WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Organization Committee for the World Championship of Alpine Ski in 2009 v. Kenny E. Granum

Case No. D2006-0264

 

1. The Parties

The Complainant is the Organization Committee for the World Championship of Alpine Ski in 2009 of Val d'Isre Cedex, France, represented by Nataf Fajgenbaum & Associs.

The Respondent is Kenny E. Granum of Trondheim, Norway.

 

2. The Domain Name and Registrar

The disputed domain name <valdisere-2009.com> (the “Domain Name”) is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2006. On March 3, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On March 3, 2006, Wild West Domains, 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 March 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2006. The Response was filed with the Center on March 24, 2006.

The Center appointed Alfred Meijboom as the sole panelist in this matter on March 27, 2006. 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 May 12, 2006, the Panel issued a Procedural Order requesting Complainant to submit evidence that the term VAL D’ISERE 2009 is an unregistered trademark which qualifies for protection under the Rules, and granting Respondent the possibility to submit his comments to Complainant’s submission. Complainant sent an e-mail with 61 annexes on May 19, 2006, and Respondent submitted his observations on May25,2006.

 

4. Factual Background

Complainant is the French organizing committee of the 2009 world championships of alpine skiing, to be held in Val d’Isre, France.

The Complainant based its Complaint upon the French registered device mark SKI ALPIN F/I/S CHAMPIONNATS DU MONDE VAL D’ISERE 2009 SAVOIE FRANCE (the “Trademark”), filed on October 15, 2004, in classes 1 through 45 for hundreds of different goods and services (registration number 043318548). The Trademark consists of a large wing shaped device in red, slightly changing into blue and the words VAL D’ISERE 2009 in bold font in red alongside a figurative sign containing what appears to be an eagle, and the other previously mentioned words in smaller font in blue, except for the element F/I/S, which is written in black and accompanied by a yellow and blue stripe. A colored copy of the Trademark registration was included in the Complaint.

Documents show that the Trademark was registered on April 29, 2005, by the Comit d’Organisation des Championnats du Monde de Ski Alpin FIS VAL D’ISERE 2009. The Panel noted that the Complainant uses a different name, which leads to the question whether Complainant and the registrant of the Trademark are indeed the same legal person. However, whereas the Respondent has not disputed the fact that Complainant is the holder of the Trademark, the Panel accepts that the Complainant and the Trademark holder are one and the same.

Further, Respondent submitted copies from websites and French news papers and magazines of the period 2004 to 2006 which use the term VAL D’ISERE 2009.

Complainant registered the domain names <valdisere2009.com>, <valdisere2009.org>, <valdisere2009.info>, <valdisere2009.biz>, <valdisere2009.fr> and <val-d-isere2009.fr>.

Respondent is a private person residing in Norway. Respondent registered the Domain Name on February 22, 2005.

 

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the three conditions mentioned below are met. The Complainant makes the following assertions with respect to these elements:

(i) the Domain Name is identical or confusingly similar to trademarks or service marks to which the Complainant has rights.

The Domain Name is confusingly similar to the Trademark because the element VAL D’ISERE 2009, which forms part of the Trademark, is the dominant distinctive part of the Trademark as it is depicted in a deep and eye-catching color, and attracts the visual attention more than the remainder of the verbal part of the mark. Therefore, this is the part which should be compared to the disputed Domain Name. The public is aware that the element VAL D’ISERE 2009 refers to the alpine world ski championship in 2009, and the term VAL D’ISERE 2009 is therefore an unregistered trademark. By using the term VAL D’ISERE 2009, Respondent transmits to the public that he has financially supported the championship organized by Complainant. Moreover, Complainant has registered a large amount of domain names containing the elements “valdisere” and “2009”. By registering the Domain Name, Respondent tries to block the right of Complainant in its own domain names.

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name.

There exists no evidence of the Respondent’s use of, or demonstrable preparations to use the Domain Name or a corresponding name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by this Domain Name. Moreover, Respondent seems to work for a company called TLD TRADE which offers “domains for sale” on its website “www.tldtrade.com”.

(iii) the Domain Name was registered and is being used in bad faith.

In his reply to a cease-and-desist letter of Complainant, Respondent wrote, inter alia, “[Y]ou are welcome to make an offer for the domain name and if the offer is reasonable, we can find a fast way to transfer the domain name to your ownership”. This offer, which was repeated in later correspondence, makes it crystal clear that Respondent registered the Domain Name in bad faith. This is certainly true because Respondent seems to work for the earlier mentioned internet company TLD Trade, whose main activity seems to consist of buying, selling and leasing domain names. The Domain Name is also offered for sale on this website.

A quick search on the Whois databases for several other domain names offered for sale by TLD Trade shows, by way of example, that Respondent is the owner of the following domain names: <chryslerweb.com>, <chevroletweb.com>, <volvoweb.com> and <sapporo-2007.com>. Complainant finds it doubtful that Respondent has obtained permission from the respective right owners for registering these domain names. Further, the registration of <sapporo-2007.com> illustrates Respondent’s interest in large sports events and his knowledge of the financial interest these events could generate.

Respondent’s only aim, by registering the Domain Name and other domain names, is to sell them to the highest bidder, regardless of any infringement of prior rights of third parties. Moreover, Respondent was undoubtedly aware that the Complainant would be interested in purchasing the disputed Domain Name in order to exploit it or to prevent someone else from using it.

All such circumstances indicate that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the holder of the trademark or service mark, i.e. the Complainant, or to a competitor of the Complainant.

B. Respondent

Respondent denies that he violates the three elements of paragraph 4(a) of the Policy:

(i) whether the Domain Name is identical or confusingly similar to trademarks or service marks to which the Complainant has rights.

The fact that Complainant has registered the Trademark does not automatically make Complainant the exclusive owner of each single word used in the text elements of the Trademark. Complainant has not made a claim to the exclusive right to use “valdisere 2009” in itself, so that Complainant has no prior rights to the Domain Name.

The art design of the element VAL D’ISERE 2009 as part of the Trademark, which, according to Complainant, attracts the visual attention more than the remainder of the verbal part of the mark, is irrelevant to this proceeding because the Complaint relates to a domain name and not to the misuse of a graphic trademark.

The evidence submitted by Complainant as proof of the term VAL D’ISERE 2009 being an unregistered trademark does, in fact, show the opposite as the submitted websites and articles do not identify the term VAL D’ISERE 2009 with goods and services offered by Complainant so that these articles and website always have to mention that they mean the alpine world ski championship. The term may rather be associated with all sorts of activities which may take place in the city of Val d’Isre in the year 2009. One organization does not have a better right to use the name of the city plus a year than another.

(ii) whether the Respondent has no rights or legitimate interests in respect of the Domain Name.

Respondent has an interest in the Domain Name because he plans to create a website under the Domain Name with a friend about future competitions for Norwegian ski stars. This site is still in the planning stage, for which reason it has not yet been hosted or made. Respondent has not asked anyone for permission to register the Domain Name because he did not find anyone with prior rights in the Domain Name.

(iii) whether the Domain Name was registered and is being used in bad faith.

Respondent acknowledges that the Domain Name is listed for sale or lease. By offering the domain name for sale or lease, Respondent hopes to find someone who wants to use the Domain Name temporarily, in order to cover some of his expenses until he would have the website up and running.

Respondent has never used the Domain Name in bad faith. In its cease and desist letter Complainant has falsely based its claim upon French law, which cannot be used against a Norwegian citizen residing in Norway. Complainant has tried to scare Respondent into transferring the Domain Name for free by using invalid accusations. Respondent has offered to transfer the Domain Name to Complainant for USD 1,500 merely to cover his costs.

Complainant’s main interest is to harass the Respondent in order to obtain the Domain Name for free.

On the basis of the Rules, Paragraphs 1 and 15(e), Respondent asks the Panel to find that the Complainant has brought the Complaint in bad faith.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant registered the device mark SKI ALPIN FIS CHAMPIONNATS DU MONDE VAL D’ISERE 2009 SAVOIE FRANCE, which it used as sole cause for the Complaint.

The Domain Name is not identical to the Trademark. The Panel shall therefore assess if confusing similarity between the Trademark and the Domain Name exists. For this purpose, the top level domain “.com” of the Domain Name shall be disregarded, as it is a necessary and non-distinctive component of a domain name. The Panel accepts that the public might think that the (ultimate) website to which the Domain Name resolves has some link with the Complainant or the 2009 alpine ski world championship. However, that is not the question which needs to be answered in this proceeding. The relevant question is if the Domain Name is confusingly similar to Complainant’s Trademark. It is important to realize that the Trademark is not a word mark, but rather a device mark, with dominant graphical elements. Therefore the Panel needs to decide if the relevant text elements (VAL D’ISERE 2009) of the Trademark are sufficiently distinctive to create similarity between the Trademark as a whole and the Domain Name (Spreewaldvereine e.v. v. RCS Richter Computer Systemhaus GmbH, WIPO Case No. D2003-0614).

In the Panel’s opinion, the most dominant elements of the Trademark are the “wings”, which are depicted above the text, as well as the element VAL D’ISERE 2009 coupled with a graphical eagle-like element, depicted in bold red letters, clearly distinguishable from the rest of the text and also written in a larger font.

The words VAL D’ISERE 2009 as such – disregarding the specific font, the red bold characters and the graphic representation of the eagle – have no, or only a limited distinctive character, as they describe the geographical location of the championship as well as the year in which the event takes place.

Although it is true that graphical elements cannot be part of a domain name, it does not mean that such elements should be altogether ignored in deciding if the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. This should especially be the case if the text element of a device mark has no or only a limited distinctive character, and if the device element is dominant. If, in such cases, the Complainant alleges that the disputed domain name is confusingly similar to the trademark, it is not sufficient that the Complainant merely shows similarity or identity between the disputed domain name and (parts of) the textual element of such device mark. In such cases, evidence which results in a positive finding of the existence of confusing similarity between the disputed domain name and the trademark matter is necessary1.

In this case, the Complainant failed to submit sufficient evidence which resulted in such positive finding of the existence of confusing similarity to the registered device marks.

This case is different from other panel cases concerning the use of geographical indications for sports events (Melbourne 2006 Commonwealth Games Corporation v. B&M Group of Companies Pty. Ltd., WIPO Case No. D2005-0366; and Comitato per l’Organizzazione dei XX Giochi Olimpici Invernali – Torino 2006 v. gate24, WIPO Case No. D2003-0411), because the complainants in these two identified cases (also) relied on word marks for COMMONWEALTH GAMES MELBOURNE 2006 and TORINO 2006, respectively, for which the burden of proof pursuant to paragraph 4(a)(i) can be more easily met.

Complainant further argues that the term VAL D’ISERE 2009 has become a unique identifier for the alpine world ski championship it organizes in Val d’Isre in 2009, so that the term VAL D’ISERE 2009 deserves protection as an unregistered trademark. In this respect Complainant submitted copies from many French newspapers and magazines, as well as copies from French and English websites which use the term VAL D’ISERE 2009 in relation to the games organized by Complainant.

The Panel observes that panels have accepted that unregistered trademarks may be used as a cause of action under the Policy because, as one panelist put it “[a] fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered” (Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575), if the Complainant shows that such trademark has become a distinctive identifier associated with the Complainant or its goods and services.

There are two possibilities for an unregistered trademark to serve as a cause of action under the Policy, one being that Complainant has acquired so-called common law trademark rights through use, and the other being that the disputed term is part of the registered trademark which – as in the case mentioned – has become a distinctive identifier associated with the Complainant or its goods and services. Complaint did not assert common law trademark rights, but did argue that the element VAL D’ISERE 2009 has become a distinctive identifier for the games it organizes.

Much of the evidence submitted by Complainant shows that the term VAL D’ISERE 2009, either as word mark or as device mark with distinctive elements from the trademark, has been broadly used in the media as a unique identifier for the alpine world ski championship which is organized by Complainant. Respondent’s contention that the term does not identify the championship but rather (other) events as such which may take place in Val d’Isre in 2009 is not supported by the evidence submitted by Complainant, nor by any evidence submitted by Respondent. Use of the term “Val d’Isere 2009” and acceptance thereof by the public as an unique identifier of the alpine world ski championship of 2009 makes the term an unregistered trademark in the second sense of the preceding paragraph.

Consequently, the Panel finds that Complainant can rely on the term VAL D’ISERE 2009. As special characters such as an apostrophe and spaces cannot be part of a “.com” domain name, the Domain Name is nearly identical to this unregistered trademark. Therefore the Panel concludes that confusing similarity exists between the Domain Name and the trademark.

B. Rights or Legitimate Interests

Respondent did not show that he is known under the term VAL D’ISERE 2009, nor that he has other legitimate interests to use the term. He did claim to be planning to make a website, together with a friend, about future competitions for Norwegian ski stars for which purpose he wishes to use the Domain Name. Respondent did however not submit any substantial evidence to support this statement, and failed to show the need to use a domain name consisting of words which particularly refer to the ski championship of 2009 for this purpose.

The Panel therefore concludes that the second condition is also met.

C. Registered and Used in Bad Faith

Complainant must finally prove that the Domain Name was registered and has been used in bad faith.

In his Response, Respondent acknowledges that he wishes to use the Domain Name for the purpose of creating a website about Norwegian ski stars, which suggest to the Panel that he must be aware of events relating to alpine skiing, such as the fact that the world championship will be organized in Val d’Isre in 2009. He registered the Domain Name in February 2005, shortly after the alpine world ski championship took place in Bormio, Italy. The Panel considers it inconceivable that Respondent was unaware of the fact that Complainant organizes the alpine world ski championship under the term “Val d’Isre 2009”, as the name of the host city and the year of the event are commonly used for sports events, including alpine ski championships. Further, Complainant has shown that the term VAL D’ISERE 2009 has been used in the press since 2004. The Panel is therefore of the opinion that Respondent registered the Domain Name in bad faith.

By offering the Domain Name for sale and by preventing Complainant to register the Domain Name, Respondent also used the Domain Name in bad faith in the sense of Paragraph 4(b) of the Policy.

As a result the Panel is of the opinion that the Domain Name was registered and used in bad faith.

D. Complaint brought in Bad Faith

As the Panel has found that all the three elements of the Policy have been met, the Complainant has not brought the Complaint in bad faith and/or to harass Respondent in the sense of Paragraph 15(e) of the Rules.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <valdisere-2009.com > be transferred to the Complainant.


Alfred Meijboom
Sole Panelist

Dated: June 6, 2006


1 By way of illustration of this point, the Panel refers to the decision of the European Court of Justice, ECJ 22 June 2000, Case C- 425/98, para. 42 (Marca/Adidas), because it appropriately shows that confusion cannot be taken for granted – not in case of trademarks with a reputation (as in the Marca/Adidas case), and certainly not in case of alleged similarity with non distinctive elements of a trademark.