WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

eThekwini Municipality (formerly the Durban Metropolitan Council) v Domain Strategy Inc

Case No. D2002-0204

The Complainant is eThekwini Municipality (formerly the Durban Metropolitan Council) of PO Box 5588, Durban 4000, the Republic of South Africa.

The Respondent is Domain Strategy Inc of 959 Route 108, Bury, Quebec, Canada.

The domain name in dispute is <durbanexperience.com> and is registered with Dotster Inc., of 11807 N.E. 99^th St., Suite 100, Vancouver, WA 98682, U.S.A.

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 ("the Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also adopted by ICANN on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2002 (by email) and on March 7, 2002 (in hardcopy). Following verification of the registration of the domain name and other details with the Registrar (Dotster Inc) on March 7, 2002, the Center completed its compliance checklist on March 11, 2002, and then notified the Respondent of the Complaint and the commencement of administrative proceedings, together with a copy of the Complaint, on the same day. This was done in accordance with paragraph 2(a) of the Rules by email, facsimile communication and post/courier, addressed to the domain name registrant, administrative, and technical contact, (Richard Mandanice of Domain Strategy Inc). In accordance with the Rules and Supplementary Rules, the Respondent was given until March 31, 2002, in which to file a Response.

3.3 On April 3, 2002, the Center issued a Notification of Respondent Default to the Respondent by email and post/courier, stating that it had received no Response within the specified time, and that it would now proceed to the appointment of an Administrative Panel.

3.5 On April 9, 2002, the parties were notified of the appointment of the administrative panel to be composed of Staniforth Ricketson (as sole member) and the projected decision date of April 23, 2002.

3.6 In light of the above, the Panel finds that:

- The Complaint was filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules.

- The Respondent was properly notified of the Complaint, in accordance with paragraph 2 of the Rules.

- The Panel was correctly constituted.

3.7 No communication has been received from the Respondent at any time during these proceedings, although the Panel would have been prepared to receive and consider such a communication up to the date of finalization of the decision. In the absence of any response by the Respondent, the Panel now proceeds to determine the dispute on the basis of the Complaint under paragraph 5(e) of the Rules.

4.1 The Complainant is the local government of the City of Durban, located in the Province of KwaZulu-Natal in the Republic of South Africa. It is asserted that it has used the mark "Durban Experience" since 1985, when it held an internationally marketed exhibition of the City of Durban that was attended by thousands of South Africans and tourists. A central feature of this exhibition was an audiovisual presentation called the "Durban Experience" (Complaint, par 2.2.1). It is asserted further that, following the "overwhelming success" of the exhibition, the Complainant continued to use the "keynote ‘Durban Experience’ presentation as a central means of marketing the City of Durban (Complaint, par 2.2.2). No detail, however, is given of the way in which this "marketing" was carried out in this post-Exhibition period.

4.2 The Complainant then states that in 1994 it launched a website that had, and still has, as its central theme the "Durban Experience" (Complaint, par 2.2.3). Various newspaper items relating to the initial launch of the website are contained in annexure "C" to the Complaint. It is stated that the words "Durban Experience" were used as a central theme on the website, although the actual web address was http://www.dbn.org. There is a further reference to archival material relating to the website going back as far as 1996 that is contained at http://web.archive.org/web/*/http://www.durbanexperience.com.

4.3 The Complaint states further at par 2.2.4 that the Complainant reserved a number of domain names in 1999, including <durbanexperience.com> on August 13, 1999. It is stated that its reason for reserving the domain was to extend "its longstanding marketing campaign of the City of Durban through the catchphrase ‘Durban Experience’, which has become synonymous with visits to the City. It is stated further that the domain name was renewed in 2000, but, for various reasons, was not renewed when the registration lapsed on October 31, 2001 (Complaint, para 2.2.6). It was then discovered that another party – the Respondent – had been registered as the owner of the domain name (Complaint, par 2.2.8) and that subsequently the domain name had been diverted by the Respondent to the URL http://www.tinawebcam.com, a site offering access to a live camera in New York City showing pictures of a teenage girl in various states of undress (Complaint, para 2.2.9).

4.4 Correspondence then ensued between the parties, leading to the present Complaint.

The Complainant seeks transfer to it of the disputed domain name <durbanexperience.com>. In support of such a contention, it is necessary for a Complainant under the UDRP to address each of the elements described in paragraph 4(a) of the Policy. In substance, however, the Complainant’s submissions on these points are as follows.

- With respect to the elements described in paragraph 4(a)(i), the Complainant makes no specific submissions with respect to the question of whether the domain name is identical or confusingly similar to a trade mark in which it has rights, assuming, perhaps, that this is unnecessary because of the identity between the two. Its submissions under this head are rather directed to the question of whether it has "rights" in a trade mark in the first place. In this regard, it contends that the UDRP does not exclude unregistered trade marks and notes that these are recognized in many jurisdictions, including those of the parties to the present proceeding, namely South Africa (Complainant) and Canada (Respondent). It goes on to argue (Complaint, pars 2.3.4) that the Complainant’s use of the mark "Durban Experience" in the present case falls within the ambit of an unregistered trade mark, namely use in relation to goods or services for the purposes of distinguishing them from the same kinds of goods or services connected in the course of trade with any other person (citing here South African law). It is asserted that the "use of the mark ‘Durban Experience’ in relation to the experiences that await tourists, and indeed residents, in the City of Durban clearly distinguished the variety of ‘services, amenities and unique goods’ that are particular to Durban, as a city, from goods or services offered by any other city" (Complaint, par 2.3.3). There is a further assertion in para 2.3.4 that the domain name had become synonymous with the Complainant’s trade mark through its use by the Complainant for over 2 years and has its "own significant goodwill attached to it".

- With respect to the elements described in para 4(a)(ii) and (iii), the Complainant deals with these together. In essence, its arguments as to lack of any rights or legitimate interests of the Respondent under para 4(a)(ii) appear to turn on what the Complainant asserts is the Respondent’s bad faith in registering the domain name once it fell available following the Complainant’s failure to renew. With respect to the element described in paragraph 4(a)(iii), the Complainant submits that the Respondent has registered and used the domain names in bad faith, and refers to correspondence between the parties in which the Respondent has offered to sell the domain name back to the Complainant, first for the sum of $1,000 and then for $700 (Complaint, para 3.2). The Complainant points also to the damage to its goodwill that has flowed from the Respondent’s registration of the domain name, and likens the Respondent’s behavior to that of a hijacker or kidnapper (Complaint, paras 3.3.1-3.3.2). It refers also to evidence of other registrations by the Respondent of recently expired domain names which it has redirected to pornographic sites, suggesting that these may point to a pattern of behavior on the part of the Respondent that consists of "an intention to acquire domain names in which it has no legitimate interest but rather the sole aim, to profit from the embarrassment of legitimate trademark holders who have, through administrative oversights, failed to timeously renew their domain name registrations" (Complaint, par 3.3.4).

As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panel’s attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements. Each of these must be shown in turn.

On the face of the Complaint as filed, the Complainant has not satisfied the first part of this requirement, namely that it has "rights in a trade or service mark". The Panel accepts the Complainant’s submission that the UDRP is not confined to registered marks, and that it will suffice for a Complainant to point to rights that it has in an unregistered trade mark: see further Brisbane City Council v. Warren Bolton Consulting Pty Ltd , WIPO Case No D2001-0047. Nonetheless, it is still incumbent on a Complainant in such a case to show that its unregistered trade mark has been used as a trade mark with respect to particular goods and services, so as to distinguish these from the goods or services of other traders, and to adduce evidence of this usage. These requirements are clearly part of both the Canadian and South African laws that would apply to the respective parties in a domestic setting, and are consistent with the way in which the conception of trade mark protection is understood in most jurisdictions and is to be applied under the UDRP. Use as a trade mark is clearly more difficult to establish where the alleged trade mark is a geographical name, such as the name of a city or a region. Thus, in a number of decisions, Panels have refused complaints where the name in question was geographical, and there was little or no evidence that it had been used as a trade mark. A good example is the Brisbane City case already cited; others are Kur- und Verkehrsverein St Moritz v. StMoritz.com, WIPO Case No. D2000-0617; Port of Helsinki v. Paragon International Projects Ltd WIPO Case No. D2001-0002; Stadt Heidelberg v. Media Factory WIPO Case No. D2001-1500, which may be compared to Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc WIPO Case No. D2000-0505 where the city name of Barcelona had been registered in a series of trade marks for specific activities, and City of Hamina v. Paragon International Projects Ltd WIPO Case No. D2001-0001 where the Panel held that the evidence showed that "Port of Hanima" had been used as a trade mark.

The present case differs somewhat from those cited above, in that the alleged trade mark is not just a city name ("Durban"), but is used as part of the phrase "Durban Experience". Nonetheless, the annexures to the Complaint fall short of showing that this has been used as a trade mark rather than just as a means of referring to the city in general. Thus:

- the initial audiovisual exhibition in 1985 appeared to be part of a larger publicity campaign for the city as a whole and was of relatively short duration

- it is stated that the words "Durban Experience" were used as a central part of the marketing of the city in the years following this, but no evidence of this marketing campaign is provided

- there are generalized claims made that the words "Durban Experience" were used in relation to services and goods coming from the city, but no detail is provided here of particular usages

- the archived webpage materials at http://web.archive.org/web/*/http://www.durbanexperience.com indicate that the name "Durban Experience" has been used widely in the context of online promotion of the City of Durban, but that this has not been in relation to any particular goods or services offered by the Complainant. Thus, the various headings on the webpage refer to such matters as "About Durban", "Art and Culture", "Economy", "Business Directory", "Tourism", "Sport" and "Outdoors", but these seem intended simply to convey information concerning these activities within the City of Durban and do not refer to any particular good or service provided specifically by the Complainant which it is seeking to distinguish from goods or services offered by others.

- it is not otherwise stated in the Complaint what services and goods the Complainant provides, other than those of a local government of the City of Durban, located in the Province of KwaZulu-Natal

- the statement that the domain name <durbanexperience.com> generated a goodwill during the two years of its registration by the Complainant means little, unless it can be shown that this constituted the use of a trade mark in relation to particular goods or services.

Accordingly, on the evidence presented by the Complainant, the Panel is not satisfied that the words "Durban Experience" were used in any other way than simply to refer to, and promote, the City of Durban as a particular location. As a number of previous Panels have noted, the purpose of the UDRP is to prevent the bad faith registration of domain names that are identical or confusingly similar to trade marks. This is a limited purpose that does not presently cover the protection of geographical names, however desirable this may be: see further WIPO Case No. D2001-0002 <portofhelsinki.com> and WIPO Case No. D2001-0002 <portofhamina.com>. Of these two cases, the Panel in the Brisbane City case (WIPO Case No. D2001-0047) stated:

"In both of the above two cases, the Panel was of the view that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right to the name of that area. This Administrative Panel agrees with that view. In both of the above two cases, the Panel did recognize that, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trademark right in the name of that area. Again, this Administrative Panel agrees with that view. Thus, the important issue in a case, such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade."

In the <portofhelsinki.com> case, the Panel pointed to the lack of market research or similar evidence on the question of trademark usage; by contrast, there was sufficient evidence of this kind in the <portofhamina.com> case to establish that "Port of Hamina" was a trade mark in which the Complainant had rights (the Complainant’s case there failed on other grounds). In the Brisbane City case, however, there was insufficient evidence of trade mark use by the Complainant to distinguish the goods or services of the Complainant from those of other traders. Indeed, in that case, the Panel noted that there were likely to be many traders providing goods or services in or relating to the City of Brisbane who would have a bona fide interest in using those words in relation to those goods or services.

The present Panel agrees with the principles outlined in the above decisions, and is not satisfied here that the words "Durban Experience" have been used by the Complainant in relation to particular goods or services so as to give it rights in an unregistered trade mark for the purposes of paragraph 4(a)(i). While the conduct of the Respondent in registering the domain name immediately after the previous registration of the Complainant lapsed may be described as opportunistic and may well lead to undesirable associations with the Complainant when the domain name is linked to inappropriate websites, this is not conduct that is within the scope of the UDRP as presently formulated.

Given the conclusion in par 6.1, it is unnecessary for the Panel to determine whether the Respondent has rights or legitimate interests in the domain name, as required by paragraph 4(a)(ii) of the Policy.

In view of the finding under par 6.1 above, it is unnecessary for the Panel to make any findings in relation to whether the registration and use of the domain name was done in bad faith, as required in paragraph 4(a)(iii) of the Policy.

The Panel finds that the Complainant has not established its case with respect to each of the elements stated in paragraph 4(a) of the Policy in relation to the domain name that is the subject of this Complaint.

The Panel accordingly denies the request of the Complainant that the Registrar, Dotster Inc, be required to transfer to the Complainant the domain name <durbanexperience.com>.