WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis
Case No. D2016-2601
1. The Parties
1.1 The Complainant is Gstaad Saanenland Tourismus of Gstaad, Switzerland, represented by Weinmann Zimmerli, Switzerland.
1.2 The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Dimitri Dimitriadis of Monte-Carlo, Monaco, represented by John Berryhill, Ph.D., Esq., United States.
2. The Domain Name and Registrar
2.1 The disputed domain name <gstaad.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2016. At the time the Complaint was filed the publicly available WhoIs database recorded PrivacyGuardian.org, as the registrant of the Domain Name. PrivacyGuardian.org would appear to be the privacy/ proxy service of the Registrar.
3.2 On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant of the Domain Name as Dimitri Dimitriadis. The Center sent an email communication to the Complainant on January 4, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
3.3 The Complainant filed an amended Complaint and a request for a 30-day suspension of the proceeding on January 6, 2017. The proceeding was suspended by the Center until February 5, 2017. Following a request that the suspension be extended, the proceeding was further suspended until February 23, 2017. On February 23, 2017, the Complainant requested a further suspension of the proceeding in light of a court proceeding against the Respondent. The Center acknowledged the Complainant’s request, indicated that the effect of the court proceeding was for the Panel to determine, and informed the Parties that the proceeding would continue accordingly.
3.4 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”).
3.5 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2017. On March 25, 2017, the Respondent asked for an automatic 4-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for the Response was March 30, 2017. The Response was filed with the Center on March 30, 2017.
3.6 On April 26, 2017, the Complainant emailed the Center, requesting that its Complaint be withdrawn. On April 26, 2017, the Respondent emailed the Center, objecting to the Complainant’s request. On April 27, 2017, the Center informed the Parties that the Panel Appointment process would commence.
3.7 The Center appointed Matthew S. Harris, Philippe Gilliéron and David H. Bernstein as panelists in this matter on May 2, 2017. 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
4.1 The Complainant is based in Switzerland and is the tourist office for Gstaad. Gstaad is a well-known alpine ski and holiday region. As well as providing information in relation to the Gstaad region it also offers accommodation booking services.
4.2 The Complainant is the owner a number of trade marks around the world that incorporate the term “Gstaad”. All of these take the form of the term “Gstaad” as the most prominent part of a logo. They include the following:
(i) Swiss Registered trade mark no P-469475 applied for on November 12, 1999 in classes 3, 9, 12, 14, 16, 18, 20, 21, 25, 28, 29, 30, 33, 34, 35, 39, 41 and 42 that takes the following form:
(ii) Swiss Registered trade mark no 547368 applied for on April 6, 2006 in classes 25, 39, 41, 42, 43 and 44 that takes the following form:
(iii) United States registered trade mark no 4152507 filed on September 2, 2010 and registered on June 5, 2012 in classes 3, 7, 9, 11, 12, 14, 16, 18, 20, 21, 22, 28, 29, 30, 33, 34, 35, 39, 41, 43 and, 44 which takes the same form as Swiss Registered trade mark no P-469475.
4.3 These and similar marks have been used for various products and services beyond tourism including clothing, food and beverage items and sporting articles. The Panel also notes that United States registered trade mark no 4152507 referred to above was registered without any disclaimer under Section 2(f) of the Lanham Act, based on a showing of acquired distinctiveness in the term “GSTAAD”.
4.4 The Complainant operates a website from the Swiss domain name <gstaad.ch>, from which it provides tourist information and booking services. Prior to 2006 the Complainant also owned or controlled the Domain Name.
4.5 In or about November 2006, and as a result of an administrative error the Complainant failed to renew the Domain Name. As a consequence, the Respondent was able to acquire the Domain Name in an online auction at a price of USD 31,250. Although the Registrar has provided an address in Monaco for the Respondent, he would appear to be an individual who lives in and conducts business in Switzerland.
4.6 The Complainant’s lawyers wrote to the Respondent at an address in Greece in January 29, 2007. On February 6, 2007 the Respondent’s lawyer (who is not the same person as the lawyer who has represented the Respondent in the present proceedings) responded stating that their client had purchased the Domain Name in a public auction and for a significant price. They contended that the Respondent had acquired the Domain Name together with other domain names “for the purpose of providing informational services concerning events in and around Gstaad and the region in which Gstaad is located and for the purpose of providing advertising services and an advertising platform for entities and business operating in or providing services to that region”. Although the Complainant’s lawyers did not mention the UDRP, the Respondent’s lawyers did do so and referred to various cases which the Respondent’s lawyers claimed meant that their client would prevail in any UDRP proceedings.
4.7 It seems that there was further correspondence thereafter. That correspondence included a letter on May 4, 2007 from the Complainant’s lawyers in which they put forward various arguments as to Swiss law and UDRP case law. In that letter they stated they had been instructed “to prepare all necessary legal actions (in particular civil and criminal actions) against the holder(s) of the Domain Name”.
However, the letter went on to state that the Complainant had discovered that the Respondent had recently acquired real estate in Gstaad and the Complainant was interested in finding an amicable solution and offering to purchase the Domain Name for CHF 5,000.
4.8 The Domain Name has been used for a number of years to redirect Internet users to a website operating from the domain name <3780Gstaad.com>. “3780 Gstaad” is the postal area in Gstaad where the Respondent resides. On that website the Respondent primarily promotes the rental of various chalets in Gstaad. However, the website also incorporates a page identifying activities and other business in Gstaad.
4.9 The Complainant has previously been involved in proceedings under the Policy with mixed results. In particular:
(i) In 2014 it was a successful complainant in Gstaad Saanenland Tourism v. Beat Schnydrig, WIPO Case No. D2014-0831 in relation to the domain name <gstaad.bike>. Although the decision in that case is in German, it would appear that the various trade marks relied upon by the Complainant in that case included a number of trade marks in Switzerland and elsewhere that comprised the term “Gstaad Bike World” and the domain name was being passively held.
(ii) In 2014 it was an unsuccessful complainant in the Gstaad Saanenland Tourismus v. Connecting Concepts BV, WIPO Case No. D2014-1666, in relation to the domain name <gstaadvalley.com>. In that case the domain name was being used by the Respondent commercially to provide information on the Gstaad valley and to offer historical postcards of the region for sale as well as the rental of a chalet in that region.
(iii) In 2015 it was an unsuccessful complainant in Gstaad Saanenland Tourismus v. Dominic Longcroft, NAF Claim Number FA1506001623885 in relation to the domain name <gstaadimmobilien.com>. In that case the panel held that where the domain name had been used in respect of realtor services, the Complainant had failed to show that the respondent did not have a right or legitimate interest.
4.10 In or about February 2017 after the current UDRP proceedings had been commenced, the Complainant also commenced civil proceedings against the Respondent in the Swiss courts. On or about February 15, 2017 the Complainant was granted an order on an ex parte basis that the domain name not be transferred or deleted. Further orders were made in these proceedings on March 17, 2017 and April 13, 2017. Although the court documents are in German, it would appear that in these proceedings the Complainant has alleged that the use of the Domain Name by the Respondent has notably infringed the Complainant’s trade mark rights and publicity rights.
5. Parties’ Contentions
5.1 In its Complaint the Complainant refers to its various trade marks and the activities that have been conducted under those marks. It claims that the Domain Name is identical or at least confusingly similar to those marks.
5.2 The Complainant refers to its accidental failure to renew the Domain Name in 2006 but not the correspondence that then took place between the parties. It claims that the Respondent undoubtedly knew about the Complainant’s marks at the time that the Domain Name was acquired and has been subsequently used by the Respondent to promote the rental of chalets. This activity is said to fall within the scope of the Complainant’s trade marks. It also contends that any claim by the Respondent that the Domain Name is being used in a generic way would be self-serving. In this respect it asserts that the Respondent provides “hardly any information on the location Gstaad, but mainly information on his business activities on his website”.
5.3 Given this it is claimed that the Respondent’s activities do not fall within the scope of any of the examples of circumstances demonstrating rights or legitimate interest for the purposes of the Policy. Further, it contends that the Respondent is seeking to attract Internet users to his website for commercial gain by deceiving the Internet used “with a confusing domain name that consists of the Complainant’s [trade mark]”. This is said to demonstrate bad faith registration and use.
5.4 In its Response the Respondent contends that it has used the Domain Name after purchase as a geographic term in order to rent out properties owned by the Respondent in Gstaad and to provide a free directory of other businesses and attractions in Gstaad. It refers to the fact that the tourist offices of St Moritz, Lenzerheide-Valbella, or Zermatt, have all failed in proceedings under the Policy in respect of similar “geographic name” cases.
5.5 The Respondent complains that the Complainant has concealed the fact that there was extensive pre- dispute correspondence between the parties in 2007.
5.6 The Response contains a relatively detailed critique of the Complainant’s trade marks by reference to various cases including Gold Coast Tourism Corporation Ltd. v. Digimedia.com L.P., WIPO Case No. D2013‑1733 and Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279. However, in essence it asserts that all the Complainant’s marks are figurative, that the textual element, Gstaad, is merely a word that indicates the geographical origin of the goods and service supplied under that mark and that this should be disregarded when it comes to the relative comparison between the marks relied upon and the Domain Name in this case.
5.7 So far as rights and legitimate interests are concerned the Respondent complains that the Complainant has failed to properly describe how the Domain Name has “long been used” by the Respondent since its registration in 2006. Reference is also made to a trade mark that the Respondent obtained in 2009, which incorporates the text “Saanen My Love”. Saanen is the region in which Gstaad is located and the Respondent claims to have used that mark to advertise sporting and cultural events in that region.
5.8 The Respondent contends that the use of the Domain Name involves the use of a geographically nominative term for purposes related to that geographical location. This is said to provide a right or legitimate interest under the Policy. In this respect the Respondent refers to the decision of Havanna S.A. v. Brendhan Hight, Mdnh Inc, WIPO Case No. D2010-1652, which is said to demonstrate that such a right or legitimate interest in a geographic term can exist even where the domain name is being used for pay-per-click advertising.
5.9 The Respondent also contends that given the intended and actual use of the Domain Name by the Respondent this is not a case where there has been either registration or use in bad faith.
5.10 The Respondent admits to “one error” in his dealings with the Domain Name; i.e., that prior to the commencement of these proceeding the Respondent changed his business address (which he used in connection with a number of different business activities) and failed to update the WhoIs details for the Domain Name. However, the Respondent contends that this is of no consequence given that the Complainant was always aware of the Respondent and that the parties in the litigation “literally pass each other on the street regularly”.
5.11 The Respondent also alleges that the Respondent’s longstanding, open and known use of the Domain Name without action on the part of the Complainant demonstrates that the Respondent’s use of the Domain Name has not disrupted the Complainant’s business.
5.12 The Respondent in his Response refers to the ex parte proceedings brought in Switzerland against the Respondent. He claims that these have been “brought by parties which are not identical to the Complainant in this proceeding”. This appears to be a reference to the fact that both the Complainant and “Einwohnergemeinde Saanen” (i.e., the municipality of Saanen) are plaintiffs in those proceedings. Further, he claims that these ex parte proceedings were “superfluous” given that the Domain Name is locked during proceedings under the Policy.
5.13 The Respondent also complains that although the Complainant sought and obtained a suspension of these proceedings under the Policy to allow for settlement discussions, no settlement offer was then forthcoming from the Complainant.
5.14 The Respondent does not seek ask or a finding of Reverse Domain Name Hijacking in the Response. However, that does appear to have been sought in subsequent correspondence sent on behalf of the Respondent’s lawyer to the Center. This request is addressed in greater detail later on in this decision.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.2 The Panel will address each of these requirements in turn followed by the Respondent’s allegations of reverse domain name hijacking. However, before it does so it needs to address the dispute between the parties as to whether these proceedings should be terminated pursuant to the Complainant’s request and in light of the Swiss proceedings.
A. Termination of the Proceedings
6.3 Paragraph 10 of the Rules enables a Panel to conduct proceedings in “such a manner as it considers appropriate” in accordance with the Policy and the Rules. Paragraph 17(b) of the Rules states as follows:
“If, before the Panel's decision is made, it becomes unnecessary or impossible to continue the administrative proceeding for any reason, the Panel shall terminate the administrative proceeding, unless a Party raises justifiable grounds for objection within a period of time to be determined by the Panel.”
6.4 Further, it seems clear that proceedings were commenced in the Swiss courts by the Complainant after the commencement of the proceedings. Paragraph 18 (a) of the Rules states as follows:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
6.5 On April 26, 2017 the Complainant’s lawyers sent an email to the Center that contained the following statement:
“Thus, Complainant (i) withdraws its UDRP-complaint, (ii) declares that it has no intention to re-file a complaint with the Center regarding the disputed domain name and (ii) requests for the termination of the pending proceeding.”
6.6 The Respondent’s lawyer objected to the Complainant’s request to terminate the proceedings in an email the same day. In that email he contended as follows:
“The Respondent does not consent to termination of this Proceeding. The Panel is empowered to determine whether to proceed on the basis of determination of Reverse Domain Hi-Jacking under UDRP Rule 15(e).
The decision as to whether to permit the Complainant to withdraw at this point is within the powers of the Panel, and not the Center. As noted in [Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349]:
“In the present case, the Respondent has objected to the Complainant’s request for voluntary termination. It is clear from the provisions of the Response, read with the Respondent’s emails of August 6 and 12, 2016 that the Respondent’s objections lie in the fact that the Respondent has been put to the time and expense of preparing a Response to a Complaint which the Respondent considers to be wholly lacking in merit, entitling the Respondent to a finding of RDNH. Thus, terminating the proceedings at this stage would result in the Complainant avoiding consideration of the merits in general and the issue of RDNH in particular, leaving the Respondent in a disadvantaged position. These seem to the Panel to be entirely justifiable grounds for objection to the Complainant’s request.”
As noted in that decision, it is within the Panel’s authority to grant or deny a unilateral request to terminate a proceeding over the Respondent’s objection.
Accordingly, the Respondent requests that the Center proceed, and that the Panel decide the matter of unilateral withdrawal, which authority is solely within the Panel’s discretion.”
6.7 There are two ways in which the Complainant’s email can be read. The first is that it is effectively consenting to the proceedings being dismissed. The second, and perhaps more natural reading of that email, is that the Complainant simply wishes the proceedings to be terminated without any formal finding being made against it.
6.8 If the Complainant is consenting to a formal finding in the Respondent’s favour, there is an analogy here with the position where a respondent in the course of proceedings agrees to a transfer of the domain name. Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) records that in such a situation a panel may order transfer of the domain name on that basis, but this is at the discretion of the panel. The position in such a case was also analysed in some detail in Igor Lognikov v. Web Ventures, Nerdec, Inc. and Charles Edmunds, WIPO Case No. D2009-1684, where the panel (starting at paragraph 5.5 of the decision) stated as follows:
“… This leads on to the second procedural question; i.e. whether in such circumstances the Panel can and should simply order the transfer of these three of the Domain Names to the Complainant.
A number of UDRP panel decisions have considered the issue as to whether a disputed domain name can be transferred to the complainant where a respondent has unilaterally consented to that transfer. The issue was analysed in some detail in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132. In that case the panel identified three different approaches adopted by panelists to justify transfer in those circumstances. They were: (i) to grant the relief requested by the complainant on the grounds of the respondent's consent without reviewing the facts supporting the claim (See Williams-Sonoma, Inc. d/b/a Pottery Barn v. EZ-Port, WIPO Case No. D2000‑0207; SLUMBERLAND FRANCE v. CHADIA ACOHURI, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of Paragraph 4(a) of the Policy are deemed to be made out and thereby reach the conclusion that transfer should be ordered (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; DESOTEC N.V. v. JACOBI CARBONS AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether, on the evidence, the three elements of Paragraph 4(a) of the Policy are satisfied because the respondent's offer to transfer is not an admission of the complainant's rights (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
In the Cartoon Network, supra, decision, the panel declined to follow the line of cases mentioned in (ii) above and refused to accept that a unilateral consent on the part of the Respondent deems the elements of Paragraph 4(a) to be satisfied, reasoning that “there is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy”. It also declined to address the substance of the case as had the panels in the cases mentioned in (iii) above. Instead, it formed the view that the panel had the power to order an immediate transfer under Paragraph 10(a) of the Rules1, without consideration of the Paragraph 4(a) elements, on the basis of genuine unilateral consent on the part of the respondent.
The present Panel agrees with this analysis. It accepts that an offer to transfer may not be an admission of the complainant's rights, but it does not follow that the Panel cannot order transfer where there is that consent. In the Panel’s opinion this is far too narrow a reading of Paragraph 15(a) of the Rules. The powers granted to a panel under Paragraph 10 are broad enough to permit this approach.
However, the fact that a panel may order the transfer of the Domain Name under the powers granted to it under Paragraph 10 of the Rules, does not mean that it must do so. The panel retains a discretion. There may be good reasons why although transfer without consideration of the substance of the case is an option, a panel decides not to follow that route. They include for an example, a positive demand by the complainant for a reasoned decision, or the belief on the part of the panel that there is a broader public interest in the activities of the respondent being made public (as to which see Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909). There may even be cases where a panel considers that notwithstanding the consent, it is so obviously clear that the domain name is not abusive or other circumstances exist that mean that it would be unconscionable to order the transfer in question.”
6.9 For similar reasons, the Panel is of the view that if a complainant unilaterally makes it clear that it does not want the proceedings to continue, a panel can under paragraph 10 of the Rules order that the complaint be dismissed on the basis of that consent alone. However, if a respondent objects to that course of action, that will frequently be a good enough reason for the panel to proceed to issue a full decision. In the same way as a complaint is prima facie entitled to ask for a full decision so that its position is publically vindicated, so is a respondent. This is particularly so where, as here, the respondent has actively sought a finding of reverse domain name hijacking.
6.10 The Panel also agrees with the panel in the Intellect Design Arena Limited casethat where a complainant simply asks for the proceedings to be terminated without a finding against it, paragraph 17 (b) of the Rules is engaged and the Panel similarly has a discretion as to whether to grant that request. However, in such a case a respondent’s objection to termination of the proceedings would be an even more powerful reason to reject the complainant’s request, given that if the proceedings are merely terminated a respondent would not even have the benefit of a formal decision in its favour.
6.11 Given this, the Panel considers that the Respondent’s objection in this case is a good reason for rejecting a request on the part of the Complainant either that the case against the Respondent be formally dismissed or terminated under paragraph 17(b) of the Rules.
6.12 That though is not quite the end of the matter as it still leaves the question of whether the Panel should terminate the proceedings in light of ongoing court proceedings under paragraph 18 of the Rules. The rationale of paragraph 18 of the Rules is somewhat different in that it involves a panel considering whether it is better that that the issues between the parties be left to be determined by the courts regardless of what one or both parties might prefer in this respect.
6.13 As is reflected in paragraph 4.15 of the WIPO Overview 2.0, although the Policy and issues of trade mark infringement significantly overlap, they are not the same thing. Therefore, in many cases it will be quite possible and proper for a panel to proceed to issue a decision in UDRP proceedings even if there are parallel court proceedings. Nevertheless, if there is a common factual dispute in both proceedings, it may be preferable that a panel leaves this matter to the courts, which are likely to be procedurally better equipped to determine that dispute than a panel appointed under the UDRP.
6.14 In the present case, the proceedings in the Swiss courts appear to involve claims of trade mark infringement by reason of the use of the Domain Name. However, it is far from clear what, if any, factual issues are in dispute between the parties. It is for a party who wants proceedings under the UDRP suspended or terminated because of parallel court proceedings to persuade a panel as to why this is necessary, if the parties are not in agreement that this is the right course of action. The Complainant has failed to persuade the Panel that termination would be appropriate in this case. In the circumstances, the Panel will proceed to a substantive decision.
B. Identical or Confusingly Similar
6.15 This is a case where in essence the Respondent contends that the textual elements of the Complainant’s mark can be ignored because it comprises a place name that would be understood as indicating the geographical origin of the goods and service supplied under that mark.
6.16 The Panel notes that where the element of the mark relied upon is merely a geographical place name, a number of panels have been reluctant to find that the domain name and mark are confusingly similar for the purposes of the Policy. Examples, in this respect include Brisbane City Council v. Joyce Russ Advertising Pty Limited, WIPO Case No. D2001-0069 (<brisbane.com>) and Province of Brabant Wallon v. Domain Purchase, NOLDC, Inc., WIPO Case No. D2006-0778 (<brabant-wallon.org>). However, the decisions are not all one way. For an example of where the Complainant succeeded on this issue (even though the complaint otherwise failed) see Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucia.Com Limited, WIPO Case No. D2006-0749 (<andalucia.com>).
6.17 The issues that arise in these geographical domain name and trade mark cases are merely a subset of a more general question of how the Policy should deal with claims based on marks that contain an arguably descriptive element and where the complainant relies upon that element of the mark alone. This issue was discussed at some length by the three person panel in Jobs on the Net Limited, Andrew Middleton v. International New Media Limited, WIPO Case No. D2011-1531, where the mark relied upon was figurative and it was argued that the element of the mark relied upon was incapable of being independently registered as a trade mark.
6.18 As the panel recognised in that case, UDRP panels are naturally wary of a complainant being allowed to rely in UDRP proceedings upon an aspect of a mark that it doubts could have been independently registered. However, it also noted that (a) UDRP panels are not in all cases necessarily equipped to address questions of registrability on the pleadings before them; and (b) the confusing similarity element of the Policy is generally considered to set up a minimal standing requirement and questions of legitimate descriptive use of a term in a domain name are often better addressed under the other elements of the Policy. With this in mind and having considered earlier UDRP case law on this issue the Panel concluded that:
“dismissal of a complaint under the first heading of the Policy on the ground that only a non-distinctive element of a registered trade mark has been taken, should be restricted to those cases where it is clear that the element of the trade mark relied upon is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the mark is registered.”
6.19 Further, where the geographical term at issue has been used and/or registered only in connection with goods or services related to the geographic locale, UDRP panels typically find an absence of trade mark rights. See, e.g., Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273.1 Where, instead, the term has been used and/or registered in relation to other goods and services, UDRP panels are more likely to find that the term may function as a trade mark for purposes of the first element under the Policy. See, e.g., Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 (“Although ‘Zermatt’ is a descriptive term when used in connection with the geographical area itself, and with goods and services that obviously emanate from the resort area of Zermatt, the term is inherently distinctive when used in connection with goods and services that lack a goods-place association to Zermatt.”).
6.20 Therefore, on this occasion the Panel is prepared to assume in the Complainant’s favour that the “Gstaad” elements of the Complainant’s marks are not so completely devoid of distinctive character that they are incapable of distinguishing the goods and services in respect of which they have been registered. An important factor here is that the Complainant’s marks appear to have been registered and used in respect of a wide range of goods and services that extend far further than merely the provision of tourist related information in relation to a geographical region, and cover a wide range of other goods and services. Not only has the Complainant submitted evidence of such use, but the Panel notes that the United States Patent and Trademark Office in the case of the United States trade mark identified appears to have accepted that by reason of such use in the United States the Complainant had demonstrated acquired distinctiveness, without a disclaimer of the geographical term “Gstaad.”
6.21 In the circumstances, the Panel accepts that the Complainant has made out the requirements of the paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.22 The Panel concludes that that the Complainant has failed to demonstrate that the Respondent has no right or legitimate interest in the Domain Name.
6.23 There appears to be no dispute in this case as to how the Domain Name has primarily been used for a number of years; i.e., to promote a chalet rental business in Gstaad, with which the Respondent is associated. It is also undisputed that the Domain Name has also been used to provide information about Gstaad, although there does appear to be a dispute about how significant that use has been.
6.24 The Panel is prepared to accept the Complainant’s claim that the Respondent’s use of the Domain Name to provide general information about Gstaad and its various businesses has been secondary to the Respondent’s chalet rental use. However, ultimately this does not matter. The Panel accepts that a registrant may have a legitimate interest in a domain name if that domain name has been held and used for many years for the purpose of taking advantage of the descriptive nature of the words contained in the domain name.
6.25 Further, the Panel concludes for the reasons addressed in greater detail under the heading “Registered and Used in Bad Faith” later on in this decision, that the Domain Name was not registered and has not been held with the intent of taking unfair advantage of any association with the Domain Name and the Complainant.
6.26 In the circumstances, the Complainant has failed to make out the requirements of the paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.27 There is an unusual feature in this case that makes it somewhat different from a number of other cases involving a domain name that incorporates little more than a geographical term. This is the fact that the Domain Name was until 2006 held and used by the Complainant and was only purchased by the Respondent when the Complainant accidentally failed to renew it.
6.28 It is not impossible to conceive of circumstances, where the re-registration of a geographical domain name previously used by a tourist body might involve registration in bad faith. If, for example, such a domain name had come to be associated with that tourist body and the registrant had opportunistically registered the domain name with the intent to sell it back to the previous registrant or otherwise seek to take unfair advantage of its association with that tourist body, that might well support a finding of bad faith.
6.29 The difficulty for the Complainant is that there is no evidence before the Panel that suggests that this is what actually happened in this case.
6.30 First, the Complainant has provided no evidence as to how the Domain Name was actually used by it prior to its failure to renew the Domain Name. The Complainant has neither claimed nor demonstrated that by reason of its use the Domain Name is one that came to be understood as associated with the Complainant and its activities. Indeed, as far as the Panel can tell, Internet archive searches in respect of the Domain Name would suggest that the Domain Name was used to redirect Internet users to the Complainant’s website operating from the domain name <gdstaad.ch>.
6.31 Second, even if the Complainant is correct when it claims that the Respondent must have known about the Complainant and its marks, it does not follow that the Respondent registered the Domain Name in order to take some form of unfair advantage of those marks. All of the material that the Panel has seen is consistent with the Respondent’s contention that the Domain Name was primarily acquired, and then subsequently used for many years, for the purpose of taking advantage of the fact that it embodies the name of the geographical area where his chalet business is located. Registration and use of a geographical term for such a purpose does not by itself indicate bad faith.
6.32 In the circumstances the Panel has failed to make out the requirements of the paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking
6.33 The Panel has given serious consideration as to whether a finding of reverse domain name hijacking would be appropriate in this case, notwithstanding that the Respondent did not originally call for this in its Response and that this was only raised as an issue when the Complainant requested that these proceedings be terminated. The reasons for this are as follows:
(i) It is always open to a panel to make a finding of reverse domain name hijacking even if that has not been requested by the respondent (see paragraph 4.17 of the WIPO Overview 2.0);
(ii) The Panel was troubled by the fact that the Complainant omitted to provide or even mention its correspondence with the Respondent in early 2007. That material was clearly of relevance to these proceedings in that it set out the Respondent’s first statement as to the reasons why the Domain Name was registered;
(iii) By the time that the Complainant had commenced these proceedings it must have been well aware that it was likely to have serious difficulty in persuading a panel that the registration and use of a domain name comprising a geographical term in manner that sought to take advantage of its geographical associations was illegitimate.
6.34 So far as that third point is concerned, the Panel notes that as early as 2007 the parties’ respective lawyers were engaged in discussion in correspondence regarding previous decisions under the UDRP involving official governmental or tourist body representing a geographical area claiming trade mark rights in the name of the relevant area and in respect of a domain name incorporating that term. There are very few cases where such a claim has succeeded. Perhaps the most well-known of the cases where it did is Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505 (<barcelona.com>). However, the underlying factual basis for that finding is far from clear from the decision in that case and it is notable that the panel in this case formed part of a three person panel that reached a different conclusion in the Andalucia case referred to above. Therefore, it is highly questionable whether if the Barcelona case came before a panel now, it would be decided the same way.2
6.35 Nevertheless, ultimately a majority of the Panel has decided not to make a finding of reverse domain name hijacking against the Complainant. There are two reasons for this. The first is the somewhat unusual factual feature of this case that the Domain Name was previously owned by the Complainant and only registered by the Respondent when the Complainant failed to renew it. The second is that in contrast with many of the cases involving geographical domain names referred to by the Respondent in his response (and in particular Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 and Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007‑1318) the Domain Name has been used to promote a specific business in a location rather than an information portal for that geographical region.3
6.36 These are features of this case that the Complainant contended in its Complaint were significant. Therefore, the Complainant may have erroneously believed that as a result it was reasonable for it to argue that the present case was distinguishable from the many cases where governmental or tourist authorities had failed in UDRP proceedings in relation to a domain name comprising a geographical term.
6.37 That said, the Panel notes that this is now the third decision in which the Complainant has failed in a complaint under the Policy and the panel has considered it necessary to consider whether a finding of reverse domain name hijacking was appropriate. In Gstaad Saanenland Tourismus,NAF Claim Number: FA1506001623885 the panel held that it would not make such a finding as the Complainant “may have over‑estimated the strength of its case”. A majority of the Panel is prepared to give the Complainant the benefit of the doubt (also in light of possible arguments under Swiss law) and to assume that this is also what has happened on this occasion. A subsequent panel faced with a UDRP claim based upon the Complainant’s figurative trade marks in respect of a domain name incorporating the term “Gstaad” used for a domain name in respect of information about, or the activities of a business, in Gstaad, may be far less forgiving.
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
David H. Bernstein
Date: May 19, 2017
1 The Panel believes such an approach also to be broadly consistent with the law in a number of jurisdictions. For example, in the United States in Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617 (4th Cir. 2003) the court refused to transfer the domain name <barcelona.com> because the City of Barcelona could not establish trade mark rights in term BARCELONA alone when used to identify the city as opposed to use for other goods and services.
2 It also is notable, that in the Barcelona case the UDRP decision was subsequently challenged in the US courts (see supra footnote 1), which ultimately refused to require transfer of the domain name to the Complainant.
3 Panelist David H. Bernstein would have found reverse domain name hijacking given that the Domain Name was obviously being used solely to provide information related to Gstaad and to offer chalet rental services to visitors to Gstaad. The Complainant, and its law firm, had to know that the Complaint had no possibility of proceeding in light of those facts and the many UDRP decisions that have reached the same conclusion, including those filed by the Complainant. This is now Complainant’s third loss on these kinds of claims. Further, Panelist Bernstein, like the majority of the Panel, was troubled by the Complainant’s failure to disclose in its Complaint its prior communications with the Respondent, and also by the Complainant’s efforts to stop the Panel from issuing a decision following its filing of a claim in the Swiss courts.