Stadt Heidelberg v. Media Factory
Case No. D2001-1500
1. The Parties
The Complainant is Stadt Heidelberg represented by the Oberbürgermeisterin (Mayor) Beate Weber, of Heidelberg, Germany. Complainant’s legal representative is: Attorneys at Law (Rechtsanwalte) Tilman Schilling and Marcus A. Grosch, of 68165 Manneheim, Germany.
The Respondent is Media Factory, 2 Rock Pond Court, St. Charles, MO 63376, United States of America. Respondent’s legal representative is: Law Offices of Gary Oberst, P.C. Norwalk, CT 06851, United States of America.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: .
The Registrar with which the domain name is currently registered is REGISTER.COM, 575 8th Avenue – 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
3.1 The Complaint was submitted electronically and in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the “WIPO Center”) on December 28, 2001, and January 4, 2002, respectively.
3.2 On January 7, 2002, the Registrar verified:
(i) That the domain name is registered with it;
(ii) That the current registrant of the domain name is the Respondent;
(iii) That the Policy applies to the registration of the domain name;
(iv) That the domain name is currently in “Active” status;
(v) That the language of the registration agreement is English;
(vi) The Respondent’s Administrative, Billing and Technical Contacts;
(vii) The domain name was created on September 19, 1996.
3.3 There was some contention as to the proper name of the registrant of the domain name and a Notification of Deficiency was issued by WIPO Center on January 10, 2002. An amended Complaint was filed on January 11, 2002, in response to the Notification of Deficiency. On January 16, 2002, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center, the amended Complaint was found to be in compliance with the applicable ICANN Policy, ICANN Rules (“the Rules”) for Uniform Domain Name Dispute Resolution Policy (“the Policy”), and WIPO’s Supplemental Rules. The Panel has checked the file and confirms the WIPO Center’s finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On January 17, 2002, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding by courier and by e-mail to Respondent, the Administrative Contact, the Billing Contact and the Technical Contact;
3.5 The Administrative Proceeding commenced on January 17, 2002. The Response was due on February 6, 2002.
3.6 Further correspondence ensued between WIPO Center, Respondent’s representative and the Registrar concerning the correct identification of Respondent (Media Factory) as the registrant of the domain name.
3.7 A Response was filed on February 6, 2002.
3.8 Panelist Desmond J. Ryan having filed the Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as the Panelist on February 21, 2002.
4. Factual Background
4.1 Complainant is the City of Heidelberg, an ancient and very well-known city in Germany. The City is famous inter alia as a tourist destination and the site of a well-known and prestigious university.
4.2 Respondent’s name, Media Factory, appears to be the trading name of Peter Gutbrod.
4.3 The domain name was created on September 19, 1996 and as of March 14, 2001, Peter Gutbrod was shown as the Administrative, Technical and Billing Contact for the domain name (Complaint Appendix C 9).
4.4 On August 3, 2001, Complainant obtained judgment against Peter Gutbrod enjoining him from further using the domain name (Complaint Appendix C 3 / C 4: City of Heidelberg, represented by the Mayor Beate Weber v Peter Gutbrod. 7. Chamber of the Regional Court of Mannheim).
4.5 On August 5, 2001, Peter Gutbrod wrote on Respondent’s letterhead to his Internet domain name service provider as follows:
“Please delete the Internet domain, registered in my name by Network Solutions, Inc. USA.
A quick processing of this request is appreciated.”
4.6 On August 8, 2001, and again on August 20, 2001, the webhosting company, 9 Net Avenue Deutschland requested the transfer of the domain name to the current registrar, Register.com and the placing of the domain name under the administrative control of the provider. According to the provider, the domain name was registered by its customer, Ms. Rosanne Clark on August 24, 2001 (Response Annex B8).
4.7 The request for transfer of the domain name to Ms. Clark was unsuccessful and the registrant for the domain name remained as Media Factory. According to correspondence addressed to WIPO Center by the Registrar on January 25, 2002, the appropriate registrant transfer forms were not filed, and consequently, Media Factory remains the registrant of the domain name and the respondent to this dispute.
4.8 The Response which was filed named Ms. Clark as Respondent.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar’s current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties’ Contentions
6.1 Complainant’s contentions may be summarised as follows:
(i) The name “Heidelberg” is legally protected and entitled to certain statutory entitlements (unspecified) under Germany law.
(ii) Heidelberg is internationally known and has long standing and settled legitimate interests in its own name.
(iii) The Regional Court of Mannheim in a judgment dated March 8, 1996, has held that the City of Heidelberg is entitled to the German country code domain name .
(iv) Prior panel decisions have : “repeatedly acknowledged that names enjoy legal protection equivalent to trade mark or service mark protection and must be considered as being covered by the UDRP”. Complainant cites WIPO Case D2000-0932, University of Stuttgart v. Domain Search and WIPO Case D2000-0308, University of Oxford v. DR Seagle.
(v) Respondent has no legal rights or legitimate interests in the domain name in the light of the decision of the Regional District Court of Mannheim referred to in paragraph (iii) above.
(vi) Respondent has attempted to transfer the domain name to Ms. Clark in an attempt to defeat the effect of the judgment of the Mannheim Court, and take advantage of a loophole in the German law under which transfer of the domain name to Complainant could not be ordered.
(vii) Respondent is acting in bad faith in collusion with Ms. Clark and the service provider to put the domain name out of reach of the German jurisdiction.
6.2 Complainant produces no evidence of use by it of the name “Heidelberg” as a trade mark or service mark.
6.3 Respondent’s contentions may be summarised as follows:
(i) The domain name is not identical with Complainant’s name, since it includes the domain designator “.net”.
(ii) Complainant has failed to show that “Heidelberg” is a trade mark or a service mark in which Complainant has rights. Complainant has failed to specify its statutory rights and entitlements under German law and the cases cited by Respondent do not support the proposition that “names enjoy legal protection equivalent to trade mark or service mark protection”.
(iii) Geographical names are not protected as though they were a trade mark or a service mark. Respondent cites WIPO cases D2001-0069, Brisbane City Council v. Joyce Russ Advertising Pty Ltd, and D2001-0002, Port of Helsinki v. Paragon International Projects Ltd.
(iv) Respondent was using the domain name before there was any notice to it of this dispute.
(v) Complainant has failed to produce any evidence that the domain name was registered and is being used in bad faith. All of the events cited by Complainant in support of this contention occurred after Respondent ceased to be the owner of the domain name.
(vi) Complainant is guilty of reverse domain name hijacking. Complainant’s demands against Ms. Clark and accusations of conspiracy and collusion are unfounded, irresponsible and slanderous. Respondent cites WIPO Case D2000-1151, Goldline International Inc, v. Goldline, where the panel (itself citing WIPO Case No. D2000-0993, Smart Design LLC v. Hughes) held that: “Bad faith. . encompass both malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate business interests”.
7. Discussion and Findings
Identical or Confusingly Similar Trade Mark
7.1 The domain name is identical to Complainant’s name save for the addition of the domain designator “.net”. The question of identity or confusing similarity is therefore not in issue. The question is whether Complainant’s name is a trade mark or service mark in which Complainant has rights.
7.2 There have been cases in which place names either alone, or in combination with other identifying elements, have been held to constitute trade marks or service marks (see for example WIPO Case D2000-1217, Skipton Building Society v. Peter Colman, WIPO Case D2001-0001, City of Hamina v. Paragon International Projects Ltd, WIPO Case D2001-0932, Sydney Markets Limited v. Nick Rakis, along with several others). None of those cases stands for the proposition that a geographical name per se can be assimilated to a trade mark or a service mark. Each of those cases rested upon a showing that by virtue of the activities carried on by the Complainant, the geographical name either with, or without additional matter, had come to denote the goods or service of Complainant, and had acquired the character of a trade mark. That does not appear to be the case here.
7.3 In the opinion of the Panel, it is clear from the Policy itself and from the Report of the First WIPO Domain Name Process, the Report of the Second WIPO Domain Name Process and previous Panel decisions, that the provisions of the Policy do not extend to the misappropriation of geographical names per se.
7.3.1 The First Report at paragraph 167, states that: “The second limitation would define abusive registration by reference only to trade marks and service marks, thus, registrations which violate trade names, geographical indications or abuse of personality right, would not be considered to fall within the definition of registration for the purpose of the administrative procedure”.
7.3.2 The Second Report accepted as its starting point that geographical names per se were not within the scope of the Policy as it stands. That Report states, in the second paragraph of the Executive Summary: “The Second WIPO Process concerns a range of identifiers other than trade marks and is directed at examining the bad faith and misleading registration and use of those identifiers as domain names. These other identifiers, which form the basis of the naming systems used the real or physical world, are:
– Geographical identifiers, such as indications of geographical source used on goods, geographical indications and other geographical terms”.
7.3.3 The many decisions of previous panels, which have adopted the above principles in deciding that the abusive registration of a place name per se does not fall within the Policy, include cases such as WIPO Case D2001-0069, Brisbane City Council v. Joyce Russ Advertising Pty Ltd, WIPO Case D2001-0047, Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case D2001-0348, Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel and the cases previously cited.
7.4 Complainant has adduced no evidence to show that its name has acquired distinctiveness as a trade mark in respect of any goods or service which it may offer. The Panel therefore cannot conclude that Complainant has rights in its name as a trade mark or service mark.
Rights and Legitimate Interests
7.5 The Panel having concluded the Complaint fails under paragraph 4(a)(i) of the Policy, it is unnecessary to consider whether Respondent has legitimate rights or interests in the domain name, except in the context of Respondent’s request for a declaration under Rule 15(e). Were it necessary to do so, this question would be complicated by the peculiar facts surrounding the present ownership of the domain name.
Bad Faith Use and Registration
7.6 It is likewise unnecessary for the Panel to consider the question of bad faith. Once again however, having regard to the peculiar circumstances which appear to surround the acquisition of the domain name by Ms. Clark, it may have been necessary to consider questions as to the bona fides of her acquisition of the domain name had she been the respondent.
Reverse Domain Name Hijacking
7.7 Respondent has sought a finding of reverse domain name hijacking against Complainant. The Panel can find nothing in the record to support such a finding.
7.8 True it is that the Complainant has failed. That failure has been due to the fact that Complainant has not established, in this procedure, that it has trade mark rights in its name. This is an area which raises complex issues under the Policy, and which has been the subject of a number of panel decisions which could, at least at first sight, be argued to support Complainant’s claim. The Panel does not therefore consider Complainant’s action in bringing the Complainant in the face of the limitations contained in the Policy to be an abuse of process.
As to whether the Respondent has rights or legitimate interests, and whether or not there has been registration and use in bad faith; at the time the Complaint was filed, Complainant believed on reasonable grounds that the domain name was registered to Ms. Clark. Having regard to the circumstances of the injunction granted by the German Court against Respondent, Media Factory, and the attempted transfer of the domain name to Ms. Clark, it was not unreasonable for Complainant to question the bona fides of the transfer and any relationship which might exist between Complainant and Ms. Clark.
8.1 Complainant having failed to satisfy the requirements of paragraph 4(a)(i) of the Policy, the Complaint is dismissed.
8.2 Respondent’s request for a finding of reverse domain name hijacking is refused.