WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited
Case No. D2003-0525
1. The Parties
The Complainant is Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A., of Santa Cruz de Tenerife, Tenerife, represented by Clarke, Modet & Co., of Madrid, Spain.
The Respondent is Jupiter Web Services Limited, of Merseyside, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <tenerife.info> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. On July 4, 2003, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On July 4, 2003, Tucows Inc. 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 July 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2003. The Response was filed with the Center on August 4, 2003.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 22, 2003. The Panel finds that it was properly constituted. 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.
On August 29, 2003, Complainant transmitted to the Center, Respondent and the Panel via email (and by telefax to the Center) a supplemental submission styled "Findings of Law to be Submitted by the Complainants." In its acknowledgment of receipt, the Center reminded Complainant that direct communication with the Panel is not permitted by the Rules.
On August 29, 2003, Respondent via email transmitted to the Center a reply to Complainantís supplemental submission, which was (at the Panelís request) forwarded by the Center to the Panel.
On September 4, 2003, on motion of the Panel, the Center advised the parties that the due date for decision in this proceeding was extended until September 12, 2003.
4. Factual Background
Complainant Excmo. Cabildo Insular de Tenerife is the government of the Isle of Tenerife, a province of Spain. Complainant has identified Promocion Exterior de Tenerife, S.A., a share company based in Santa Cruz de Tenerife, which is wholly owned by Complainant, as its co-Complainant.
Complainant is the holder of a service mark registration for the word mark "TENERIFE" at the Spanish Patent and Trade Office, reg. no., M 1717823, applied for August 20, 1992, grant published December 2, 1993, and subsequently renewed. The mark "TENERIFE" is registered in International Class (IC) 41, covering "servicios de educacion, formacion, esparcimiento, actividades deportivas y culturales." Directly or through its share corporation, Promocion Exterior de Tenerife, S.A., Complainant is the holder of registrations at the Spanish Patent and Trademark Office for several word and design marks, including "CABILDO INSULAR DE TENERIFE," "TENERIFE SELECT," "TENERIFE UNA ISLA CON SABOR," "TENERIFE GOLF," and "TENERIFE CAPITAL BUSINESS," covering various services. (Complaint, para. 12 & Exhibit 3)
Complainant is the holder of a domain name registration for <tenerife.es> (id., at Exhibit 5). Complainant operates an active website at "www.webtenerife.com," which provides detailed information concerning activities on the island.
Complainant promotes tourism and related activities on the Isle of Tenerife, and the island is well known as a tourist destination. Numerous travel and tourism publications refer to Tenerife as a desirable tourist destination. (Id., para. 12 & Exhibit 6)
According to the Registrarís verification, the registrant of the disputed domain name is Robert Edmonds of Jupiter Web Services Limited, of Merseyside. Although the registration lists "AL" (for Albania) as the registrantís country, there is a postal code and telephone number listing for the United Kingdom. The Registrarís verification indicates that the disputed domain name was created on July 25, 2001, is "active" and "is currently on Registrar Lock within our system and will remain locked during the pending administrative proceeding." Respondent created its registration during the ".info" Sunrise registration period, but without submitting evidence of trademark registration as required for early registration. Although the record is not entirely clear regarding whether the domain name was ever unlocked by the Registrar, the last email correspondence provided by Respondent (dated April 2, 2002) indicates that the name was still locked.
Respondent indicates that Robert Edmonds and Jupiter Web Services Limited have acted on behalf of John Goodreid, of Wirral, United Kingdom. Mr. Goodreid operates a commercial Internet website with addresses both at "www.tenerife-apartments.co.uk" and "www.tenerife-apartments.com." This website provides information concerning tourist activities and destinations on Tenerife, as well as offers to book lodgings, air travel and car rental. According to Mr. Goodreid, the two web addresses are "receiving over 1,000,000 hits a month." (Response)
The Registration Agreement in effect between the Respondent and Tucows Inc., subjects the Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Partiesí Contentions
Complainant asserts rights in the trademark "TENERIFE" based on registration of the word mark at the Spanish Patent and Trademark Office, as well as rights in TENERIFE-formative word and design marks based on registration at the Spanish Patent and Trademark Office (see Factual Background, supra).
Complainant argues that the "TENERIFE" mark is well known and that Respondent was aware of the mark when it registered the disputed domain name.
Complainant states that the disputed domain name is identical to its "TENERIFE" mark.
Complainant asserts that it has not authorized Respondent to use the "TENERIFE" mark in the disputed domain name.
Complainant states that Respondent has not operated an active website using the disputed domain name, and therefore is not making bona fide use of it.
Complainant argues that Respondentís use of its mark would dilute its rights.
Complainant contends that Respondent registered the disputed domain name with the intention of selling or renting it to Complainant because the domain name incorporates the Complainantís well-known mark.
Complainant asserts that Respondentís application for the disputed domain name was invalid because of the provision of false information. This included registrant information: "Trademark name: Unknown," "Trademark date: 2040-01-02," "Trademark Country: AL," and "Trademark Number: 0."
Complainant states that lack of use of the disputed domain name is evidence of bad faith.
Complainant requests that the Panel direct the Registrar to transfer the disputed domain name to it.
Respondent states Mr. Edmonds and Jupiter Web Services Limited were not able to transfer the disputed domain name to its rightful owner, Mr. Goodreid, because it was locked by Afilias, adding: "We have already sent a copy of the complaint to Afilias as they requested, but they have not come back to us so far with their comments."
Respondent asserts that it contacted the United Kingdom Trademark Office and was advised that it could not register "TENERIFE" as a trademark, because "world trademarks are only recognized by signatories of the Madrid Accord. The UK apparently did not sign up to this and work (sic) on the premise that if a name is already used by many people worldwide generally, particularly the UK; prior to and at the present time; it cannot be used as a trademark."
Respondent adds: "So the argument is, is it in English, (the principle (sic) language of the international language of the Internet) and for all those in the English speaking countries or is it in Spanish, of which it is physically and politically a dependency, region or province?"
Respondent argues that Complainant as a government should be required to use a non-commercial "web extension" such as ".gov," "eliminating the objections of any commercial bias."
Respondent asserts that is has rights in the disputed domain name because it has been actively involved in bringing business into Tenerife through operation of its popular commercial website (see Factual Background supra).
Respondent asserts that there are additional shareholders in Promocion Exterior de Tenerife, S.A., including the "main hotel groups." Respondent asserts that Complainant and these commercial interests are attempting in bad faith to take the name from it.
Respondent indicates that it has received inquiries from third parties to purchase the disputed domain name, which it did not take up.
Respondent states that granting Complainant an exclusive right to the "TENERIFE" name gives the government and the tourist promotion authority an unfair advantage over commercial businesses.
Respondent requests that the Panel reject Complainantís request.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.
Complainant filed a request to submit a supplemental submission and Findings of Law subsequent to receipt of the Response. Respondent submitted a reply to that request and submission. Although the Panel has discretion to accept supplemental submissions, it will not do so here. Complainantís supplemental submission does not respond to facts or legal argumentation that could not reasonably have been anticipated at the time of the filing of its Complaint. Moreover, Complainant transmitted its supplemental submission directly to the Panel in contravention of paragraph 8 of the Rules, and the Panel has taken this into account in considering the admissibility of the submission. In view of its rejection of Complainantís supplemental submission, the Panel does not accept Respondentís reply, which also did not add material facts to its initial Response.
Complainant submitted its Complaint in the name of two legal entities. Excmo. Cabillo de Tenerife is a government organization that is the sole shareholder of a share corporation, Promocion Exterior de Tenerife, S.A. There are circumstances in which a complainant properly acts on behalf of affiliated enterprises with rights in a mark. Decisions under the Policy have recognized that complex intra-enterprise relationships and/or licensing arrangements may determine the ownership or control of a particular mark. Conversely, the assertion of rights in a mark has been denied where a party is unable to demonstrate the requisite ownership or control interest. In some cases, parties acting as complainant have been specifically identified as co-Complainants in the proceeding. Practice in this regard has not been consistent. The named co-Complainants have established that they are under the common control of Excmo. Cabillo de Tenerife. The Panel accepts the designation of both entities as Complainant without suggesting a uniform practice on the issue of joinder of complaining parties under the Policy and Rules. The Panel refers to the co-Complainants as "Complainant."
A. Identical or Confusingly Similar
Complainant asserts rights in the service mark and trademark "TENERIFE." This word describes a land territory that is a province of Spain. The Trademark Law of Spain, consistent with the First Trade Mark Directive of the European Community, treats as absolutely prohibited from registration as a trademark,
"those consisting exclusively of signs or of indications that may serve in trade to designate the Ö geographical origin Ö of the goods or rendering of the services, or other characteristics of the goods or services."
An equivalent rule is part of the trademark law of the United Kingdom.
The fact that a designation of geographical origin is prohibited absolutely from registration as a trademark or service mark does not mean that place names cannot be registered and take on trademark or service mark functions. So, for example, a geographic name may be used in fanciful association with a product and serve a trademark function. Panels rendering decisions under the Policy have recognized consistently with basic trademark law principles that geographic names can serve a trademark or service mark function in some circumstances. However, those decisions do not stand for the proposition that geographic designations, such as the names of provinces, are protected as trademarks or service marks as such.
Complainant has registered the service mark "TENERIFE" for use in connection with education, training, information, sports and cultural services. It has registered word and design marks incorporating the term "TENERIFE" for use in connection with other activities, such as restaurant services.
The Panel does not have sufficient information to determine the basis on which the Spanish Patent and Trademark Office granted registration of the word service mark "TENERIFE" to Complainant. However, such registration was granted a decade ago, the registration remains in force and, under Spanish trademark law registration confers rights on the trademark holder. If the validity of the Spanish trademark is to be challenged, such challenge would most appropriately be undertaken before Spanish trademark authorities.
The Panel is aware that the U.S. Court of Appeals for the Fourth Circuit in Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) effectively overturned the decision of an administrative panel in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505, decided August 4, 2000. The court reasoned that (a) the parties to that dispute had consented to the jurisdiction of U.S. courts in the event of a challenge to a decision of the administrative panel, (b) the decision was challenged on the basis of U.S. law (i.e., Anticybersquatting Consumer Protection Act (ACPA)-based amendments to the Lanham Act), (c) U.S. law would not furnish trademark protection to a city name used in a purely geographically descriptive sense, (d) the Spanish trademark holder (City Council of Barcelona) did not use its geographically descriptive name in a trademark sense in the United States (and so did not have trademark rights there), so that (e) the registrant who challenged the determination by the panel did not act unlawfully as a matter of U.S. law.
It suffices for present purposes to note that the facts in this proceeding are materially distinct from those considered by the U.S. Fourth Circuit in Barcelona.com. The parties assert no jurisdictional or substantive legal connection with the United States or U.S. law. Whatever might be Complainantís rights in the "TENERIFE" word service mark under the U.S. Lanham Act is not relevant to the decision by the Spanish Patent and Trademark Office to register and thereby confer on Complainant rights in the mark.
Based on the registration granted by the Spanish Patent and Trademark Office, the Panel accepts that Complainant has rights in the service mark "TENERIFE" under Spanish trademark law. The Panel is not deciding that Complainant has rights in the geographic name of the province "TENERIFE" as such.
Complainant additionally asserts rights in "TENERIFE"-formative marks, such as "TENERIFE GOLF." Combinations of descriptive terms may acquire secondary meaning and trademark status (as combinations) under certain circumstances. However, trademark rights in combinations of commonly descriptive terms do not confer independent protection to elements of the combination that may not take on trademark characteristics. By establishing trademark rights in "TENERIFE GOLF," as example, Complainant does not acquire independent rights in the term "TENERIFE" as a geographic description. Complainant has established rights under Spanish trademark law in the term "TENERIFE," standing alone, as something other than a purely geographic designation (pursuant to the decision of the Spanish Trademark Office). This is sufficient to give it rights that it has opposed to the disputed domain name under the Policy. Respondent relies on fair use of the term "TENERIFE" in its geographically descriptive sense as a defense to Complainantís claims. Complainant does not add to its interests in the geographically descriptive sense of "TENERIFE" by combining it with other terms.
The disputed domain name <tenerife.info> is identical to the service mark "TENERIFE" for purposes of Paragraph 4(a)(i) of the Policy. Principally because a generic top level domain (gTLD) does not serve a source identification function, the addition of a gTLD designation to a mark does not distinguish the domain name from the mark.
The Panel determines that Complainant has rights in the service mark "TENERIFE" and that the disputed domain name <tenerife.info> is identical to the mark. Complainant has satisfied the first element necessary to demonstrate abusive domain name registration and use.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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." (Policy, paragraph 4(c)).
Complainant asserts that Respondent cannot have rights or legitimate interests in the disputed domain name because it succeeded in registering the name during the ".info" Sunrise registration proceeding by providing false information to the Registrar (Tucows Inc.) and Registry (Afilias). Most pertinently, in order to take advantage of Sunrise registration, a registrant was required to be the holder of a valid trademark. Complainant argues that Respondent did not hold such a trademark and therefore misled the Registrar and Registry.
Respondent has conceded that it did not have rights in a trademark when it registered the disputed domain name during the Sunrise period for ".info" domain names. While Complainant has characterized Respondent as having transmitted "false" information to the Registrar and Registry, Respondent in fact said that its "Trademark Name" was "Unknown," and that the "Trademark date" was in the year 2040. Respondent essentially told the Registrar and Registry that it had no valid trademark, presumably in hopes that its registration would not be challenged by a third party or the Registry. Although a third party challenge appears to have been filed, it was dropped. The Registry made so-called "bulk challenges" to a large number of registered ".info" names, but the disputed domain name was not included. Nevertheless the Registry placed a lock on Respondentís disputed domain name, but so far apparently has not released it. Based on a Report by the Center, the various challenges to names registered during the Sunrise period appear to be completed, with no specific action as yet notified by the Registry (Afilias) to Respondent. The disputed domain name appears to be in administrative limbo.
The Registrar has advised the Center (and therefore the Panel) that the disputed domain name is "registered" to the Respondent, even though the name is presently "locked." This administrative proceeding is not a Sunrise challenge. This administrative proceeding is conducted under the Policy. While the Respondent required a trademark to register under the Sunrise rules, it does not need to hold a trademark to maintain a ".info" registration under the Policy. The Policy does not provide a general remedy against inaccurate representations made during the domain name registration process. Administrative Proceedings under the Policy are not framed as a mechanism to cure breaches under Paragraph 2. The Policy sets out the rules applicable to disputes regarding abusive domain name registration and use in its Paragraph 4.
Complainant is essentially asking the Panel to reject a claim of rights or legitimate interests in the disputed domain names as an ex post facto Sunrise challenge. Yet the Complainant could have participated in the Sunrise registration process and made a third party challenge. It did not. The Panel does not consider it appropriate to reach back and make a determination as if it were the Center deciding a Sunrise challenge. It is not instructed by the Policy to do that. The Panel does not know what the Registry and Registrar might be contemplating with respect to Respondent and the disputed domain name since it was never unlocked. The Panel appreciates that Respondent is not before it with "clean hands." However, the Panel will focus on the legal principles at issue in this proceeding.
The Panel will treat the Respondent as if it registered the disputed domain name during the Sunrise period and survived the potential Sunrise challenges, without prejudice to whether the disputed domain name may be revoked by the Registrar and/or Registry under a set of rules other than the Policy.
Respondent carries on an active Internet-based business that provides information regarding Tenerife as a tourist destination with commercial portals to various service providers (e.g., hotels, air transport, automobiles). It is using the term "TENERIFE" in web addresses, "www.tenerife-apartments.co.uk" and "www.tenerife-apartments.com," that identify an active commercial website. That website does not purport to be associated with the government of Tenerife or its tourism promotion authority. It is instead referring to the island as an attractive tourist destination. The Respondent on its existing website, addressed by domain names incorporating the term "TENERIFE," is using the term "TENERIFE" in a geographically descriptive sense.
Although Respondent has not yet used the disputed domain name in connection with an active website, it alleges that it has been blocked from doing so by the Sunrise Registry (Afilias) and Registrar. Based on Respondentís existing business activities, there is no reason to reject its assertion that, if the domain name is unblocked, it will use it for a purpose comparable to present use of its other "TENERIFE"-formative domain names. This sole panelist has in several contexts determined that the establishment of rights or legitimate interests in a domain name is not precluded by the absence of active use, when such absence is justified by the circumstances.
Respondentís planned use of the disputed domain name constitutes a fair use of Complainantís geographically descriptive service mark. Based on Respondentís past practices, there is insufficient reason to conclude that its use will be undertaken in a way that will misleading divert consumers or tarnish the service mark. Respondent has established rights in the disputed name because it has concrete and demonstrated plans to fairly use it in a geographically descriptive sense "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue," within the meaning of Paragraph 4(c)(iii) of the Policy.
C. Registered and Used in Bad Faith
Because the Panel has found that Respondent has established rights or legitimate interests in the disputed domain name, it need not make a finding concerning bad faith. However, the Panel notes that Complainant after filing of its Complaint submitted written evidence of an offer of settlement by Respondent that would have included a payment by Complainant in excess of the Respondentís out-of-pocket expenses directly related to the domain name. Paragraph 4(b) of the Policy does not preclude settlement offers made in good faith. Settlement of disputes prior to the conclusion of formal administrative or judicial proceedings is a common matter, reducing uncertainty and risk for the parties. Respondent in this proceeding had reasonable grounds for believing that it had rights in the disputed domain name. By making a settlement offer to Complainant, it did not act in bad faith.
For all the foregoing reasons, the Complaint is denied.
The Panel wishes to make clear to the Registrar that this determination does not purport to resolve any issues outstanding between Respondent, the Registrar and/or the ".info" Registry (Afilias) regarding whether Respondent is entitled to maintain its registration of the disputed domain name based on actions Respondent undertook in connection with its Sunrise period registration. This decision should not be understood as approval of Respondentís actions in connection with that registration.
Frederick M. Abbott
Dated: September 9, 2003