra). Complainant does not provide a specific case citation in support of this assertion, but refers thereafter to the Champagne cases. Though not entirely clear on this point, the Panel presumes Complainant to suggest that the holdings of the Champagne cases stand for similar propositions in relation to "NEW ZEALAND".

The Court of Appeal in Wineworths v. CIVC nowhere opines that "Champagne" is a common law trademark. To the contrary, the Court refers to a right in the goodwill of a geographic region that establishes the basis for a tort action for passing off. Under this cause of action, a third party may be prohibited by persons within a community from misrepresenting the geographical origin of goods and associated or linked attributes or qualities.

A trademark has different characteristics than a geographical indication of origin. The trademark right is attributable to an undertaking or enterprise. It is assignable to a third party in the nature of a property right. A trademark holder need not establish that its mark embodies goodwill, but only that it serves to distinguish the holder’s goods from those of other enterprises.

A geographical indication may not be assigned or licensed for goods produced outside its associated geographic region[16]. It is not transferable in the sense of a trademark or service mark. The goodwill is dependent on a territorial connection. The geographical indication is not associated with a specific undertaking, but rather with a community of producers within a region. It embodies goodwill attributable to the producers of the region.

Complainant does not rely on rights in "NEW ZEALAND" as a geographical indication of origin. There are at least two reasons why it might have refrained from doing so. First, the STOP does not provide a cause of action to holders of rights in geographical indications as it does to holders of rights in trademarks and service marks. The gap in protection for geographical indications under the UDRP (on which the STOP is based) is discussed extensively in the WIPO Report of the Second Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Domain Name System ("Second Report")[17]. Second, there are ongoing discussions at the multilateral level (in the WTO Council for TRIPS and at WIPO) concerning the nature and scope of protection for geographical indications of origin. These negotiations reflect substantial uncertainty concerning the present nature and scope of protection for geographical indications, and this might inhibit reliance on that form of protection in a concrete case as here.

The Panel notes further that the WIPO Second Report includes a detailed discussion regarding proposals for protection of country names in the domain name system (DNS)[18]. That discussion is principally directed to considering whether country names should be protected "as such", and not as trademarks and service marks. The Second Report concludes that there is insufficient consensus among nations regarding the intellectual property law treatment of country names to justify affording such protection now[19]. The Second Report recommends further intergovernmental negotiations on this subject matter[20].

The Second Report indirectly addresses Complainant’s argument that Article 6ter of the Paris Convention supports its claim to common law trademark rights in "NEW ZEALAND". The Report finds that the text and negotiating history of the Paris Convention indicate that Article 6ter does not establish a basis for the protection of country names[21].

The WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) made certain recommendations to the WIPO General Assembly meeting in September - October 2002, regarding the protection of country names in the DNS. In the General Assembly, the vast majority of States agreed that some protection should be accorded to country names against abusive registration or use as domain names. The General Assembly further decided to continue discussions in the SCT regarding several issues connected with this matter[22].

The Panel concludes that Complainant has not established trademark or service mark rights in "NEW ZEALAND". Complainant has not established that it is an undertaking whose goods or services are distinguished from those of another undertaking by use of the term.

Complainant is not an "undertaking" or "enterprise" in the common sense of those terms[23]. It is a political entity. It is asserting trademark rights on behalf of the entire polity, including its "integers", but this assertion raises numerous conceptual difficulties that Complainant has not addressed. Of perhaps the most critical importance here, it is not clear what "integers" are entitled to use the mark, in relation to what goods or services, and what body or bodies would be responsible for making such determinations.

As described by Complainant, the term "NEW ZEALAND" is not being used to identify a particular good or service, or class thereof, but rather all goods and services sufficiently connected with its territory. In this respect, Complainant appears to be asserting rights in a geographical indication of origin rather than a trademark or service mark. If "NEW ZEALAND" did qualify as a geographical indication of origin (and the Panel is not expressing a view on this point), it would not provide the basis for a successful claim under paragraph 4(a), STOP.

No doubt the legislature, courts and/or trademark administrative authorities of New Zealand may choose to take a different view of this matter. The Panel is not, however, prepared to venture into creating a new trademark right in that country.

iv. Multiple IP Claimants

The Center has advised the parties and the Panel that there are multiple IP Claimants in the queue. The STOP states:

"4.(l) Multiple Challenges.

(i) Your domain name may be the subject of multiple challenges by Claimants. In such event, the Registry Operator will be responsible for establishing the challenge priority among multiple Claimants on a randomized basis.

(ii) In the event that there is more than one Claimant, the Administrative Panel shall decide, in light of its findings in respect of each of the elements identified in Paragraph 4(a), whether any further challenges shall be permitted in respect of your domain name under this Policy by using the following criteria:

1. In the event that the Complainant demonstrates that:

(a) it has legitimate rights to the domain name,

(b) you have no legitimate rights, and

(c) you have either registered the domain name in bad faith or used the domain name in bad faith,

and the Respondent fails to demonstrate that it has legitimate rights to the domain name, the Panel will find in favor of the Complainant, award the domain name to the Complainant, and decide that no subsequent challenges under this Policy against the domain name(s) that is/are the subject of the Panel’s decision shall be permitted.

2. In the event that you demonstrate that you have legitimate rights to the domain name, the Panel will dismiss the complaint, and decide that no subsequent challenges under this Policy against the domain name(s) that is/are the subject of the Panel’s decision shall be permitted.

3. In the event that you do not, or are unable to, demonstrate legitimate rights to the domain name(s), and the Complainant is unable to demonstrate either (a) it has legitimate rights, or (b) the domain name(s) was/were registered in bad faith, the Panel will dismiss the complaint, and decide that subsequent challenges under this Policy against the domain name(s) that is/are subject of the Panel’s decision shall be permitted. Such challenges under this Policy, however, may not be brought by the same Complainant."

The chapeau of paragraph 4(l)(ii), STOP, says that the Panel shall decide "in light of its findings in respect to each of the elements identified in Paragraph 4(a)" (italics added), whether further challenges by IP Claimants shall be permitted under the STOP, using the criteria set out in three following subparagraphs. It does not say that the Panel should base its determination on "whether" specific determinations have been made under paragraph 4(a)[24].

The term "legitimate rights to the domain name" is used throughout paragraph 4(l)(ii), STOP, in a manner more consistent with a "legally cognizable interest" in a domain name than as a short form reference for "ownership of a trade or service mark identical to the domain name". For example, in paragraph 4(l)(ii)(2), panels are instructed that a respondent is entitled to maintain its registration of a disputed domain name (including preclusion of further challenges under the STOP) if the respondent is able "to demonstrate that [it has] legitimate rights to the domain name". Under paragraph 4(c), STOP, ownership of a trademark or service mark identical to the domain name is but one of three enumerated circumstances that may lead a panel to find "rights or legitimate interests to the domain name". Such rights may also be found on the basis, for example, of a respondent’s demonstrable preparations to use the name in connection with a bona fide offering of goods or services (para.4(c)(ii), STOP), or that a respondent has been commonly known by the domain name (para. 4(c)(iii), STOP). If a respondent has "rights or legitimate interests" under paragraph 4(c), STOP, it will succeed against its challenger, and this success will be confirmed as to further potential challengers under paragraph 4(l)(ii)(2), in terms of the demonstration of "legitimate rights". The Panel concludes that the "legitimate rights to the domain name" that Complainant may demonstrate under paragraph 4(l)(ii)(1)(a), STOP, are not limited to rights in a trademark or service mark identical to the name, but may also be the kind of "legitimate rights" that are demonstrated by being commonly known by the domain name.

Complainant has "legitimate rights to the domain name". Complainant as a sovereign state has long been commonly known by the name "NEW ZEALAND". Had Complainant been the initial registrant of the disputed domain name, and had it been challenged by an IP Claimant, the Panel would certainly find that New Zealand has rights in the <newzealand.biz> name and reject the challenge. The judicial authorities of New Zealand (or elsewhere) would not deny New Zealand the right to use its country name as identifier of the state, as such, in a domain name (or otherwise).

Complainant has met the requirement of paragraph 4(l)(ii)(1)(a), STOP, by demonstrating legitimate rights to the domain name. The Panel has determined that Respondent failed to establish rights or legitimate interests, and registered the disputed domain name in bad faith. Complainant has effectively demonstrated that Respondent meets the criteria of 4(l)(ii)(1)(b) & (c), and Respondent has not established legitimate rights to the domain name. In fact, it has surrendered such rights.

The Panel considers that paragraph 4(l)(ii)(1), STOP (as well as paragraph 15(e)(i), STOP Rules), authorizes it to direct a transfer to Complainant even though Complainant has not established rights in a trademark or service mark, provided that it has demonstrated legitimate rights to the domain name, and the other criteria of paragraph 4(l)(ii)(1) are met.

The Panel directs the registrar to transfer the disputed domain name to Complainant, and instructs that no further challenges by IP Claimants in respect to this name shall be permitted under the STOP.

v. Publication

Complainant has requested and Respondent has agreed that this Panel decision not be published. Paragraph 4(j), STOP, provides:

"(j) Notification and Publication. The Provider shall notify us and the Registry Operator of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision."

Complainant did not provide grounds for its request, nor did Respondent provide any reason for its concurrence. Although the Panel has authority to redact portions of a decision under the STOP in an exceptional case, the Panel sees no reason to redact any portion of this one. The request by Complainant is denied. This decision shall be published in its entirety.

 

7. Decision

The Panel determines that Respondent, iSMER has no rights or legitimate interests in the disputed domain name, <newzealand.biz> and registered it in bad faith within the meaning of paragraph 4(a), STOP. The Panel determines pursuant to paragraph 4(l)(ii)(1), STOP, and paragraph 15(e)(i), STOP Rules, that Complainant has established legitimate rights to the disputed domain name, and that Respondent has no rights or legitimate interests to the name, and registered it in bad faith. Respondent has failed to establish rights to the disputed domain name. The Panel determines that the disputed domain name, <newzealand.biz>, should be transferred to Complainant, Her Majesty the Queen, in right of her Government in New Zealand, and that no further challenges under the STOP shall be permitted regarding this domain name.

 


 

Frederick M. Abbott
Sole Panelist

Dated: October 2, 2002

 


 

1. The Panel does not consider New Zealand's qualification for statehood in doubt, and will not further elaborate on the legal and evidentiary basis for its finding in this regard.
2. Bank for International Settlements v. iSMER, WIPO Case No. DBIZ2002-00040 (transfer ordered), and W.W. Grainger, Inc. v. Tarek Soliman/iSMER, WIPO Case No. DBIZ2002-00129 (transfer ordered).
3. Compagnie Générale des Etablissements Michelin-Michelin & Cie v. Tarek Soliman/iSMER, WIPO Case No. DBIZ2002-00042 (transfer denied, additional claims allowed); Montana Mobler A/S v. iSMER, WIPO Case No. DBIZ2002-00043 (transfer denied, additional claims allowed); Ascom Holding AG v. Domain Administrator, WIPO Case No. DBIZ2002-00078 (transfer denied); Mohawk Brands, Inc v. iSMER, WIPO Case No. DBIZ2002-000242 (transfer denied).
4. See "http://www.neulevel.biz/faqs.drp_qa.html", at .biz Frequently Asked Questions no. 8.
5. See WIPO, The Recognition of Rights and the Use of Names in the Internet Domain Name System, Report of the Second WIPO Internet Domain Name Process, September. 3, 2001 (http://wipo2.wipo.int) [hereinafter "WIPO Second Report"].
6. Assuming solely for the sake of argument that, as in certain criminal proceedings where a defendant does not adequately appreciate its own interests, a panel might refuse to accept the pleading of a respondent because there was evidence that it did not appreciate its own interests, the record of this and prior proceedings involving Respondent indicates that such is not the case here.
7. The Panel has considered whether a finding of bad faith registration or use of the disputed domain name is necessarily predicated on a finding that Complainant holds rights in a trademark or service mark embodied in that name. The Panel notes that only two of the four circumstances listed in paragraph 4(b), STOP, as evidencing bad faith registration or use expressly refer to a complainant’s mark (i.e., paras. 4(b)(ii) & (iv)). Under the express terms of paragraph 4(b)(i), for example, Respondent might have registered the disputed domain name with the intention to sell it to Complainant believing that Complainant held rights in the mark, and such registration may have been in bad faith. In the particular circumstances of this proceeding wherein Respondent acknowledges Complainant’s rights in a mark (even though the Panel does not accept this acknowledgement), and recognizing Complainant’s legitimate interests in the disputed domain name, the Panel accepts that Respondent may have acted in bad faith.
8. This sole panelist has had occasion to describe the NeuLevel start-up .biz gTLD distribution procedure in earlier proceedings, and refers to earlier decisions for such description. See, e.g., The Dial Corporation v. Perpetual Advantage, Inc., WIPO Case No. DBIZ2002-00100.
9. As further discussed below, when there are multiple IP Claimants a Panel need not determine that a Complainant has trademark or service mark rights in a disputed .biz domain name as a precondition to ordering transfer of that name. Theoretically, the Panel in this proceeding might direct transfer of the disputed domain name to Complainant without making a determination on the issue of its asserted rights in the mark. However, the STOP instructs the Panel to consider whether the name should be transferred and further challenges allowed “in light of” its findings under paragraph 4(a), STOP. In order to fulfill this obligation, the Panel considers it appropriate to make a determination regarding each element of paragraph 4(a).
10. The preamble of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) “Recogniz[es] that intellectual property rights are private rights”. However, as this sole panelist has previously observed, this was not intended to preclude state or government ownership of interests in intellectual property, but rather to confirm that holders of intellectual property rights (IPRs) were expected to enforce those rights through actions before courts and administrative bodies. The TRIPS Agreement did not impose on WTO Members a general obligation to police the field of IPRs on behalf of right holders. See, e.g., Frederick M. Abbott, Technology and State Enterprise in the WTO, in 1 WORLD TRADE FORUM: STATE TRADING IN THE TWENTY-FIRST CENTURY 121 (THOMAS COTTIER AND PETROS MAVROIDIS EDS. 1998).
11. As discussed in text following, Complainant has filed applications to register “NEW ZEALAND” in New Zealand as a trademark and service mark in various broad product and service classes. However, Complainant’s assertion of rights in this proceeding is not limited to the product and service scope of those applications.
12. Article 15.1, TRIPS Agreement, provides, for example: “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.” Article 16.1, TRIPS Agreement, provides that: “The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.”
13. Cf. W.R. CORNISH, INTELLECTUAL PROPERTY: PATENTS, COPYRIGHT, TRADEMARKS AND ALLIED RIGHTS (4th ed. 1999), at Chapter 17.
14. See discussion of "geographical indications of origin" as a form of intellectual property, including the decision of the European Court of Justice in SMW Winzersekt GmbH v. Land Rheinland-Pfalz (C-306/93), [1995] 2 CMLR 718, in FREDERICK ABBOTT, THOMAS COTTIER AND FRANCIS GURRY, THE INTERNATIONAL INTELLECTUAL PROPERTY SYSTEM: COMMENTARY AND MATERIALS 185-96 (1999). The authors state: "A geographical indication of origin is a sign or denomination by which the link of a product to a particular locality, region or country is legally protected. It provides exclusive rights for the use of geographical names in relation to a particular product, and prevents deceptive use of such names. The right essentially protects the goodwill associated with the name or the advantages or characteristics of a locality that lead to the reputation for quality of the particular products of that locality" (at 185).
15. See generally Cornish, supra note 13, at Chpt. 16. In certain respects passing off is a more expansive concept. Professor Cornish observes:
The action labelled passing off is not confined to misrepresentations that the defendant’s goods or services are those of a trade competitor. Expansion of the tort is aided by the unspecific terms in which the elements of reputation, confusion of customers and likely damage are indicated in Lord Diplock’s five characteristics.
16. The Panel recognizes that questions may arise concerning the extent to which a party outside an identified geographic territory might be authorized to perform at least certain functions with respect to goods nonetheless deemed to originate within the geographically indicated territory. These boundary line questions do not undermine the basic principle that a geographical indication of origin by virtue of its connection with territory should not be assigned or licensed for goods produced outside it.
17. WIPO Second Report, supra note 4, at paras. 205-45.
18. Id., at paras. 205 et seq.
19. Id., at paras. 285-87.
20. Id., at para. 288.
21. Id., at paras. 278-84.
22. See Recommendations of the Special Sessions of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT/S1/6 and SCT/S2/8), and background set out in WIPO Secretariat, Internet Domain Names, WIPO General Assembly, Twenty-Eighth (13th Extraordinary) Session, Geneva, September 23 to October 1, 2002, WO/GA/28/3, at http://www.wipo.int.
23. As related to this inquiry, the New Shorter Oxford Dictionary defines “undertaking” as a noun as “Enterprise”, and “enterprise” as a noun as “A business firm, a company”.
24. Paragraph 15(e), STOP Rules, uses somewhat different language in its chapeau, stating that "each Panel shall specify in its decision whether any subsequent challenges against the domain name(s) that is/are the subject of the Panel's decision shall be permitted by using the following criteria". The three following subparagraphs are identical to paragraph 4(l), STOP, with the exception of referring to "Respondent" rather than "you". The chapeau of paragraph 15(e), STOP Rules, lacking any reference to paragraph 4(a), STOP, does not appear to further illuminate the meaning of paragraph 4(l), STOP.