WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Wonderful Copenhagen Foundation v. Nya Destination Stockholm Hotell & Teaterpaket AB
Case No. D2007-0296
1. The Parties
The Complainant is The Wonderful Copenhagen Foundation, Copenhagen V, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Nya Destination Stockholm Hotell & Teaterpaket AB, Nybrogatan, Stockholm, Sweden, represented by Plesner Law Firm, Denmark.
2. The Domain Name and Registrar
The disputed domain name <visit-copenhagen.com> is registered with Ascio Technologies Inc. (DK).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2007. On March 1, 2007, the Center transmitted by email to Ascio Technologies Inc. (DK) a request for registrar verification in connection with the domain name at issue. On March 5, 2007, Ascio Technologies Inc. (DK) 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. 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 March 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response March 27, 2007. The Response was filed with the Center on March 27, 2007.
On March 26, 2007, the Center received by Email a letter of Infovidi AS, informing the Center that Netkubator had changed its name into Infovidi AS, and that Netkubator sold in October 2005 the domain name <visit-copenhagen.com> to Mr. Jan Rencke of Nya Destination AB, and that the domain name ownership was just recently updated by the Registrar. The Center responded on March 28, 2007, that it would leave any determination in this regard to the Panel.
Nya Destination AB, in its Response confirmed that, on March 22, 2007, the registration record for the domain name <visit-copenhagen.com> was updated and now shows that Nya Destination Stockholm Hotell & Theaterpaket AB, which assumed control over the domain name since 2005, is the Registrant.
The Center appointed Gerd F. Kunze, Knud Wallberg and Tony Willoughby as panelists in this matter on May 15, 2007. The Panel finds that it was properly constituted. Each member of 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.
In view of the evidence submitted by Infovidi AS and Nya Destination AB, and in view of the fact that also the Complainant in its Complaint treats Nya Destination AB as Respondent (Complainant submitting that Nya Destination AB has no rights or legitimate interests in respect of the domain name and that it acts in bad faith), the Panel accepts that since the purchase of the domain name <visit-copenhagen.com>, Nya destination Stockholm has been the beneficial owner of the registration, and that since March 22, 2007, it is also formally registered as owner of the registration. All references to the Respondent in the Panel’s decision are therefore references to that company.
4. Factual Background
The Complainant markets information and services regarding the Copenhagen City and area, addressed to tourists, business travelers and other customers. At the bottom of the advertising material, submitted in that context by the Complainant, either the domain name <visitcopenhagen.com> respectively the domain name <visitcopenhagen.dk> are used, or the corresponding web-addresses “www.visitcopenhagen.com“ respectively “www.visitcopenhagen.dk”; sometimes these terms are used alone, sometimes together with a device of a mermaid, or together with the domain name <visitdenmark.com>, or together with the web-address www.visitdenmark.com. The Complainant first started using the term “visitcopenhagen” in this manner in 2001.
The Respondent is a Swedish company in the business of providing tourist information and services. Its core business is the provision of tourist packages consisting of hotel accommodation combined with a tourist pass giving free transportation and access to local tourist attractions. Such passes are sold under the names “Stockholm a la Carte” and “Copenhagen a la Carte”. The Respondent uses the domain name <visit-copenhagen.com> for a website providing tourist information, whilst it markets its “Copenhagen a la Carte” packages on another website “www.copenhagen-hotels.se”. This approach corresponds to the approach taken for the Swedish business, where the “Stockholm a la Carte” packages are marketed on the website www.destination-stockholm.com, whilst the tourist information is provided on the website “www.visit-stockholm.com”.
The domain name was first registered in 1999. The Respondent acquired the domain name from its previous owner in 2005.
On January 16, 2007, the representative of the Complainant wrote a letter to Nya Destination Stockholm AB as technical/administrative contact of the domain name and requested its transfer to the Complainant, otherwise further proceedings would be initiated at the WIPO Arbitration Center. Nya Destination Stockholm AB responded that it preferred to have the dispute resolved by a decision of a WIPO Panel.
5. Parties’ Contentions
The Complainant submits that it has rights in the unregistered trademark “visitcopenhagen”. To prove these rights it refers to the advertising materials referred to above paragraph 4, which have been used since 2001.
The Complainant submits that (A) the domain name <visit-copenhagen.com> is identical or quasi-identical to its trademark “visitcopenhagen” in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
The Respondent submits that it has a legitimate interest in using the domain name <visit-copenhagen.com> and that it uses this term in good faith. It is also of the opinion that the Complainant cannot claim rights in the term “visitcopenhagen”, which it considers to be descriptive. In that context it submits evidence for the use of the terms “visitcopenhagen” and “visit-copenhagen” in second level domain names by 8 other legal entities. As evidenced by the Respondent, these domain names and corresponding websites are: <visitcopenhagen.eu>, <visit-copenhagen.eu>, <visitcopenhagen.biz>, <visitcopenhagen.co.uk>, <visit-copenhagen.co.uk>, <visit-copenhagen.de>, <visitcopenhagen.nl>, <visitcopenhagen.no>.
Furthermore, in view of the descriptive character of the term “visitcopenhagen” and its use by other entities, the Respondent considers that the domain name <visit-copenhagen.com> cannot be regarded to be confusingly similar with the term “visitcopenhagen”.
6. Discussion and Findings
A. Identical or Confusingly Similar to a Trademark or Service mark in which the Complainant has Rights
There can be no doubt that the terms “visit” and “Copenhagen” are descriptive. Also the combination of both terms does not constitute a distinctive term in the context of the offering of tourist services in the broadest sense, since its general meaning is the invitation to visit Copenhagen. Based on Danish trademark law that corresponds to generally accepted principles, the term “visitcopenhagen” can therefore be considered to be a protected unregistered trademark/service mark only if it has acquired distinctiveness for the Complainant as a result of extensive use as a trademark/service mark.
It can be derived from the evidence submitted by the Complainant that the term “visitcopenhagen” as such practically never has been used by it in the sense of a typical trademark or service mark use. As explained in detail above paragraph 4, the term “visitcopenhagen” has always been used in conjunction with gTLDs such as .com and .dk, or in the form of a web-address (“www.visitcopenhagen.com” or “www.visitcopenhagen.dk”). Often also the device of a mermaid was added to the word part. Furthermore, generally these domain names or web-addresses are placed at the bottom line of the advertising materials and are not placed prominently on the top.
Under the circumstances, in the view of the Panel the presented evidence does not show with the necessary clarity that the Complainant has acquired trade mark rights in the term “visitcopenhagen”.
The Panel notes that the disputed domain name <visit-copenhagen.com> was first registered before the Complainant first started using the term “visitcopenhagen”. This demonstrates that the original registrant registered the domain name for its obvious descriptive value and for no other reason.
Also it is doubtful whether, in view of the descriptiveness of the term “visitcopenhagen” and in view of the fact that the other above (paragraph 5) listed domain names, consisting of the term “visit-copenhagen” or even the term “visitcopenhagen” are used by different legal entities, possible rights of the Complainant would go beyond the use of a term that is identical to that used by the Complainant.
The Panel is of the opinion, however that it need not decide whether the Complainant can claim rights in the unregistered trademark/service mark “visitcopenhagen” and it can also be left open, whether such possible rights would have to be considered to be infringed by the use of the domain name <visit-copenhagen.com>, because it is satisfied that the Respondent has a legitimate interest in the use of that domain name and that its domain name was not registered and is not being used in bad faith.
B. Rights or Legitimate Interests
The Respondent provides tourist related services in Sweden, where it entertains a website at “www.destination-stockholm.com” for marketing its “Stockholm à la Carte” packages, and a tourist information site at “www.visit-stockholm.com”. It acquired the domain name <visit-stockholm.com> together with the domain name <visit-copenhagen.com> in the year 2005 from Netkubator. The registration of the domain name <visit-copenhagen.com> dates back to 1999 and thus predates all domain name registrations of the Complainant. In the year 2006 the Respondent expanded its business to Denmark, where since that time it uses in the same manner as in Sweden two parallel websites, “www.copenhagen-hotels.se” for the marketing of its “Copenhagen à la Carte” packages, and the website www.visit-copenhagen.com, corresponding to the website “www.visit-stockholm.com”, to provide tourist information on Copenhagen.
In August 2006, well in advance of being notified of the Complaint the Respondent began using the domain name in connection with the offering of services aimed at visitors to Copenhagen. There is no evidence to suggest that the Respondent acquired the domain name for any reason other than fairly to promote its tourist services for visitors to Copenhagen.
For the reasons mentioned before this use must be considered to be a use in connection with a bona fide offering of goods or services pursuant to Paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
The registration of the Respondent’s domain name predates the registration of the Complainant’s domain names and the date of first use of the term “visitcopenhagen” by the Complainant. The Respondent acquired the domain name <visit-copenhagen.com> in 2005, in order to use it for a website containing tourist information for visitors of Copenhagen, in parallel with a corresponding website <visit-stockholm.com>. The Respondent’s website “www.visit-copenhagen.com“ coexists not only with the Complainant’s website “www.visitcopenhagen.com“ but with a considerable number of other websites, consisting of the term “visit-copenhagen” or even the term “visitcopenhagen”, identical to the term used by the Complainant, combined with other gTLDs such as .eu, .biz, .co.uk, .de, .nl, and .no. Many of these sites are used similar to the use of the Complainant and of the Respondent, namely to provide travel and tourist information and services to visitors to Copenhagen.
Under the circumstances it cannot be said that the Respondent has attempted to attract Internet users to its website by creating a likelihood of confusion with the term used by the Complainant, which may or may not be considered to be an unregistered mark of the Complainant. The Panel is therefore of the opinion that Paragraph 4(b)(iv) of the Policy is not applicable. There can also be no doubt that the other subparagraphs of Paragraph 4(b) are not applicable.
In conclusion the Respondent did not register and is not using the domain name <visit-copenhagen.com> in bad faith.
For all the foregoing reasons, the Complaint is denied.
Gerd F. Kunze
Dated: May 29, 2007