WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gold Coast Tourism Corporation Ltd. v. Digimedia.com L.P.
Case No. D2013-1733
1. The Parties
The Complainant is Gold Coast Tourism Corporation Ltd. of Broadbeach, Queensland, Australia, represented by Pod Legal, Australia.
The Respondent is Digimedia.com L.P. of Stillwater, Oklahoma, United States of America (“US”), represented by John Berryhill, Ph.d., Esq., US.
2. The Domain Name and Registrar
The disputed domain name <goldcoast.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2013. On October 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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”).
The Response was filed with the Center October 14, 2013. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced October 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2013. Taking into account the Respondent’s confirmation of October 17, 2013, the Center proceeded to panel appointment procedure.
The Center appointed James A. Barker, Philip N. Argy and Andrew F. Christie as panelists in this matter on October 31, 2013. 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.
4. Factual Background
The Gold Coast is city on the coast of the Australian state of Queensland, south of the state capital of Brisbane. The city is a significant tourist destination.
The Complainant operates a website at “www.visitgoldcoast.com”. On that website, the Complainant states that it was established in 1975 and describes itself as a “not-for-profit, membership based, destination marketing organisation structured to promote the Gold Coast as a leisure and business event destination through global consumer, trade, media and travel industry channels.” (The Panel has viewed the Complainant’s website as little information on the Complainant’s business was provided in the Complaint itself.)
The Complainant is the owner of several registered marks that include the term “gold coast” or acronyms for that location. These marks include the terms GOLD COAST TOURISM, VERYGOLD COAST VERYGC, VERYGOLD COAST and CONNECTGC. Those trademarks were variously registered from December 2004.
Evidence in the Complaint indicates that, at some date not identified in the Complaint, the disputed domain name reverted to a webpage under the title “goldcoast.com” featuring links with titles such as “Gold Coast”, Gold Coast Hotels” and “Tour Australia”.
As indicated in the WhoIs details confirmed by the Registrar, the disputed domain name was first created in December 1997.
5. Parties’ Contentions
The following is summarised from the Complaint.
The disputed domain name is identical or confusingly similar to the Complainant’s registered marks and the Complainant’s <visitgoldcoast.com> domain name. The disputed domain name and the Complainant’s marks are used for identical services, namely the promotion of the Gold Coast tourist destination.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been using it in connection with a bona fide offering, is not commonly known by the disputed domain name, and is using it to gain commercially by misleadingly diverting Internet users. The Complainant refers to prior UDRP panel authority for the proposition that the use of a domain name for a “parking” webpage may be permissible in some circumstances, but is not itself a basis for establishing rights or legitimate interests arising from a bona fide offering. The Complainant also refers to that authority for the proposition that where links on a parking page are based on trademark value, such practices have generally been viewed as an unfair use.
The Complainant says that the disputed domain name has been registered and used in bad faith. This is because the Respondent has attempted to sell the disputed domain name to the Complainant, in a series of discussions between the parties between June 2012 and July 2013. The Respondent made an initial offer to sell the disputed domain name for USD 1 million. The Complainant made a counter-offer of USD 10,000, although this offer was not acknowledged by the Respondent. The Complainant says that the Respondent’s desire to obtain a “totally excessive and unreasonable payment” suggests bad faith. The Complainant also states that the Respondent has used the disputed domain name for unsophisticated “gateway” pages and has not developed a website in a measurable or significant way. The Complainant says that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its registered trademark in a corresponding domain name. It would be reasonable for a consumer to easily be misled into believing that the Respondent’s website was somehow sponsored, affiliated or endorsed by the Complainant.
The following is a summary of the Response.
The Respondent denies the allegations in the Complaint and refers to a series of prior UDRP panel decisions. The Respondent points out that the Gold Coast is a geographic name. The usage of that name in the Complainant’s marks is not a trademark or service mark use, but a trade name which is not entitled to protection under the Policy. The Respondent says that there is no confusing similarity between the disputed domain name and the Complainant’s marks, which are eight years junior to the Respondent’s registration of the disputed domain name.
The Complainant is not exclusively associated with the name “Gold Coast”. There are 189 Australian registered marks which include that term, and the Complainant itself uses it as a geographic indicator in its Complaint.
The Complainant has not demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent’s rights are senior to the Complainant’s, a fact the Complainant should have been aware of. The Complainant has no exclusive right in the term “Gold Coast”, which anyone is entitled to register for commercial purposes in relation to travel to the Gold Coast, Australia. The use of a geographically nominative term for purposes relating to such a place has expressly and repeatedly been found to be a legitimate use. The Respondent says that the notion that it registered the disputed domain name with the Complainant’s mark in mind is particularly silly, in view of the fact that the Complainant has provided no evidence of exclusive rights in the term “Gold Coast” per se, and because the Respondent’s registration of the disputed domain name occurred eight years prior to the Complainant’s registration of its marks.
The Respondent denies that it registered and has used the disputed domain name in bad faith. The Respondent refers to a previous case under the Policy (Prime Pictures LLC v. DigiMedia.com L.P., WIPO Case No. D2010-1877) in which a complaint was denied against the Respondent, because the date of the Respondent’s registration of that domain name was prior to the registration of the then complainant’s mark. The Respondent says that discussions between the parties in 2013, relating to possible sale of the disputed domain name, provide no evidence of the Respondent’s bad faith intent in registering the disputed domain name in 1997. The Complainant brought the Complaint because it did not succeed in purchasing the disputed domain name from the Respondent.
The Respondent says that any reasonable investigation would have revealed that there was a fundamental weakness in the Complainant’s case. The Complainant cannot fail to be aware that “Gold Coast” is principally a geographic term, and that it was used for geographically descriptive purposes by the Respondent.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must prove both that it has rights in a mark, and that the disputed domain name is identical or confusingly similar to that mark.
There is no doubt that the Complainant has rights in registered marks that relate to the Gold Coast. There is also little doubt that the disputed domain name is not identical to those marks.
The question is whether the disputed domain name is confusingly similar to one or more of the Complainant’s marks. The Complainant vaguely alleges that the disputed domain name is confusingly similar to its marks because “a number” of them contain references to the Gold Coast. The Complainant provides no further evidence or argument to support this allegation.
The Panel unanimously considers that the disputed domain name is not confusingly similar to any of the Complainant’s marks. This is for the following reasons. (The issue of similarity to the Complainant’s <visitgoldcoast.com> domain name is not considered, although alleged in the Complaint: It is irrelevant to the issues under paragraph 4(a) of the Policy.)
Firstly, the Panel has considered “the established principle that a geographical name standing alone is difficult to protect under the UDRP unless there are extraordinary circumstances.” Ipiranga Produtos de Petróleo S.A. v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2011-0163. This case involves such a domain name. There is no dispute that the disputed domain name is associated with the geographic location of the Gold Coast. This is self-evidently the basis on which the Complainant has brought the Complaint.
Secondly, paragraph 1.5 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) relevantly states that: “The report of the Second WIPO Internet Domain Name Process declined to recommend specifically extending protection to geographical terms under the UDRP. Some geographical terms, however, can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark for goods or services other than those that are described by or related to the geographical meaning of the term (secondary meaning).” The Complainant provided no evidence of using the term “Gold Coast” for goods or services unrelated to its geographic meaning. While the Complainant provided little direct evidence of its business, its own website describes it as an organisation established to market the Gold Coast as a destination. The Complainant’s marks are clearly designed for use in that connection.
Thirdly, the Complainant has not demonstrated that the term “Gold Coast”, by itself, is closely similar to any of its marks. Only some of the Complainant’s marks incorporate that term. Three of them do not incorporate that term at all: including two marks for VERYGC and one for CONNECTGC. While the acronym “GC” is clearly intended as a reference to the Gold Coast, there is a significant difference between a two letter acronym for a geographic term and the geographic term itself.
The Complainant’s other marks do incorporate the term “Gold Coast”. The Complainant’s mark for GOLD COAST TOURISM includes those words underneath a prominent design. The Complainant’s other marks include the terms VERYGOLD COAST VERYGC. In these marks, the term “Gold Coast”, as it appears in the mark, is in small type relative to the term VERYGC which appears underneath it. Given the geographic meaning of the term “Gold Coast” however none of these marks demonstrate that the Complainant has any distinctive rights in the geographic term, any more than they demonstrate that the Complainant might have rights in the generic words “tourism” or “very” taken alone. The Complainant’s allegation to the contrary suggests a significant misunderstanding of the trademark rights on which it seeks to rely.
Fourthly, and related to the first and second points above, previous decisions under the Policy involving allegations of rights in a city name have often been rejected in favour of respondents. For example, in Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 the then panel stated the general rule that geographic terms are not per se protected under the Policy, because geographical terms ordinarily cannot serve as trademarks for the geographical areas to which they relate. In this case, the term “Gold Coast” is not performing such a function by itself. It is only one component of the Complainant’s various marks. The Complainant’s trademark rights do not extend to particular components of its marks, particularly those which, like the geographic term “Gold Coast, may have a large number of associations.
Finally, the Respondent indicates that the term “Gold Coast” is used in 189 other registered Australian marks. The extensive use of the geographic term in registered marks is indicative that the term “Gold Coast” taken alone does not have a distinctive association with the Complainant.
For all these reasons, the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s registered marks.
B. Rights or Legitimate Interests
Because of the Panel’s conclusion that the Complainant has not established confusing similarity, it is unnecessary for the Panel to make further findings. However, the Panel makes some observations on these further grounds because they are relevant to its finding (below) of reverse domain name hijacking.
The Complainant says that the Respondent lacks rights or legitimate interests in the disputed domain name, because Respondent has not been using it in connection with a bona fide offering, is not commonly known by the disputed domain name, and is using it to gain commercially by misleadingly diverting Internet users, and has used it in connection with a “parking” webpage. The Complainant alleges that the Respondent is seeking to exploit the trademark value of the Complainant’s marks.
These arguments fail for the same fundamental reason that the Complainant cannot establish confusing similarity. That is, the Complainant has provided no evidence that the term “Gold Coast” has a distinctive association with its marks. Rather, the evidence suggests that the Respondent was seeking to exploit the geographic value of the “Gold Coast”. The Respondent’s webpage, a screenshot of which was provided in evidence attached to the Complaint, suggests the Respondent used the disputed domain name to provide links with an obvious connection to the geographic term it incorporates (e.g., “Gold Coast Hotels”).
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ [see also paragraph 3.8 below] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The Complaint particularly highlights the last sentence of this paragraph 2.6. From this, the Panel infers that the Complainant is suggesting that the links that appeared on the Respondent’s website relate to the trademark value of one or more of its Australian-registered marks. The Panel also infers that the Complainant alleges the Respondent’s use of the disputed domain name in connection with the PPC webpage would not be a basis for a legitimate interest.
This first allegation fails for the same reasons the Complainant is unable to establish that the disputed domain name is confusingly similar to its marks. The “Gold Coast” is a geographic term, and as such, falls squarely within the examples of a permissible use referenced in paragraph 2.6 of the WIPO Overview 2.0, cited by the Complainant. The Complainant provided no evidence that this geographic term has a distinctive association with its marks, or that the Respondent sought to exploit those marks per se.
The second allegation does not take the Complaint any further. There is no dispute that the Respondent has used the disputed domain name in connection with a PPC landing page, which includes links relating to things such as “Gold Coast”, “Gold Coast Hotels” and “Tour Australia” (although there was no direct evidence that the Respondent received payment for traffic through its website, the Respondent did not deny it). But while that use does not establish a right or legitimate interest, neither does it avoid a finding of one.
In this connection, the Respondent refers to the Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652, among others. That case related to the geographic domain name <havanna.com> and also involved a PPC parking website. The panel in that case found that the then respondent had a legitimate interest in the domain because the advertisements on the website all related to the capital of Cuba, not the then complainant’s HAVANNA trademark, which was used in connection with confections. The circumstances of this case are somewhat similar. However, in the Havanna case the then complainant was at least able to establish that the domain name in dispute was confusingly similar to its registered mark. The Complainant in this case has not.
C. Registered and Used in Bad Faith
Neither is the Complainant able to establish bad faith. The Complainant’s allegations in this respect are weak and, in some respects, inconsistent with its own evidence.
The Complainant alleges that the Respondent’s offer to sell the disputed domain name is indicative of bad faith. In communications between the parties from June 2012 to July 2013, the Respondent suggested that it would transfer the disputed domain name for USD 1 million. The Complainant counter-offered for USD 10,000, but says this counter-offer was not “acknowledged” by the Respondent. The Complainant says that the Respondent’s desire to “obtain a totally excessive and unreasonable” payment for the disputed domain name is indicative of bad faith.
The Complaint refers to paragraph 3.6 of the WIPO Overview 2.0. That paragraph notes that “Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith.” But this misunderstands the Policy. Such evidence may be relevant where it demonstrates a bad faith intention. This does not mean that any offer to sell a disputed domain name for an amount a complainant considers “excessive” (however that might be defined) would be evidence of bad faith. And there was notably no evidence in the parties communications from June 2012 to July 2013 that the Complainant then considered the Respondent’s registration of the disputed domain name to have been in bad faith.
The Complainant goes on to make further allegations. These include allegations that the Respondent registered the disputed domain name to prevent the Complainant from registering its marks in a corresponding domain name; and that the Respondent sought to misleadingly divert Internet users by creating confusion with the Complainant’s marks. The Complainant provides no evidence for either allegation. As noted further above, the disputed domain name does not clearly ‘correspond’ to the Complainant’s marks. Neither is it confusingly similar.
D. Reverse Domain Name Hijacking
The Panel considers that the Complaint constitutes reverse domain name hijacking against the Respondent. “Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy.” See Rohl, LLC v. ROHL SA, WIPO Case No. D2006-0645.
The Complainant should have known its case was fatally weak. The Complainant is represented by counsel. The Complaint has not established any of its allegations under paragraph 4(a) of the Policy. It provided no real argument to establish that the disputed domain name was confusingly similar to any of its trademarks, nor to establish that the Respondent lacked rights or legitimate interests, or acted in bad faith. The disputed domain name has an obvious geographic association, to which the Complainant has no exclusive rights.
The Complainant engaged in exchanges with the Respondent to purchase the disputed domain name. The Complainant’s own evidence indicates that the Complainant was willing to purchase the disputed domain name for USD 10,000. In those exchanges, the Complainant made no suggestion that it considered the Respondent’s registration to have been made in bad faith, or that the Respondent was otherwise infringing the Complainant’s rights.
The significantly prior creation of the disputed domain name, in comparison to the Complainant’s trademark registrations, might have called for evidence of alternatively common law trademark rights, or evidence of the Complainant’s reputation. The Complainant provided no such argument or evidence.
The arguments and evidence advanced by the Complainant fall well short of those required to establish a case under paragraph 4(a) of the Policy. For these reasons, the Panel makes a finding of reverse domain name hijacking against the Complainant.
For the foregoing reasons, the Complaint is denied.
James A. Barker
Philip N. Argy
Andrew F. Christie
Date: November 14, 2013