WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucía.Com Limited
Case No. D2006-0749
1. The Parties
The Complainant is Junta de Andalucia, Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A., Malaga, Spain, represented by Landwell, PricewaterhouseCoopers, Sevilla, Spain.
The Respondent is Andalucia.Com Limited, Kingston, United Kingdom of Great Britain and Northern Ireland, represented by Norton Rose, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <andalucia.com> is registered with Total Registrations.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2006. On June 20 and 23, 2006, the Center transmitted by email to Total Registrations a request for registrar verification in connection with the domain name at issue. On June 26, 2006, Total Registrations transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 29, 2006.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced July 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2006. The Response was filed with the Center July 28, 2006.
The Center appointed M. Scott Donahey, Marino Porzio and David Perkins as panelists in this matter on September 14, 2006. 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
A. Complainant’s Facts
Complainant Junta De Andalucia (Complainant) is the governing body of the Autonomous Region of Andalucia. Pursuant to article 137 of the Spanish Constitution, the country of Spain is organized territorially into municipalities, provinces, and Autonomous Regions. Andalucia was recognized as an Autonomous Region by article 1 of Act 6/1981, dated December 30, approving the Statute for the Autonomy of Andalucia.
One of the responsibilities of the autonomous region is the promotion and regulation of tourism. This has been carried out by the Department for Tourism, Commerce & Sport of the Junta de Andalusia since 1982 when the Junta was established. In 1994, this responsibility was outsourced to Turismo Andaluz SEA. (TASA), which is described as a public services company. TASA uses the Junta‘s official website, “www.andalucia.org” created in 1999, and used primarily for the promotion of tourism. Complainant states that the Junta was obliged to use the “.org” registration, because the Respondent had registered the domain name<andalucia.com> in July 1996.
Complainant holds the following registered service marks in Spain:
A mark consisting of the stylised word ANDALUCIA below a badge shaped logo comprising a stylised letter “A” in yellow on a part yellow and part blue background. The Spanish registration dates from June 10, 1991, and covers Classes 6: 12: 14: 16: 18: 24 – 25: 28 – 29: 32 – 35: 37 – 39 and 41 – 42. Complaint, Annex 3.
In addition, Complainant has registered other word marks in Spain incorporating the word “Andalucia”:
CALIDAD DE ANDALUCIA JUNTA DE ANDALUCIA |
32 & 33 |
ALIMENTOS DE ANDALUCIA |
32: 33: 38: 41 |
COYUNTURA ECONOMICA DE ANDALUCIA |
16 |
FORO DEL TURISMO DE ANDALUCIA |
16 |
ALTUR FERIA INTERNACIONAL DE TURISMO ANDALUZ |
41 |
TURISMO ANDALUZ |
16 |
JUNTA DE ANDALUCIA |
1 to 45 |
EL EURO INFORMACION JUNTA DE ANDALUCIA CONSEJERIA DE ECONOMICA Y HACIENDA |
35: 36: 38: 42 |
ITER JUNTA DE ANDALUCIA CONSEJERIA DE MEDIO AMBIENTE |
16: 41 – 42 |
RESERVA NATURAL CONCERTADA JUNTA DE ANDALUCIA |
9: 14: 16: 25: 36: 39: 41 to 43 |
PARQUE ARIURBANO JUNTA DE ANDALUCIA |
9: 14:l 16: 25: 36: 39l 41 – 43 |
MONUMNTO NATURALE JUNTA DE ANDALUCIA |
9: 14:l 16: 25: 36: 39l 41 – 43 |
GRAN ENCICLOPEDIA DE ANDALUCIA JUNTA DE ANDALUCIA |
9: 16: 38: 41 |
A TURISMO DE ANDALUCIA |
6: 12: 14: 16: 18: 24 – 25: 28 – 29: and 32 - 34 |
On March 30, 2004, Complainant filed a Community trademark, comprising a logo and the words JUNTA DE ANDALUCIA in classes 9: 14: 16: 25: 29-36: 38: and 41-45.
Complainant also points out that “Andalucia” is part of the name of institutions in the region which belong to the Junta de Andalucia, including the Andalucian Parliament, the Board of Governors of Andalucia, and the Andalucia Institute for Statistics, to name only a few. “Andalucia” is also part of the name of many public service companies such as Radio Television de Andalucia.
Complainant has spent in excess of Euros 67 million from 2001 through 2004 in the promotion of the region of Andalucia, including the promotion of public and tourist interest events, using such means as television and radio advertisements, posters, meeting with tour operators, and establishing a presence at fairs and international tourist events. Complaint, Annexes 11 and 12. This promotion has continued into 2005 and 2006. Complaint, Annex 12.
Complainant’s motives in promoting tourism are not merely cultural or altruistic, but are the equivalent of those of commercial ventures: the goals include the increase of revenues for Andalucian businesses and thereby achieving a corresponding increase in the tax revenues of Complainant.
B. Respondent’s Facts
Christopher Chaplow is the founder of the Andalucia.Com group of companies and managing director of Andalucia.Com Limited, the Respondent in these proceedings. Mr. Chaplow is a shareholder in Andalucia.Com Ltd, which in turn owns Andalucia Web Solutions Ltd. in the UK and Andalucia.com SL in Spain. Andalucia Web Solutions Ltd. owns AndWebSol SL in Spain, which runs Andalucia Web Solutions. The domain name <andalucia.com> is owned by Andalucia.com Ltd. and Andalucia.com SL pays an annual license fee to make commercial use of the domain name. Affidavit of Christopher John Chaplow (the “ChaplowAffidavit”), Response, Annex 1, at paragraph 5.
The aim of the business enterprise, as Christopher John Chaplow states in the Affidavit (at paragraph 54) was and is “to provide good information that tourists, and later non-Spaniards who have established residence in Andalucia, would find interesting…” Response, Annex 1, at paragraphs 53 to 59.
Gross receipts for Andalucia.com SL in 2004 exceeded Euros 500,000. Gross receipts for AndWebSol SL for March - December 2005 alone were a little less than Euros 600,000, most of which related to the sale of advertising space on the “www.andalucia.com” website. Approximately 300,000 unique visitors read some 1.6 million pages a month on “www.andalucia.com”. Andalucia.com SL and AndWebSol SL employ twelve full-time and two part-time staff and are supported by five journalists who are on a retainer.
Respondent’s business has been recognized by competitors, by tour operators, by the webmaster of the official website for the Comunidad Autonomo de Andalucia, and by the Complainant. Response, Annex 1, at paragraphs 31, 32, 35, and 77.
Respondent contends that at the time that Respondent registered the domain name at issue (April 17, 1996) that Respondent was unaware of Complainant’s mark. Respondent contends that at that time he had three primary purposes for registering the domain name at issue:
(a) the further development of a nascent tourist and information website about Andalucia, previously hosted at “www.tizz.com”;
(b) the use of the domain name at issue to resolve to a website previously hosted at “www.tizz.com” in relation to a business involving photography of Andalucia taken by Mr. Chaplow’s partner; and
(c) the use of the domain name at issue to resolve to a website to be developed by Mr. Chaplow under contract for Andalucia Magazine.
In the summer of 1996 Respondent was using text for Andalucian tourist leaflets on the website to which the domain name at issue resolved. Respondent contacted Turismo Andaluz SA and spoke to the head of press and asked for permission to use copyrighted tourist brochure information on the website. Respondent was informed that there was no objection but that this could not be confirmed in writing. Respondent credited “Turismo de Andaluz” for the text on the website. Response, Annex 1, paragraph 29.
In early 1997 Respondent applied to the Instituto de Formento de Andalucia, a part of the Department of Transport and Industry of Respondent, for a grant to help build its tourism website to which the domain name at issue resolved. The grant was not approved. Response, Annex 1, paragraph 33.
On October 14, 1997, Respondent received an email from the webmaster at “www.caan.es”, the website of the Comunidad Autonimo de Andalucia, the correct political title of the region of Andalucia of which Junta de Andalucia is the governing body. The webmaster requested a link from Complainant’s website to the website at “www.caan.es” and added, “PS – Congratulations on your site”. Response, Annex 1, paragraph 35.
In March 1999, Respondent saw a paid banner on Yahoo inviting the user to visit “Andalucia”. By clicking on the link, Respondent was taken to “www.andalucia.org” where there was an “under construction” holding page. Upon performing a Whois search, Respondent found that Turismo Andaluz SA was the registrant of the domain name <andalucia.org>. This was the first time that Respondent became aware that Turismo Andaluz SA might be interested in setting up a website for the purpose of promoting tourism in Andalucia. Response, Annex 1, paragraphs 37 and 38.
In August 2000, Respondent filed for the mark ANDALUCIA.COM in Spain. On April 16, 2001, Respondent was informed that its application had been suspended because Complainant had objected that the mark was confusingly similar to Complainant’s registered marks, JUNTA DE ANDALUCIA and A ANDALUCIA. This was the first time that Respondent learned of the A ANDALUCIA mark. Response, Annex 1, paragraphs 43-45.
As Respondent’s website was directed at English speakers, Respondent decided to register the trademark ANDALUCIA.COM in the United States and the United Kingdom. On November 30, 2000, Respondent filed for a mark with the United States Patent & Trademark Office (“USPTO”). Due to an administrative error by Respondent’s trademark agents in Madrid, they were forced to refile on October 9, 2003. The mark issued on July 5, 2005. Complainant had filed for a mark with the USPTO on July 23, 2002, but did not object to Respondent’s mark. Response, Annex 1, paragraphs 46 and 48.
On January 19, 2002, Respondent applied for a UK trademark on ANDALUCIA.COM. The mark was granted on July 29, 2002. Response, Annex 1, paragraph 47.
In March 2002, Respondent noticed on the website to which the domain name <andaluciajunta.es> maintained by Complainant a link to “Guias de Hoteles [Translation: “Hotel Guide”] (Inglés)”. By clicking on the link, Respondent was taken to the Accommodation Home Page on the website to which the domain name at issue resolves. This was recorded by a Notary Public. Response, Annex 1, paragraph 50.
On June 14, 2006, Respondent received a copy of the Complaint in the present matter. Until that time, Respondent had no inkling that a dispute existed.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is identical or confusingly similar to marks in which Complainant has rights in that Complainant registered marks well prior to the registration of the domain name at issue, that Respondent has no rights or legitimate interests in respect of the domain name at issue because Respondent knew or should have known of Complainant’s registered marks, and that Respondent has registered and is using the domain name at issue in bad faith since it has no license or other permission of the mark owner to use the mark in a domain name.
B. Respondent
Respondent contends that Complainant has no interest in a registered mark that is confusingly similar to the domain name at issue, in that Complainant’s mark is a word and design mark and that the predominant feature of Complainant’s mark is not the word, but the design, and further that in a geographic mark Complainant must establish secondary meaning as to source and that Complainant has failed to do so. Respondent contends that it has rights and legitimate interests in respect of the domain name at issue in that it has expended resources over the years in the development of the informational website to which the domain name resolves and that Complainant, knowing of Respondent’s website, failed to object for at least five years to Respondent’s use of the domain name. Respondent contends that it did not register the domain name at issue in bad faith, since at the time it registered the domain name it did not know of Complainant’s mark. Respondent contends that it did not use the domain name in bad faith, since it had no idea that Complainant objected to its use of the domain name at issue until it received a copy of the complaint in this matter.
Respondent alleges that the filing of the Complaint was done in bad faith and asks for a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant registered many marks which included the word “Andalucia” as part of a number of words. In addition, Complainant registered a trademark consisting of the stylized word ANDALUSIA below a badge shaped logo comprising a stylized letter “A” in yellow on a part blue and part yellow background on June 10, 1991. Complainant clearly has rights in the mark as registered. But does such a “word and design” registration give the Complainant rights in the geographic indication ANDALUCIA simpliciter?
Complainant’s registered mark may be said to be A ANDALUCIA, which in Spanish would translate into English as “To Andalucia”, a clever play on words, especially when used to promote tourism. Can it be said that the essential element of the registration is the geographical indication ANDALUCIA? If so, can one who has registered a geographic indication as a trademark have trademark rights in that geographic indication without establishing that the geographic indication has acquired secondary meaning identifying the mark owner as the supplier of specific goods or services that are associated with the mark? These are indeed difficult questions.
The Panel has reviewed a number of cases dealing with trademark rights in geographical indications. Among them are: Empresa Municipal Promocion Madrid S.A. v. Easylink Services Corporation, WIPO Case No. D2002-1110 (<madrid.com>; Complainant had trademarks which included the word “Madrid”, but no trademark on “Madrid” standing alone. No confusing similarity found.); Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348 (<rouen.com> and <rouen.net>; Complainant had registered marks which included the word “Rouen” but no mark on “Rouen” standing alone. No confusing similarity found); Puerto Rico Tourism Company v. Virtual Countries, Inc., WIPO Case No. D2002-1129 (<puertorico.com>; Complainant had registered marks which included the words “Puerto Rico”, but no mark on “Puerto Rico” standing alone. No confusing similarity found.); Her Majesty The Queen v. Virtual Countries, Inc., WIPO Case No. D2002-0754 (<newzealand.com>; No registered trademarks. Complainant asserted common law marks. Rights in trademark not found). However because of the name and design mark registered in 1991, the Panel finds that none of these cases are determinative.
The Final Report of the Second WIPO Internet Domain Name Process, issued September 3, 2001, (“Second WIPO Report”) dealt in part with the question of protectability for geographic indications under the UDRP. The Second WIPO Report notes that the existing international legal framework for the prohibition of false and deceptive indications of geographical source and the protection of geographical indications was developed for, and applies to, trade in goods.
In the present case both Complainant and Respondent are using the geographic indication to provide information services pertaining to the geographic region which the term describes. Can this be said to be a trademark use of a term, registered or not, when that term is used in the same manner that one might use a term in a search engine to find information that resides somewhere on the Internet? Even if a term has been registered as a mark, can it really have the status of a mark if it calls to mind not the source of goods or services, but only a geographic location?
Clearly, a geographic indication can acquire secondary meaning and serve as an indication of the source of goods or services. “Amazon” calls to mind not only the river and the geographic region through which it flows, but also the well-known online retailer. In the United States, “Sinai” is not only the geographic region of Egypt bordering Israel, but also designates kosher meats prepared by a certain American company. But could the use of the terms “Amazon” and “Sinai” really be said to be trademark use if the only way in which they are used is to provide information about the geographic regions to which they refer? Isn’t this the informational equivalent of using apple to sell apples?
However, the Panel is faced with a situation where Complainant holds valid service marks issued by the Spanish trademark authorities. Can ANDALUCIA be said to be the dominant feature of those marks? Although the Panel believes it is a close call, the Panel concludes that at least as to the A ANDALUCIA word and design mark, ANDALUCIA is the dominant feature in the mark. Therefore, the Panel finds that the domain name at issue is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
In April 1996, Respondent registered the domain name at issue. At the time that Respondent registered the domain name, Respondent has stated under oath that he was unaware of Complainant’s trademarks.
Since April 1996, Respondent has used the domain name at issue on an information site at which information is furnished concerning the region of Andalucia. Respondent’s use of the domain name for this purpose was obviously open and notorious, as it was accessible by anyone with a computer and Internet access. In the summer of 1996 Respondent contacted Complainant’s tourism department to seek approval for use of copyrighted text from a brochure on Respondent’s website. In early 1997 Respondent applied to another agency of Complainant for a grant to help build Respondent’s tourism website. In October 1997 Respondent received an email from the webmaster of the website for the political body of Andalucia requesting a link from Respondent’s website and congratulating Respondent on Respondent’s website.
In early 1999 Complainant wanted to register the domain name <andalucia.com>, but found that it had been previously registered. Complainant registered the domain name <andalucia.org> instead. In March 1999, Respondent saw a banner add on Yahoo inviting users to visit “Andalucia”. When Respondent clicked on it, Respondent was taken to the website “www.andalucia.org” where an “under construction” holding page was posted.
In November 1999, upon learning that the domain name <andalusia.com> was then for sale, Respondent purchased the domain name for US$800 and has been using it since as gateway pages for search engine optimization.
In August 2000, Respondent filed for the registration of the mark ANDALUCIA.COM. On April 16, 2001, Respondent learned that its application had been suspended because of objection to the mark by Complainant on the grounds that the mark was confusingly similar to marks that Complainant owned, including the A ANDALUCIA word and design mark. This is the first time that Respondent learned that Complainant owned an A ANDALUCIA mark.
During the period 2000-2003, Respondent applied for and registered a word and design mark ANDALUCIA.COM in the United States and in the United Kingdom, since Respondent’s website was aimed at English language speakers. Although Complainant had also filed for a word and design mark on ANDALUCIA with the USPTO, Complainant did not object to Respondent’s filing.
In March 2002, Respondent discovered a link on one of Complainant’s websites that linked to Respondent’s website, and specifically to its listing of hotels in Andalucia.
Respondent did not know that a dispute existed until June 14, 2006, when it received a copy of the Complaint in this matter.
The panel believes that the use of a geographic indication in a domain name is analogous to the use of a generic descriptive term in a domain name. Thus it finds the cases on the use of generic descriptive terms in domain names instructive.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”) sets out the consensus views of WIPO panelists on selected issues. Section 2.2 of the WIPO Overview specifically addresses the question, “Does a respondent automatically have a legitimate interest in a domain name comprised of a generic (dictionary) word(s)?” While the general rule is not necessarily, there is an exception, that is stated thusly: “However: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”
Some cases on this subject are illustrative. In Porto Chico Stores, Inc. v. Otavio Zambon, WIPO Case No. D2000-1270, Complainant sold clothes and cosmetics under the LOVELY GIRL trademark and used the domain name <lovelygirl.com> to resolve to a website at which information about and purchase of Complainant’s products was available. Respondent registered the domain name <lovelygirls.com> which he used to resolve to a website at which was posted a “lovelygirls virtual erotic magazine” which featured pictures of women in various stages of undress. In finding that the Respondent had rights and legitimate interests in respect of the domain name at issue, the Panel stated: “Ownership of [a descriptive generic] mark as a means of identifying the source or particular goods and services does not entitle the owner of the mark to prevent use of those words by others in commerce accurately and descriptively in accordance with their primary meaning in the English language.” See also Gorstew Limited v. Worldwidewebsales.com, WIPO Case No. D2002-0744, and Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005.
The Panel finds that where, as here, a respondent is using a geographic indication to describe his product/business or to profit from the geographic sense of the word without intending to take advantage of complainant’s rights in that word, then the respondent has a legitimate interest in respect of the domain name.
C. Registered and Used in Bad Faith
While it is true that Complainant’s trademark registration predated Respondent’s registration of the domain name at issue by more than four years, Respondent has stated under oath that at the time he registered the domain name at issue he was unaware of Complainant’s trademark. With the exception of a dispute between two parties from the United States, where a trademark registration with the USPTO puts others on constructive notice, Panels have not been willing to find constructive notice in WIPO UDRP cases. WIPO Overview, § 3.4.
Complainant has failed to establish any of the circumstances set out in paragraph 4(b) of the policy that the domain name at issue was registered and is being used in bad faith. Accordingly, the Panel finds that Complainant has failed to satisfy its burden of proof.
D. Reverse Domain Name Hijacking
Respondent has requested a finding of Reverse Domain Name Hijacking, alleging that the complaint in this matter was filed in bad faith. The Panel notes that the Second WIPO Report emphasizes that there exists a “significant divergence of views” regarding the protectability of geographic indications under the UDRP and that such views are “ardently held”. Second WIPO Report, §§ 229 and 237. Given such a divergence of views, the Panel does not believe that a finding of reverse domain name hijacking is appropriate in this area.
7. Decision
For all the foregoing reasons, the Complaint is denied.
M. Scott Donahey Presiding Panelist |
|
Marino Porzio Panelist |
David Perkins Panelist |
Dated: October 13, 2006