WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Province of Brabant Wallon v. Domain Purchase, NOLDC, Inc.

Case No. D2006-0778

 

1. The Parties

The Complainant is Province of Brabant Wallon, of Belgium, represented by Uyttendaele, Gérard & Doutrelepont, Belgium.

The Respondent is Domain Purchase, NOLDC, Inc., of New Orleans, Louisiana, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <brabant-wallon.org>is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2006. On June 22, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 23, 2006, Intercosmos Media Group d/b/a directNIC.com 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 August 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2006.

The Center appointed Alan Limbury as the sole panelist in this matter on September 28, 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.

The language of the proceeding is English.

 

4. Factual Background

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, plausibly asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848. Accordingly the Panel accepts the following as established facts, based on the assertions contained in the Complaint.

Brabant Wallon is the geographic denomination of the Belgian Province of Brabant Wallon. The Complainant in this administrative proceeding is the public body which governs that geographic area. Since June 15, 1999, it has been the owner of OHIM registered trademark No.000613638, comprising the words “Brabant wallon” (written vertically) and “la jeune Province” (written horizontally) together with relatively large figurative elements (Vienna classifications 26.3.4, 26.4.1 and 26.13.25).

In 1996, the Complainant engaged a company called Aleph One to register domain names related to the Province, with registrations for one year. However, Aleph One kept and renewed, on its own behalf, the domain name <brabant-wallon.org>. This domain name was subsequently transferred to different entities before being registered by the Respondent on November 21, 2003.

The website reached by means of the disputed domain name is a portal to numerous ‘sponsored links’ advertising various goods and services, identified and described in the French language.

 

5. Parties’ Contentions

A. Complainant

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, namely the trademark BRABANT WALLON. The suffix “org” is not taken into account in evaluating this resemblance. In consequence, the similarity here creates an obvious risk of confusion with the trademark.

The Respondent has no rights or legitimate interests in respect of the domain name. The denomination “Brabant Wallon” designates a Province of the Belgian Region and the territory over which the Complainant exercises its competence as the public body which manages everything related to the provincial interest, according to the Belgian Constitution. In consequence, the Complainant is the natural holder of this geographic denomination, which corresponds to the name of its territory of competence. For this reason, the Complainant asserts it owns the right to ask for the protection of this geographic denomination.

The Complainant considers that the Respondent cannot prove any link with the Province of Brabant Wallon that would justify the use of the trademark as a domain name. The Respondent’s website at “www.brabant-wallon.org” is about varied subjects unrelated to the Province of Brabant Wallon, like music, holidays, shopping, games, cosmetic products. Furthermore, the Respondent is not domiciled in the Province of Brabant Wallon and does not exercise any activity directly linked to the Province. The website content does not provide any proof of a legitimate link with the denomination.

The domain name was registered and is being used in bad faith. Several elements prove the bad faith of the Respondent. For example, the fact that the website content has no relation to the activities of the Province of Brabant Wallon demonstrates that the use of the domain name by the Respondent is not appropriate and that the holder is attempting to attract Internet users to its site, using the domain name of the Complainant, with intent to create confusion.

It is obvious that creating and using, in the United States, a name such as “Brabant Wallon”, with a French connotation, is done for commercial gain. As an example, on its site, the Respondent sells video games, jewellery, gifts, plumbing services, fashion accessories and shows. Such a use of the name of “Brabant Wallon” is detrimental to the Belgian public body.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the domain name the Complainant must prove that

(i) the domain name is identical or confusingly similar 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 domain name has been registered in bad faith and is being used in bad faith.

A. Rights in a trademark

The Complainant appears to advance two separate bases entitling it to relief, namely (1) that “Brabant Wallon” designates the territory which the Complainant governs, hence ipso facto the Complainant owns the right to ask for the protection of this geographic denomination; and (2) the Complainant’s registered trademark.

There is no substance to the first claimed basis. The report of the Second WIPO Internet Domain Name Process dated September 3, 2001, while discussing sympathetically the position of local governments, the names of whose geographical areas of jurisdiction are registered as domain names, sometimes by persons having no connection with the geographical area or using the domain names for purposes unrelated to that area, nevertheless found insufficient basis in existing law for an extension of protection under the Policy to geographical terms. This was subject to a recommendation (in paragraph 288) that “the question of the protection in the gTLDs of country names and the names of administratively recognized regions and municipalities be further considered in the appropriate intergovernmental fora, in particular with a view to a discussion on the need for new international rules for the protection of country names”; a question which to date appears not to have resulted in developments that support a different conclusion in this case.

As to the second basis, while geographical terms are not protected as such under the Policy, it is generally accepted amongst panelists that geographical terms can be so protected if shown by evidence of their use or by registration to have become or to be distinctive of the goods or services of a particular trader. In this respect they may be protected as trademarks in the same way as descriptive (generic) words shown to have become distinctive. It is therefore a matter of evidence in each case as to whether a complainant has proved that the geographical name functions as a trademark: see Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc. WIPO Case No. D2004-0242.

Normally a showing of distinctiveness requires the registration of the geographical term as a trademark, since it is very difficult for the legal authority of a geographical area to show unregistered trademark rights in that geographical term on the basis of secondary meaning. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions at http://www.wipo.int/amc/en/domains/search/overview/index.html and the cases cited in relation to paragraph 1.5.

Here the Complainant does not claim unregistered trademark rights in the geographical term Brabant Wallon and has produced no evidence of secondary meaning. Instead it relies on its registered trademark already mentioned.

The Panel accepts that the Complainant has established that it has rights in that registered trademark.

B. Identical or Confusingly Similar

An examination of the registered trademark on which the Complainant relies leads at once to the conclusion that the dominant and immediately striking feature of the mark is the figurative element, which is large relative to the written words and comprises a combination of triangles, squares and other shapes forming a design somewhat reminiscent for example of a silhouette of sails. As mentioned, the words ‘Brabant wallon’ are written vertically, that is to say sideways on to the viewer, so that the eye, having been drawn initially to the figurative element, is next drawn to the horizontal words above that element ‘la jeune Province’ and only last, upon turning the mark clockwise or one’s head anticlockwise, to the words ‘Brabant wallon’.

Further, the expression ‘Brabant wallon – la jeune Province’ involves use of the words ‘Brabant wallon’ to designate the province known by that geographical term, as distinct from the Complainant, the public body which governs that province. Accordingly it is primarily the figurative element that imparts to the mark as a whole the distinctive character necessary to link the mark to the Complainant, as would be required under trademark law.

The Panel notes that there have been a number of prior UDRP cases involving trademarks containing geographical words or terms in conjunction with a device or figurative element, in which the device or figurative element has been found to be an integral element of the trademark’s distinctiveness: see, for example, Spreewaldverein e.V. v. RCS Richter Computer Systemhaus GmbH, WIPO Case No. D2003-0614; Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047.

The Panel concludes in the present case that the figurative element is an essential element of the Complainant’s mark. It is the most distinctive element in the trademark sense and in the eye-catching sense. In this respect the Complainant’s mark differs from that considered in Zwiesel Kristallglas AG v. WWW Enterprise Inc., WIPO Case No. D2005-1223, in which the geographic term “Zwiesel” was found to be the distinctive element of the mark.

Turning to the issue of identity or confusing similarity, many cases have established that “essential” or “virtual” identity is sufficient for the purposes of the Policy: see, for example The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; and Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489.

Likewise, many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See, for example, BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No.D2001-1480; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121, and the cases there cited.

Here, in comparing the disputed domain name with the Complainant’s mark, it is apparent that the two are neither identical nor virtually identical (even leaving aside the inconsequential gTLD “.org”, which should be disregarded).

As to confusing similarity, whereas numerous panels have found that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy – see for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No D2002-0782, and the cases there cited – here the situation is the reverse: the domain name comprises one of two descriptive elements of the Complainant’s trademark and does not include (nor could it) the only distinctive element.

Accordingly the Panel is not satisfied that the disputed domain name is identical to or confusingly similar to the Complainant’s registered mark.

The Complainant has failed to establish this element of its case. It is therefore unnecessary to consider the issues of legitimacy and bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Alan Limbury
Sole Panelist

Dated: October 18, 2006