The Complainant is Stadtgemeinde Schladming of Schladming, Austria, represented by Held Berdnik Astner & Partner Rechtsanwalte GmbH, Austria.
The Respondent is TIS GmbH, Tiscover AG of Innsbruck, Austria, represented by Wolf Theiss Rechtsanwalte GmbH, Austria.
The disputed domain name <schladming.com> is registered with Ascio Technologies Inc. - Denmark.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2009. On October 26, 2009, the Center transmitted by email to Ascio Technologies Inc. - Denmark a request for registrar verification in connection with the disputed domain name. On October 27, 2009, Ascio Technologies Inc. - Denmark transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 5, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 November 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2009. The Response was filed with the Center on November 26, 2009.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on December 4, 2009. 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 Panel subsequently extended the decision due date.
As indicated in the WhoIs registration records provided in Annex 1 to the Complaint, <schladming.com> was registered on January 14, 1997.
The Complainant holds no registered trademarks incorporating the term “Schladming”.
The Complainant is the “Commune of Schladming” (“Stadtgemeinde Schladming”), a legal person under public law of Austria.
The Respondent under the disputed domain name, <schladming.com>, offers (links to) travel-offers to the region of Schladming and provides some information regarding events and travel destinations in the town of Schladming and some general information regarding the region and the town of Schladming.
The Complainant contends that
- the Complainant is an internationally well-known city in Northern Styria in Austria and tourism is one of the city's main sources of income. The name Schladming is very old and can be traced back to the year 1180. In Schladming important events in the future will be the FIS Alpine Ski World Cup in 2012 and the FIS Alpine Ski World Championship in 2013.
- the Complainant has rights to the unregistered trademark / service mark SCHLADMING. The Complainant has been using the mark inter alia for administrative services and for providing tourist information services.
- the Complaint is also based on the “geographic term”, namely “Schladming”.
- furthermore, the Complaint is based on the personal name “Schladming” as a common law mark and as a protected name under Austrian law.
- the Respondent uses the mark SCHLADMING as a domain name for tourist information and booking services and as a link to its main website under <tiscover.com>. The Respondent's revenues derive from commissions and banner advertisments. The Respondent is not using the disputed domain name bona fide. The Respondent is unable under any circumstances to claim rights to the name of “Schladming” or claim any legitimate interests in respect to the disputed domain name.
- <schladming.com> was registered and is being used by the Respondent in bad faith, because the Respondent is using the domain name to attract Internet users by creating a likelihood of confusion with the Complainant's name of the city as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Furthermore, the Respondent prevents the Complainant from using its individual name.
- the Respondent also has registered several other domain names incorporating famous Austrian travel destinations. This shows that Respondent exploits the prominence of famous travel destinations.
The Respondent contends respectively replies that
- Schladming is a geographic indication and not a trademark.
- the Complainant did not furnish any evidence that itself uses “Schladming” for actually branding any product or service.
- there exist numerous third parties that provide goods and / or services in relation to the town of Schladming, also using domain names comprising “Schladming”.
- the Austrian national law regarding the protection of names is not to be considered under the UDRP.
- the Respondent's logo Tiscover is located on each page under the disputed domain name in the upper left corner and consequently, no Internet user assumes that the disputed domain name is hosted by the municipality of Schladming, i.e. the Complainant. The website and the TLD “.com” identify the website as one of a commercial online trip-advisor.
- the Respondent therefore is making a legitimate fair use of the domain name.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant admits not to be holder of a registered trademark incorporating the term “Schladming”.
For a Complaint to succeed, the UDRP requires the Complainant to demonstrate that it has rights in a trademark or service mark. The Complainant, however, is not the holder of any registered trademark or service mark.
According to very well-established UDRP precedents, if evidence is provided that an unregistered sign has been intensively used as an indication of the source of goods or services supplied in trade or commerce and that the sign has become distinctive of that source (which means that it has obtained secondary meaning) such unregistered sign can be considered as a trademark or service mark in terms of paragraph 4(a)(i) of the Policy.
Also personal names, which function as trademarks, can be protected under the UDRP. This applies especially to famous personal names, e.g. Julia Roberts, Jaenette Winterson, Michael Chrichton, etc, but also other personal names. In such cases it is generally necessary to show use of that name as an indication of the source of goods or services supplied in trade or commerce and that, as a result of such use, the name has become distinctive of that source.
Although the Complainant argues to have rights regarding the “personal name” of “Schladming”, the sign actually is a geographic designation regarding a region in Styria, specifically the name of a municipality. Consequently, Schladming is not a “personal name” in terms of international intellectual property rights.
In this context it has to be noted that the UDRP provides an international uniform procedure. Consequently, the Panel understands that arguments based on international laws, which are generally accepted, can be considered under the UDRP. Applying this principle on the actual case the Panel finds that the Complainant does not have the necessary rights in terms of paragraph 4(a)(i) of the Policy to successfully raise a Complaint under the UDRP:
The international intellectual property instrument that this Panel finds most relevant to the discussion of the protection of country names and names of municipalities is the Paris Convention for the Protection of Industrial Property (Convention). Article 6ter of the Convention provides for the protection of certain state-related symbols against their registration and use as trademarks. The Convention does not, however, expressly mention country names or names of municipalities: A textual comparison between subparagraphs 1(a) and 1(b) of Article 6ter and the preparatory work for the Geneva Diplomatic Conference on the Revision of the Paris Convention show that country names and names of municipalities shall not be protected by the Paris Convention.
Consequently, as this Panel sees it, any protection offered in the gTLDs to country names, as well as any other place names and names of municipalities, as such, would amount to the creation of new international law, at least from the international intellectual property law perspective. This is a concern that the Panel finds reflected in the “Report of the Second WIPO Internet Domain Name Process”.
Due to the lack of harmonization and the resultant differing treatment of the issues regarding names of municipalities at the national level, it seems to this Panel that any protective measures which exists only under specific local law and is applied under the UDRP on that basis may risk contradicting the latter's fundamental principle of uniform dispute resolution. Consequently, this Panel finds that the Austrian laws regarding names, which also protect the names of municipalities, are not appropriate for application in these particular Policy proceedings and this Panel declines accordingly to exercise its discretion under Rules paragraph 15(a) to apply such Austrian law herein. In this context the Panel refers to the “Report of the Second WIPO Internet Domain Name Process”:
“288. It is recommended 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.”
Therefore, in view of all of the above, this Panel finds that the Complainant has not proved trademark rights in the name “Schladming” in the terms of paragraph 4(a)(i) of the Policy and the Complaint therefore has to be dismissed on that ground1.
As the Complaint has to be dismissed on the (formal) ground that the Complainant does not have trademark rights in the terms of paragraph 4(a)(i) of the Policy, the Panel does not have to deal with this point.
As the Complaint has to be dismissed based on paragraph 4(a)(i) of the Policy, the Panel does not have to deal with this point.
For the foregoing reasons, the Complaint is denied.
Dated: January 14, 2010
1 The UDRP is intended solely for a limited class of cases, those involving evidenced rights in trademarks, service marks and – under certain circumstances – personal names, but not cases regarding rights in names of municipalities or regions (cf the “Report of the Second WIPO Internet Domain Name Process”).
This decision neither is intended to limit nor should it be interpreted to limit other remedies available to Complainant in seeking judicial recourse.