The Complainant is Kärnten Werbung Marketing & Innovationsmanagement GmbH of Klagenfurt am Wörthersee, Austria, represented by Höhne, In der Maur & Partner Rechtsanwälte GmbH, Austria.
The Respondent is Istvan Fodor, SC Inform Media SRL of Calea Torontatuhui, Timisoara, Romania, represented by Dr. Michael Krüger Rechtsanwalt GmbH, Austria.
The disputed domain name <kaernten.com> is registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. The Response was filed with the Center on May 20, 2016.
The Center appointed Andrea Mondini as the sole panelist in this matter on May 27, 2016. The Panel finds that it was properly constituted. 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.
The Complainant is the tourism marketing and information hub for the Austrian Federal Province of Kärnten (English: Carinthia).
The Complainant owns, among other, the Austrian trademarks KÄRNTEN (word & design mark AT 144 199) filed on June 3, 1992 and registered on October 8, 1992, for goods and services in 28 classes as well KÄRNTEN CARD (word & design marks AT 170 980 and AT 170 072) both filed on August 12, 1996 and registered on August 7, 1997 respectively June 16, 1997 for goods and services in classes 9, 20, 35 and 36.
The Respondent SC Inform Media SRL is the Romanian subsidiary of the Austrian Russmedia group of companies which provides media and web-portal services. Mr. Istvan Fodor is the CEO of SC Inform Media SRL.
The disputed domain name was registered on September 5, 1996.
The Complainant contends in essence:
- that it used the trademark KÄRNTEN and the domain name <kaernten.ch> for many years for its tourism promotion activities;
- that the disputed domain name is confusingly similar to the abovementioned trademarks which include the element KÄRNTEN;
- that the Respondent is not using the disputed domain name and is not connected in any way to the Complainant;
- that the Respondent registered the disputed domain in bad faith primarily for the purpose of selling, renting or otherwise transferring the disputed domain name or to prevent the Complainant from reflecting its mark in a corresponding domain name.
The Respondent contends in essence:
- that the Complainant does not own a trademark KAERNTEN;
- that "Kaernten" is the name of a Federal Province of Austria and as such cannot be monopolized as a word mark at all. Rather, the Complainant's trademarks are word and design marks;
- that the disputed domain name has been registered on September 5, 1996 by an Austrian subsidiary of Russmedia Holding GmbH and then transferred to SC Inform Media SRL, a Romanian subsidiary of this group with Mr. Fodor as CEO;
- that the Austrian Russmedia Group operates leisure and news web-portals under "www.vienna.at" and "www.voralberg.at" and is planning to operate a further Web-Portal with specific regional content for the Federal Province of Carinthia;
- that the disputed domain name has not been registered in bad faith because the Respondent already operates several web-portals focusing on Austrian Federal Provinces and registered the disputed domain name for the purpose of expanding its existing business activities with regard to Carinthia.
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant has shown that it owns the Austrian trademarks KÄRNTEN (word & design mark AT 144 199) filed on June 3, 1992 and registered on October 8, 1992, for goods and services in 28 classes as well KÄRNTEN CARD (word & design marks AT 170 980 and AT 170 072) both filed on August 12, 1996 and registered on August 7, 1997 respectively June 16, 1997 for goods and services in classes 9, 20, 35 and 36.
The Panel notes that these trademarks consist of the geographic term "Kärnten", plus distinctive design elements. Considering that the design elements appear to contribute to the mark's distinctiveness, it is unclear to the Panel whether such registrations alone would be sufficient to enable the Complainant to establish relevant rights for standing purposes under the UDRP, absent a showing of acquired distinctiveness through use of the relevant mark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, "WIPO Overview 2.0", paragraph 1.1). However, this question may be left open because, as discussed below, the Complainant has not established the other elements required under paragraph 4(a) of the Policy.
The Respondent has shown that the disputed domain name is held by a subsidiary of the Austrian Russmedia group of companies which already operates leisure and news web-portals (such as "www.vienna.at") with content specifically targeted to Austrian regions.
Under these circumstances, the Respondent's contention that it is planning to operate under the disputed domain name a further web-portal with specific regional content for the Federal Province of Carinthia is sufficiently credible for the Panel to find that the Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.
For the same reason, i.e., considering that Respondent has demonstrated that it already operates web‑portals with content specifically targeting Austrian regions and has made credible assertions that it is planning a further portal specific to the Federal Province of Carinthia, the Panel finds that the Complainant failed to demonstrate that the domain name was registered in bad faith.
For the foregoing reasons, the Complaint is denied.
Andrea Mondini
Sole Panelist
Date: June 9, 2016