Generic Top Level Domain Name (gTLD) Decisions

The Complainant Landeshauptstadt Muenchen, a municipality with its principal place of business in Munich, Germany. The Complainant is represented by Mr. Florian Baier, of Muenchen, Germany.

The Respondent is Pro Region Slovakia of Tatranska Lomnica, Slovak Republic. The Respondent is represented by Mr. Ondrej Pastirik.

The domain name at issue is <muenchen.biz>. The domain name is registered with eNOM, Inc. ("The Registrar").

The Complaint was received on April 27, 2002, (email) and May 16, 2002, (hard copy), by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center"). The Complaint was made pursuant to the Start-up Trademark Opposition Policy for <.biz> adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP") and the Rules under that Policy ("the STOP Rules"). An amendment to the Complaint was filed on May 18, 2002, (email) and May 23, 2002 (hard copy).

The STOP is incorporated into the Respondent’s registration agreement with the Registrar. Respondent is obliged to submit to and participate in a mandatory administrative proceeding in the event of a Complaint concerning the domain name registered.

Having verified that Complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center on May 22, 2002, transmitted by courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was advised that any Response should be communicated, in accordance with the STOP Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on June 5, 2002, (email) and June 11, 2002 (hard copy).

The Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The STOP requires that Complaint be determined by a sole Panelist.

The Honorable Sir Ian Barker QC advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the STOP Rules and the WIPO Supplemental STOP Rules.

On June 17, 2002, the Center forwarded to the Panel by courier the relevant submissions and the record.

The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

The language of the administrative proceeding is English. The Complainant has paid the necessary fees to the Center. The Ticket Number assigned by the Registry operator under the STOP Rules has been confirmed.

The Complainant is the municipality of Muenchen, the capital city of Bavaria, Germany. Like many municipalities worldwide, it operates a variety of utility infrastructures as well as exhibition sites, a telephone company and an accommodation service. It has several domain names including <muenchen.de> and <muenchen.com>.

The German Civil Code prevents the abuse of the name of services, companies and organisations.

The Complainant does not own a registered trademark for the word ‘Muenchen’, which translates into English as ‘Munich’.

The Respondent is an internet company, established in 1996, providing a range of services for its clients. It also has non-internet activities which include travel and translating. It owns many different domain names including <bratislava.info> and <strasbourg.info>. These names and corresponding sites are used for global marketing. It also owns a number of <.biz> geographical names such as <amsterdam.biz> and <torino.biz> for example. It seeks to focus on regional websites in a way which does not confuse with any official municipal site. These regional websites are under construction.

The domain name <muenchen.biz> is identical to Complainant’s alleged common law mark.

Respondent has no rights or legitimate interests in respect of the domain name which is the name of the City of Muenchen in its English translation. The Respondent does not appear to be doing any business under the domain name.

Respondent has no independent website presence on the internet.

The Complainant has no trade or service mark for the name ‘Muenchen’.

The Respondent is seeking to develop city and regional guides operating accommodation, guiding and translating services. It has registered the disputed domain name in good faith.

The Respondent seeks a finding of reverse domain name hijacking in that it alleges that the Complaint was submitted abusively with intention to harass the domain name registrant.

Under STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alphanumeric string. If that string has been registered as a <.biz> domain name, NeuLevel, the Registry Operator of the <.biz> gTLD notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. NeuLevel determines priority orders if there are multiple claimants on a randomized basis (STOP Paragraph 4(2)(i)). Only the priority claimant will be invited to initiate a STOP Complaint, which is allocated a "ticket number" which allows dispute resolution providers to verify whether a STOP Complaint is pled by the priority claimant.

Under STOP, the Complainant must show:

(a) That the domain name is identical to the Complainant’s trademark or service mark (Paragraph 4(a)(i)).

(b) That the Respondent has no rights or legitimate interests in the domain name.

(c) That the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).

A Respondent may demonstrate a right or legitimate interest in a domain name. Circumstances similar to those under the Uniform Domain Name Dispute Resolution Policy of ICANN (the UDRP) can be invoked by a Respondent.

Likewise, the instances of bad faith exemplified in the UDRP can be invoked by a Complainant. However, because the STOP and the STOP Rules come into play shortly after registration of a domain name, the focus of attention will be on bad faith at the time of registration.

The alleged mark claimed by the Complainant, "Muenchen", the name of a German city in the German language, is identical to the disputed domain name. That can only assist the Complainant if the municipality known as "Muenchen" has a common-law mark in the name "Muenchen".

Assuming that a common-law mark provides a sufficient basis for a claim under STOP, a mere geographical name is not a proper basis on which to claim a mark.

Several cases under the UDRP show this. In Port of Helsinki v. Paragon International Products Ltd, WIPO Case No. D2001-0002, the Panel found that the Complainant had established no trademark. It had merely a geographical indication. A unique geographical name could not be held as belonging to the legal authority in the geographical area in question. In Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769, the Panelist said: "Geographic names cannot be monopolized by registering a trademark or company name. The use of geographic terms as such in domain names or otherwise by these parties is generally possible despite a trademark registration." The statement does not sit easily with the decision in Excellentisimo Ayuntamiento de Barcelona v. Barcelona. Com, WIPO Case No. D2000-0505. There the local governing body of the City of Barcelona owned many trademarks for the name Barcelona and the domain name <barcelona.com> was ordered to be transferred to the Complainant. The Panel prefers the approach in the Helsinki case and in the later cases to which reference will be made. The Barcelona case can be distinguished because the Complainant owned registered trademarks for the city name.

The Panel agrees with the succinct summary by the learned Panelist in Brisbane City Council v Warren Bolting Consulting Pty Ltd, WIPO Case No. D2001-0047. Thus:

"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."

To similar effect is the decision of the Panel in Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500 where the municipality of another German city unsuccessfully complained about the registration of a domain name <heidelberg.com>. In that decision, the learned Panelist referred to Second WIPO Report of the domain name process which accepted as a starting point that geographical names per se were not within the scope of the STOP.

In the present case, the Complainant, like the Complainant in the Heidelberg, Brisbane and Helsinki cases, has adduced no evidence to show that its name has acquired distinctiveness as a trademark in respect of any goods or service which it may offer. Accordingly, it has no rights in the name as a trade or service mark. The first criterion under the STOP has not been proved and the Complaint must fail.

Accordingly, the first criterion under STOP is not proved and it is unnecessary to consider the others. The Complaint must be dismissed.

Respondent’s ground for seeking such a finding is that the Complainant was demonstrably aware of Respondent’s activities and that the Complainant has either misinterpreted the legal purpose of the STOP process or intended to harass the Respondent.

The Panel finds no evidence that the Complainant was demonstrably aware of the Respondent’s activities. None was offered. Accordingly, the Panel does not make a declaration of reverse domain name hijacking.

Having said that, however, the Heidelberg decision given in March 2002 should have alerted the Complainant to the likelihood that its claim would not succeed in the absence of evidence of distinctiveness of the name as a trademark in respect of goods and services.

For the above reasons, the Panel decides that the Complaint is denied. The Panel declines to make a declaration of reverse domain name hijacking against the Complainant.