WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verein fuer Praehistorische Bauten und Heimatkunde v. Siarhei Chyzhevich
Case No. D2007-0105
1. The Parties
The Complainant is Verein fuer Praehistorische Bauten und Heimatkunde, Umhausen, Austria, represented by Hendrik Maat, Austria.
The Respondent is Siarhei Chyzhevich, Brighton, Brooklyn, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <oetzi-dorf.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2007. On January 29, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On January 29, 2007, Network Solutions, LLC 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 and technical contact. In response to a notification by the Center, the Complainant confirmed on February 1, 2007 that no other legal proceedings exist with regard to the disputed domain name. 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 February 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2007.
The Center appointed Brigitte Joppich as the sole panelist in this matter on March 6, 2007. 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.
4. Factual Background
Together with third parties and under scientific guidance, the Complainant runs the so-called “Ötzidorf” (“Oetzi-dorf”), an archaeological open-air museum displaying life, living and industrial art of the Neolithic Age.
The domain name was first registered in 1999 in the name of the Complainant by a third party provider. However, it appears that the Complainant lost the domain name when the third party provider failed to duly renew it. At some subsequent point of time (the date is unknown), the Respondent acquired the domain name.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case:
(i) The domain name is identical to the trademark “oetzi-dorf” owned by the Complainant. The Complainant also owns the domain names <oetzidorf.com>, <oetzi-dorf.at>, <oetzidorf.at>, <ötzi-dorf.at>, and <ötzidorf.at>. The Complainant’s website used to be found at “www.oetzi-dorf.com” and its principal email address used to be firstname.lastname@example.org. The Complainant further contends that the domain name is printed on its letterhead and all of its marketing materials and that it spends a total of EUR69.000 each year for marketing purposes in relation to “oetzi-dorf”.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name: Neither the Respondent nor the content of its website are related to the Complainant’s trademark “ötzidorf” (“oetzi-dorf”).
(iii) The domain name was registered and is used in bad faith: The Complainant contends that the Respondent displays a pornographic website at “www.oetzi-dorf.com”, thereby causing considerable damage to the Complainant’s business, which is directed at children between the ages of 10 and 18. Furthermore, the Respondent uses the domain name to gain traffic on his website, availing itself of the good placement of the Complainant’s websites by search engines.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark, and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name is made up of “oetzi” and “dorf”. While “dorf” is the German word for “village”, “oetzi” appears to refer to “Ötzi”, the nickname of a well-preserved natural mummy of a man from about 3300 BC, found in a glacier of the Ötztal Alps in Austria. As the letter “ö” is not used outside German speaking Europe, the common international way to spell words with such letter is to replace “ö” by “oe”, so that “ötzi” becomes “oetzi”. Both ways of spelling must therefore be considered as identical. The part “oetzi-dorf” of the domain name therefore means “Ötzi village” and is to be classified in the view of the Panel as descriptive of the village constructed by the Complainant.
While the Complainant refers to its trademarks “ötzidorf” and “oetzi-dorf”, it does not supply the Panel with any evidence as to the nature and existence of such trademark rights. In the absence of any registration numbers or copies of registration deeds, the Panel comes to the conclusion that the Complainant may only rely on unregistered rights in “oetzi-dorf”, if at all. To successfully assert common-law or unregistered trademark rights, the Complainant must show that this name has become a distinctive identifier associated with the Complainant or its services. Relevant evidence of “secondary meaning” typically includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Neither the existence of such secondary meaning in only a particular geographic area, nor the fact that the Complainant is based in a civil law jurisdiction would prevent the finding of unregistered rights (Skype Limited v. Benjamin Decraene, WIPO Case No. D2005-1112). However, claiming a certain marketing expenditure, use of the domain name and ownership of confusingly similar domain names only, without supplying any documentary evidence, are in the view of the Panel not sufficient to prove secondary meaning and establish common-law or unregistered trademark rights in the present case. This applies a fortiori as the domain name is of a descriptive or generic nature, calling for increased requirements with regard to the assertion of unregistered rights.
The Complainant has thus failed on the basis of the material provided to prove that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It is therefore unnecessary for the Panel to make a finding in relation to the remaining elements of the Policy. The Panel notes in passing however that the material provided by the Complainant is likely to have been of limited assistance in relation to proving bad faith. For example, the date of registration of the disputed domain name has not been clearly established, and may have occurred as early as the year 2000, when the Complainant had only just commenced business. Although the Respondent has apparently registered a domain name with an unusual identifier in which it has no evident genuine interest, no compelling material has been provided to indicate for example that the Respondent had knowledge of the Complainant or a possible mark. The Panel notes that the Decision here is based on a limited evidentiary record, and it is of course open to the parties to pursue the matter in an appropriate Court should they wish to do so.
For all the foregoing reasons, the Complaint is denied.
Dated: March 15, 2007