WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Land Sachsen-Anhalt v. Skander Bouhaouala

Case No. D2002-0273

Complainant is Land Sachsen-Anhalt, a federal state of Germany (known in English as Saxony-Anhalt), represented by Rechtsanwaelte Dr. Appelhagen and Rechtsanwalt Jan Marc Ihlau of the Ministerium des Innern des Landes Sachsen-Anhalt, Halberstaedter Strasse 40a, D-39112 Magdeburg, Germany.

According to the WHOIS data connected to the registration of this domain name, the Respondent is Skander Bouhaouala, an individual located at Rue Ali Zlitini, Montazah el Manar A6, 2092 El Manar 2 Tunis, Tunisia.

The domain name at issue is <sachsen-anhalt.com> (the "Domain Name"). The registrar is Computer Services Langenbach GmbH doing business as Joker.com, Rathausufer 16, D-40213 Duesseldorf, Germany.

The Complainant initiated this proceeding by filing a Complaint by email with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 21, 2002. On March 26, 2002, the Center received a hard copy of the Complaint. On March 27, 2002, the Center transmitted via email to Joker.com a request for registrar verification in connection with this case. On March 27, 2002, Joker.com transmitted via email, to the Center, Joker.com’s Verification Response, confirming that the Respondent is listed as the registrant. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent Respondent formal notice of the commencement of this proceeding on April 4, 2002, via post/courier and e-mail. The Center advised that the Response was due by April 24, 2002.

After receiving the Complainant’s initial email with the service copy of the Complaint, the Respondent emailed the Center on March 28, 2002. Respondent stated that "I do not understand anything to this story" and asked that a copy of the Complaint be sent to him in French. The Center responded on April 2, 2002, and, citing Rule 11, informed Respondent that the proceedings would continue in English, as the registration agreement is in English and German.

The named Respondent thereafter informed the Center (in two additional emails, both in French) that he was not the registrant of this Domain Name: "I am sorry to announce you that I know nothing of this server and domain story. I think that this is a mistake, or that someone has used my identity to use this domain." No formal Response was submitted by the deadline, either by the Respondent or by any other party (including the actual registrant, who may have received the email notice sent to the <postmaster@sachsen-anhalt.com> email address). Having received no Response, the Center issued a Notification of Respondent Default on April 26, 2002.

On June 3, 2002, after clearing for potential conflicts, the Center appointed David H. Bernstein as the sole panelist in this matter.

As noted above, Complainant is Land Sachsen-Anhalt, a federal state in Germany. Complainant has not submitted any evidence that it owns trademark registrations in the Sachsen-Anhalt name, nor has it alleged any common law trademark rights. Instead, citing § 12 of the German Civil Code, Complainant states that it has "statutory rights to use the domain name ‘sachsen-anhalt.com.’" Complainant did not submit a copy of the cited statute to the Panel.

Because Respondent has defaulted, scant evidence is available about the Respondent. As far as the Panel can determine, someone (but apparently not the named Respondent) registered the Domain Name in Respondent’s name on November 9, 2001. At the time the Complaint was filed, the Domain Name displayed a welcome page which stated, in German, English, French and Spanish, that it was not the official website of the state of Sachsen-Anhalt, and that "Visitors under 18 years should leave this Website!" Two links were provided – one to the "official Website of the state," and a second (only for visitors 18 years of age and older) which included, among other images, a naked woman.

The totality of the factual and legal grounds of the Complaint is reproduced below:

"The domain name is identical to the corresponding name of the Complainant, internationally known as the German federal state of Saxony-Anhalt (in german: Sachsen-Anhalt). The Complainant has long-standing statutory rights to use the domain name "sachsen-anhalt.com". Names of Countries, States and Cities enjoy a legal protection equivalent to trademark or servicemark in many jurisdictions and are considered as being covered by the UDRP, cf. WIPO Case No. D2000-1767: <unistuttgart.com>, WIPO Case D200-0308: <oxford-university.com> and WIPO Case D2000-0505: <barcelona.com>.

"The Respondent has no rights or legitimate interests in respect of the domain name ‘sachsen-anhalt.com’. Under german law, especially § 12 of the German civil code (BGB), no party other than the Complainant has a legitimate right to use the domain name ‘sachsen-anhalt.com’. Therefore the name cannot be used by any other party than the Complainant.

"The domain name has been registered and is being used in bad faith. The Respondent was obviously aware of the existence of the Complainant and that the domain name ‘sachsen-anhalt.com’ could not be used by anyone except for the Complainant under german law. The Respondent knew that the use of the Domain name for his website would attract people looking for the official site of the Complainant and thus would mislead and deceive users on the Internet and that this would be able to disrupt or otherwise harm the reputation of the Complainant. The only possible explanation for the Respondent’s selection of the domain name is that the registration was primarily for the purpose of attracting users to its website by creating a likelihood of confusion with the Complainant’s name."

As noted above, Respondent (or the real registrant, whoever it is) has defaulted.

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") have been satisfied:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and,

(iii) the Domain Name has been registered and used in bad faith.

Respondent’s conduct is obviously in bad faith. The real respondent-in-interest has apparently registered this Domain Name using false contact information, implicating an actual person (though one who states that he is unrelated to this Domain Name), and has used the name of this German state in a Domain Name that appears to have pointed to adult content. Both of these types of conduct have long been recognized as paradigmatic bad faith. E.g., Home Director, Inc. v. HomeDirector, WIPO Case No. D2000-0111 (April 11, 2000); Bass Hotels & Resorts, Inc. v. Rodgerall, WIPO Case No. D2000-0568 (August 7, 2000). Moreover, given the Respondent’s default, there is no evidence in the record to support a showing that the Respondent has a legitimate interest in the Domain Name. Id. (given complainant’s prima facie showing that respondent lacks a legitimate interest, the shifting burden of production for the second factor under the Policy, and respondent’s failure to respond, panel found that complainant satisfied the legitimate interest factor of the Policy).

Nevertheless, bad faith and an absence of a legitimate interest are not alone enough to justify transfer under the Policy. A complainant must also show that it owns trademark rights that are being cybersquatted. E-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 5, 2001). It is on this first, threshold factor that the Complainant has failed to carry its burden.

Complainant’s blanket assertion that "Names of Countries, States and Cities . . . are considered as being covered by the UDRP" is not correct. Although there have been a few such cases, most are distinguishable from the facts of this case. In any event, as discussed below, the consensus among Panels is moving the other way.

In many of the so-called geographic indicator cases, including two of the three on which Complainant relies, WIPO Case No. D2000-1767 (<unistuttgart.com>) and WIPO Case No. D2000-0308 (<oxford-university.com>), the domain name was not the geographic indicator itself but rather a trademark that included, as part of the mark, a geographic term (in these two cases, the name of a university). In such cases, it is the totality of the mark that is being protected, and not merely the name of the country, city, state or region. See also Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC, WIPO Case No. D2000-0629 (September 18, 2000) (<parmaham.com>); WIPO Case No. D2000-0638 (<manchesterairport.com>); WIPO Case No. D2000-1218 (<wemblystadiumonline.com>); WIPO Case No. D2000-1224 (<sydneyoperahouse.net>); WIPO Case No. D2001-0932 (<sydneymarkets.com>).

In this case, in contrast, the domain name is the geographic indicator itself. In such cases, most panels have denied complaints because of the absence of any trademark rights. Port of Helsinki vs. Paragon International Projects Ltd., WIPO Case No. D2001-0002 (February 12, 2001) (refusing to transfer <portofhelsinki.com> because geographic indicators are not per se trademarks, and Complainant failed to show any registered or common law trademark rights); Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047 (May 7, 2001) (<brisbanecity.com>); Teollisuuden Voima OY v Vastamäki, WIPO Case No. D2001-0321 (May 4, 2001) (<olkiluoto.com/.net>). Significantly, at least one other panel has reached this same decision in a case involving a German geographic indicator. Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500 (March 6, 2002) (denying transfer of <heidelberg.net> because complainant failed to show trademark rights in city name Heidelberg).

As other panels have noted, e.g., WIPO Case No. D2001-0047 (<brisbanecity.com>), this conclusion is further supported by the discussion on "Geographical Identifiers" in "The Recognition of Rights and the Use of Names in the Internet Domain Name System," Report of the Second WIPO Internet Domain Name Process ("Report"). The Report notes that the "existing legal framework . . . was developed for, and applies to, trade in goods" (¶ 240), and declines to extend protection to pure geographic indicators. The Report also emphasizes the difficulty in integrating several different, and potentially conflicting, systems used nationally to protect geographical indications. The Report’s reluctance to include geographic indicators within the scope of the UDRP reinforces the conclusion that geographic indicators, unless they also serve as trademarks, are not per se covered under the UDRP.

Indeed, in the few cases where trademark rights have been found in a geographic name, it has been because the complainant was able to show actually trademark rights. For example, the complainant in Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 (August 17, 2000) (<stmoritz.com>), had registered "St. Moritz" as a trademark in 27 countries, and the domain name was thus found to be identical to a trademark in which the complainant had rights (although the complaint was denied because respondent had a legitimate interest and there was no showing of bad faith). Similarly, in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505 (August 4, 2000) (<barcelona.com>), the third case on which Complainant relies, the complainant was the owner of more than 1,000 trademarks in which the "distinctive character" was found to be the term "Barcelona." See alsoSkipton Building Society v. Colman, WIPO Case No. D2000-1217 (December 1, 2000) (<skipton.com>) (finding trademark rights because, despite fact that Skipton is a geographic indicator, it also is a registered trademark for Complainant building society); Lapponia Jewelry Oy vs Rautelin Oy, Case No D2000-1728 (January 22, 2001) (<lapponia.com>) (notwithstanding Respondent’s assertion that Lapponia is a common term for Lapland which is the area located in the northern parts of Finland, Sweden, Norway and Russia, Complainant’s trademark registrations were sufficient proof of its trademark rights); City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001 (March 12, 2001) (<portofhamina.com>) (finding trademark rights because Port of Hamina was used as mark for shipping and port-related services, but denying transfer because Respondent had legitimate interest and did not register and use in bad faith), Government of Canada v. David Bedford a.k.a. DomainBaron.com, WIPO Case No. D2001-0470 (June 30, 2001) (canadacouncil.com, etc.) (finding trademark rights in 31 of 32 domain names under the Canadian Trademarks Act, although the Complainant provided services of a non-trading character, and excluding one domain name because Complainant had not used the alleged trademark since 1982).

In contrast to the facts in those cases, Complainant in this case submits no evidence that it has registered Sachsen-Anhalt as a trademark, nor has it submitted any evidence that it has established any common law trademark rights (for example, by offering or selling goods or services under the Sachsen-Anhalt mark in a country in which such conduct would give rise to common law rights). Instead, it relies only on the vague assertion that it enjoys a "long-standing statutory [right] to use the domain name ‘sachsen-anhalt.com.’" That assertion, without more, is insufficient to prove rights in Sachsen-Anhalt as a trademark, and thus the Panel is compelled to deny the Complaint.

Because Complainant has failed to prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Panel declines to order transfer of the Domain Name.