Museum of New Zealand Te Papa Tongarewa v. Greg Nicolas [2004] GENDND 740 (15 June 2004)

The Complainant is Museum of New Zealand Te Papa Tongarewa of Wellington, New Zealand, represented by Baldwin Shelston Walters of Wellington, New Zealand.

The Respondent is Greg Nicolas of Wellington, New Zealand, represented by ESQwire.com Law Firm, of Cherry Hill, New Jersey, United States of America.

The disputed domain name, <tepapa.com> is registered with TierraNet d/b/a DomainDiscover.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2004. On April 22, 2004, the Center transmitted by email to TierraNet d/b/a domainDiscover a request for registrar verification in connection with the domain name at issue. On April 23, 2004, TierraNet d/b/a domainDiscover 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. The Center verified that 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 on April 28, 2004. In accordance with the Rules, paragraph 5(q), the due date for Response was May 18, 2004. A request for extension was granted by the Center until May 25, 2004. The response was received by the Center on May 26, 2004.

The Center appointed the Honourable Sir Ian Barker QC of Auckland, New Zealand as the sole panelist in this matter on June 2, 2004. 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, Museum of New Zealand Te Papa Tongarewa, is a body corporate created by an Act of the New Zealand Legislature, i.e. the Museum of New Zealand Te Papa Tongarewa Act 1992. The effect of that enactment was to merge two important New Zealand cultural institutions, the National Museum and the National Art Gallery into a single organization.

After its establishment, the Complainant erected Museum buildings on the waterfront in Wellington and opened the Museum on February 14, 1998.

The Complainant is the proprietor of 8 trade mark registrations in New Zealand for the words TE PAPA. These were filed on February 18, 1997, and the registration date of the earliest was January 26, 1999. The Complainant is also the proprietor of 8 trade mark registrations for a logo in which the significant element is the name TE PAPA. The applications for registration were also filed on February 18, 1997.

On April 14, 1997, the Complainant adopted the brand TE PAPA with the intention that the Museum would become known nationally and internationally by that name. The media releases accompanying the adoption of the name were given wide circulation throughout New Zealand. Since then, the Museum has been commonly referred to by the name ‘Te Papa.’ Brand guidelines emphasized the name and offered reasons for its choice.

Since its opening and up until June 30, 2003, the Museum has had 7.9 million visitors, including 2.7 million international visitors. It is a major tourist attraction in the Wellington area, with an advertising, marketing and promotional budget of NZ$800,000 per annum. The words Te Papa referring to the Museum, are found extensively in travel guides, Yellow Pages, newspaper advertisements and radio promotions. The Museum is partially funded by the New Zealand Government, by sponsorships and through its trading activities.

The Complainant operates a website at <tepapa.govt.nz> which, in March 2002, achieved a total of 454,401 hits. It also owns other domain names, such as <tepapa images.co.nz>.

The Respondent registered the disputed domain name on October 17, 1998. At that time, the domain name hosted a single website featuring the Complainant’s trademark in a large font together with the words “New Zealand Beautiful and Our Home, each phrase with a successively smaller font. The website, as from December 12, 2003, stated that it was ‘under construction’ and said also: “website launch? Soon finally in 2004!!!”. The page contains a compendious definition from a Maori dictionary of the words ‘te papa’. Under the heading ‘what is tepapa.com?” it states: “- Future website mainly about New Zealand and at a lesser extent, other places of interest to us like USA, Canada and Australia. These are countries we have lived and visited.”

The Complainant wrote a ‘cease and desist’ letter to the Respondent and gave him various extensions until March 23, 2004, within which to transfer the disputed domain name. The Respondent has declined to do so.

On December 15, 2003, after the Complainant’s concerns had been brought to his notice, the Respondent applied to the Intellectual Property Office of New Zealand (IPONZ) to register T.E.P.A.P.A. as a trademark Application No. 705874 was made through Wellnet Systems Ltd of which the Respondent is the sole director and shareholder. The application is currently at the examination phase. The Complainant intends to object to the registration of this trademark at the appropriate time.

The Respondent has been a resident of Wellington since at least 1992, according to information obtained by the Complainant from telephone directories and electoral rolls. This information has not been denied by the Respondent.

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The Respondent has no right or legitimate interests in the domain name and has not been granted any by the Complainant. Nor does he come within the exceptions found in paragraph 4(c) of the UDRP. The Respondent’s use of the website to date does not constitute preparation to use a domain name in connection with the bona fide offering of goods or services. According to searches made by the Complainant’s attorneys, some companies, societies and trusts include the words Te Papa in their names. There is no evidence of any connection of the Respondent with any of these entities.

The Respondent placed new material on his website, maintaining that Te Papa stands for “the exciting people and places around.” The Complainant submits that this is fanciful and that Te Papa, in the New Zealand context, has a well-understood meaning and refers to the Museum. The Complainant considers it unlikely that the Respondent will obtain registration of his proposed trade mark 705874 because of the Complainant’s existing registered marks. The Complainant is not aware of any activity which would give the Respondent any potential right or legitimate interest in the domain name. The Respondent lives in the same city as that in which the Complainant’s Museum is situated. He must have been aware of the Complainant’s rights when he registered the domain name. The Respondent intended to take advantage of the Complainant’s reputation when doing so. The Complainant is aware of the significance of the name in the Maori language. The English interpretation embraces concepts of a place where treasures are held and implies connections with Papatuanuku (the Earth Mother – the land). The name was received enthusiastically when announced by the then Chief Executive for the Ministry of Maori Development, a New Zealand Government Ministry with special responsibility for the advancement of the aspirations and culture of the Maori people.

The Respondent has registered and is using the domain name in bad faith for the following reasons:

(a) The domain name consists solely of a name in which the Complainant has registered trademark and common law trademark rights.

(b) The Respondent lives in the same city as the site of the Complainant’s museum known as Te Papa and must have known of the Complainant’s rights when registering the domain name. One cannot conceive of circumstances under which the Respondent could use the domain name without infringing the Complainant’s trademark and common law rights.

(c) The Respondent is preventing the Complainant from reflecting its trade mark in a corresponding domain name. The domain name was registered and will be used to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.

(d) The Respondent’s website does not appear to serve any particular purpose nor convey any information nor offer any services or goods. The Complainant submits that the domain name was registered and is being used in bad faith and that its registration amounts to a classic case of cyber-squatting.

The Respondent has annexed a written statement signed by him but unwitnessed, mentioning many of the factual matters which he alleges in the Response. Under New Zealand law, this document could not be an affidavit because the right to administer an oath is generally restricted to proceedings in Court or in an arbitration under the Arbitration Act 1996. However, the Oaths & Declarations Act 1957, permits the making of a statutory declaration to be witnessed by named classes of persons and provides sanctions for making a false declaration. The Respondent did not avail himself of the procedure under this Act.

At the time of registration of the domain name on October 17, 1998, the Complainant had no registered trademark, because the earliest registration date of the trademark was January 26, 1999.

The Respondent has a legitimate interest in the disputed domain name. It incorporates a common term in the Maori language meaning “the father,” a term which is subject to substantial third-party use. The Respondent registered this name with intent to use it for a non-commercial website to highlight countries around the world and cultures which he had visited. He wishes to direct it to overseas Filipino workers.

An Internet search for Te Papa, excluding the words “govt.nz,” “Tongarewa” and “Museum,” yielded over 4,000 third-party uses. Te Papa is a descriptive term in the Maori language meaning, amongst other things, the “father,” and the word “Papa” means “father” in English. The Respondent used this name because it can also be a reference to the deity. He is a devout Christian and a member of the Community Baptist Church of West Wellington.

The Respondent is a native of the Philippines. Prior to his coming to New Zealand, he had worked as an overseas worker and had witnessed and heard about the burdens on other migrant Filipino workers and their family problems. Having had to work overseas himself, he wanted to use the Internet to help these people and provide them with information on other places in the world and to create interest in other cultures.

The Respondent has not published a website on the disputed domain name, but is slowly working towards that goal and expects to launch the website later in 2004. Prior to the initiation of the dispute, he had travelled extensively to gather information, photographs and videos for the website. He has collected thousands of photos and spent hours making digital videos which have been archived and catalogued for use on the website: hence the slogan, “The Exciting People and Places Around.”

The Respondent did not register the disputed domain name in order to sell it to the Complainant nor to profit from it, nor to disrupt the Complainant’s business, nor to prevent the Complainant from reflecting its mark nor to create confusion. He is making a legitimate non-commercial use of the disputed domain name. It is his intent to use the domain name at the time of registration that matters – (see Casual Corner Group, Inc. v. Neil Young (95112 NAF) and Smart Design LLC v. Carolyn Hughes (WIPO Case No. D2000-0993)). A domain name registration is not illegitimate where a Respondent has no specified use at the time of registration, but has begun preparations to use the website.

The Respondent’s legitimate interest is further established because Te Papa is a common descriptive term referring to the father and, therefore, the Respondent had a vested legitimate interest in the disputed domain name at the point of registration. Where the domain name is composed of common words or a descriptive term, decisions most often favour the registrant.

A whole host of UDRP decisions were quoted in support of these propositions, with little attempt at selectivity. A Panel is usually assisted by the quotation of a few relevant decisions rather than of a plethora of cases, unaccompanied by any analysis.

Bad faith was denied. It cannot be proved just because the Complainant owns a well known trademark and the Respondent lives in the same city in which the Complainant does business. This fact does not prove that the Respondent registered the disputed domain name for any bad faith purpose such as on-sale disruption or preventing the Complainant from reflecting its mark in the domain name or the confusion of Internet users.

It was not bad faith to register the mark because it means ‘the father’ in the Maori language, a common term. There are thousands of third-party uses of the common word Papa and, therefore, it cannot be proved that the value of the disputed domain name is derived exclusively from the Complainant’s mark or that it was registered specifically to sell to the Complainant.

Cases cited by the Complainant to support bad faith are inappropriate. Many involved words not in the dictionary such as “Nike,” “Pokemon,” “Telstra” or “Sony.” Te Papa is not a coined name like those, but merely two words in common use in the Maori language. There is nothing tending to show that the Respondent engaged in bad faith registration and use nor is there any bad faith arising from the claim that registration would create a likelihood of confusion.

Where the Complainant’s mark is a common term, a Complainant must proffer evidence that demonstrates that the Respondent has specifically intended to confuse customers seeking out the Complainant and there is no such proof here. Because many other enterprises use the words Te Papa, one cannot conclude that the Complainant was necessarily the special target.

“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.”

- 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

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

The disputed domain name is identical to the Complainant’s registered trade marks. Under New Zealand trade mark law applicable at relevant times, (i.e., Section 28 of the Trade Marks Act 1953), registration of a trademark and the rights accruing therefrom are backdated to the date of the application for a trademark registration. Accordingly, the Complainant is deemed to have had a registered trade mark from February 18, 1997, – before the date of the registration of the disputed domain name by the Respondent. The New Zealand Trade Marks Act 1953, has now been replaced by the Trade Marks Act 2002. There is no difference between the two Acts in respect of the rule of retrospectivity of registration. The Panel believes that retrospectivity of trademark registration back to the date of application is fairly standard in trademark law in most countries.

Moreover, as at the date of registration of the disputed domain name, the application for trademark would have been publicly advertised in the official publication of IPONZ and objections to registrations of the trademark invited. The Respondent could easily have searched the relevant records before registering the domain name, as is customary when a company name is to be reserved for registration.

Furthermore, because of the intensive publicity surrounding the branding of the new museum as Te Papa, which occurred some 18 months before the registration of the disputed domain name, the Complainant would have acquired common law trademark rights in the name over that period.

The Panel can say, as a matter of judicial notice, that the building of the national museum of New Zealand was a matter of considerable publicity throughout the country in the years between the enactment of the legislation in 1992, setting up the new Museum and the opening of its doors in 1998. Prior to its opening, as the evidence demonstrated, the Museum was given the brand of Te Papa which it has consistently used in all its commercial and marketing material.

In the Panel’s view, the first criterion is proved; the disputed domain name is identical to both the Complainant’s registered marks and its common law trademarks, existing at the time of registration of the disputed domain name.

The authorities cited by counsel for the Respondent do not assist. For example in John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, (WIPO Case No. D2001-0074), the decision records that the domain name had been registered some three years before the Complainant began using its marks at all.

The Complainant gave the Respondent no rights or interests in the disputed domain name. However, paragraph 4(c) of the Policy lists three circumstances in which a Respondent can demonstrate rights or legitimate interests in the disputed domain name:

The Respondent here relies on 4(c)(i) and 4(c)(iii). He claims that he has made demonstrable preparations to use the domain name in connection with the bona fide offering of goods and services. The detailed explanation provided invites skepticism. If the Respondent wished to create a website extolling the beauties and advantages of the many places he had visited and of New Zealand in particular, then it is difficult to see why he should have devised a trademark, the initial letters of which correspond with the word “Te Papa” which just happened to coincide with the initial letters of the disputed domain name.

“The Exciting People And Places Around,” the full name for the initials, does not immediately call to mind a website where Filipino migrant workers would find either inspiration as to other places where they might live or solace from their current adversities.

If there was, as the Respondent claims, a religious and altruistic element in his proposed website, then one could readily have thought of many other names which would indicate both a religious element and the desire to assist Filipino migrant workers abroad.

The inference is easy to draw that the name, “The Exciting People And Places Around,” was one concocted to give legitimacy to the disputed domain name. For an example of how the New Zealand Courts dealt with a made-up name with similar initial letters to an existing brand name, see Esanda Ltd & another v. Esanda Ltd 1983) 2 1PR 182. There, the plaintiff (Esanda) had established a reputation in financial and business circles in New Zealand as a major Australian finance company by reason of publicity and “reputation stopover.” The defendant claimed that he had registered the name ‘Esanda’ as an abbreviation for “Euro-Swiss and Australian Finance Ltd.” An interim injunction was granted to the plaintiff restraining the defendant’s use of the name. The Judge remarked at p 190 “I find it difficult to understand why he (the defendant) is so intent on retaining this name in the fact of this expensive opposition, if the account he gives in his affidavit is his only reason for adopting it.” Such a remark is apposite to the Respondent’s attitude in this case.

An application to register a trademark for these letters, under normal trademark criteria, would be doomed to failure because of the existing marks of the Complainant (see Trade Marks Act 2002 s25). The timing of the trademark application, after the Complainant’s concerns were made known, is indicative of a stratagem designed to justify the unauthorized use of the Complainant’s marks in the disputed domain name.

The submission that the words “Te Papa” are well-known and have a variety of meanings in the Maori language is really a complaint that the trademark protects a generic name. However, the trademark registration has been granted. The Respondent did not object to its grant. The evidence clearly establishes that not only was there a registered mark, the registration of which is backdated to a time preceding the registration of the domain name, but that there is also a common law mark.

There is a shortfall of credibility in the Respondent’s explanation for the fact that the website has not yet been developed, even though the domain name has been registered for five years. In Smart Design LLC v. Carolyn Hughes (WIPO Case No. D2000-0993), the Panel noted that the Complainant had accepted that the Respondent may have registered the name in good faith and that she may have had a bona fide business plan. She had also consulted a patent attorney. The Panel found, on the facts, that there can be delays in the patenting process and that there was nothing to suggest that the delay in that case should have resulted in a bad faith finding.

The facts are different here in that there was no acknowledgement from the Complainant of an initial intention by the Respondent to use the website. The website seems unclear as to its purpose and scope, even today. Moreover, the present Panel does not necessarily agree with the rather restrictive view on the inferences to be drawn from delay in establishing a website as were favored by the learned Panelist in WIPO Case No. D2000-0993.

However, it strains credulity that, after more than five years, nothing of any significance has appeared on the website. No indication is given of the imminent arrival of a large-scale gratuitous presentation either by way of travelogue or as a means whereby overseas Filipino workers may communicate with others and advance their rights worldwide. If this had been the desire, then one wonders why it was necessary to use as a domain name words in the Maori language, which would be an unfamiliar tongue to most Filipinos.

One would have expected some reference to Filipino workers or to the Philippines in the website title, if the laudable objective of setting up the website was to assist Filipino migrant workers. Nor can it be seen as any particular hardship for the Respondent if he loses the right to use a domain name which would have no significance to a Filipino worker in a foreign land seeking information about New Zealand or seeking a vehicle for communication with other workers in situations comparable to his or her own.

Nor is there any proof - which rests on the Respondent - of a non-commercial or fair use without intent for commercial gain to divert users of the Internet. The inaction over five years points to the contrary.

The inference which the Panel draws from the evidence as a whole, including the use of the domain name without any rights having been granted by the Complainant, is that there is no legitimate commercial use. The inference is that the Complainant is merely cashing in on the fame of the Complainant’s mark which signifies a major visitor attraction in the city in which he is resident.

Paragraph 4(b) of the Policy indicates four circumstances that may indicate bad faith. However, many Panel decisions have indicated that the categories of bad faith are never closed and that the examples quoted in the Policy are merely examples.

A finding of bad faith may be made whether the Respondent knew or should have known of the registration and use of the trade mark prior to registering the domain: see Façonnable SAS v. Names4Sale (WIPO Case No. D2001-1365), Vakko Holding Anonim Sti. v. Esat Ist (WIPO Case No. D2001-1173). In the latter case, a trademark was registered and was well-known in the country of incorporation of the Complainant which it was also the country of residence of the Respondent. The Panel considered it unlikely that the Respondent did not know of the name and the mark when he registered the domain name in question.

In Cellular One Group v. Paul Brien (WIPO Case No. D2000-0028) the Panelist said “Among other things in these circumstances and absent a transfer the Complainant is deprived of the use of the domain name and must always be concerned about the possibility of a confusing future site and this harm to the Complainant is not balanced by showing any legitimate use or potential use by the Respondent.”

In Harrods Limited v. Pete Lormer (WIPO Case No. D2003-0504) the Panelist said “Negatively phrased, the Respondent has exercised bad faith by the very act of not being reasonably able to use that name without having the effect of violating the Complainant’s name and trademarks. Were the Respondent to do nothing beyond registering the name, that act of registration itself would constitute bad faith because a bad faith use is an unavoidable inference indeed consequence, of the act of registration itself.”

The very existence of the disputed domain name must divert Internet users from a site at which they would legitimately expect reference to the Complainant’s Museum. Confusion can be caused. Evidence shows that there are many hundreds of thousands of hits on the Complainant’s existing websites. Many more might be expected from a “.com” site.

For all the following reasons, the Panel considers that the domain name registration must have been made in bad faith and continues in bad faith. No other explanation is credible, particularly in light of the far-fetched explanation of the name which has nothing to do with the Maori name for God, the Maori name for father, the scenic attractions of New Zealand, the welfare and/or networking of Filipino migrant workers, or a list of places which they may consider visiting.

(a) The Respondent, in his written statement, did not provide a credible link between his explanation for registering the name in 1998, because it meant ‘the father’ as in God in Maori and his explanation for the slogan which formed the basis of his trademark application;

(b) Given the publicity surrounding the naming of the national museum as ‘Te Papa,’ it is hard to see why Respondent did not search the Trademarks register where he would have learnt at the time of registration of the domain name, of the Complainant’s trademark application.

(a) That the domain name <tepapa.com> is confusingly similar to the trademark to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <tepapa.com> be transferred to the Complainant.

Generic Top Level Domain Name (gTLD) Decisions

Museum of New Zealand Te Papa Tongarewa v. Greg Nicolas [2004] GENDND 740 (15 June 2004)

World Intellectual Property Organization