WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The State of the Netherlands v. Goldnames Inc.
Case No. D2001-0520
1. The Parties
The Complainant is The State of the Netherlands. The Complainant is represented by Dr. H.J.M. Boukema of Pels Rijcken & Droogleever Fortuijn of The Hague, Netherlands.
The Respondent is Goldnames Inc. of New York, NY, United States of America. The Respondent has filed no Response and is not represented.
2. The Domain Names and Registrar
The domain name at issue is . The Registrar is Network Solutions Inc., of Herndon, Virginia, U.S.A. ("the Registrar").
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on April 12, 2001 (electronically) and April 10, 2001 (hard copy). The Complainant requested a three-member panel.
On April 12, 2001, the Center sought registration details from the Registrar. On April 17, 2001, the Registrar advised that the registrant of the disputed domain name, and the Administrative and Billing Contact is the Respondent. The Registrar�s 5.0 Service Agreement is in effect (which incorporates the Policy and requires the registrant to submit to a properly initiated complaint under the Policy); the status of the disputed domain name is "active".
On April 23, 2001, the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. It formally notified the Respondent by post/courier, facsimile and email of the amended Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The formal date of the commencement of the proceeding was accordingly April 23, 2001. The last day specified in the notice for a Response was May 12, 2001. No Response was filed and a Notice of Default was sent by the Center to the Respondent on May 14, 2001.
On May 21, 2001, the Center notified the parties of the appointment of the Panel, all three members having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated June 3, 2001 as the date by which, absent exceptional circumstances, the Panel is required to forward its decision to the Center.
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules; payment was properly made; the Panel agrees with the Center�s assessment concerning the Complaint�s compliance with paragraph 2(a) of the Rules; and that the three member administrative panel was properly constituted.
4. Factual Background
The Staten-Generaal (i.e. in English, States General) was the body of delegates representing the United Provinces of the Netherlands and was instituted in the 15th century. During the secession war of the Netherlands against Spanish rule (1568-1609) the Staten-Generaal became the central organ of a general Netherlands union. Under the authority of the Staten-Generaal, a Dutch coastal battery gave the first official salute by a sovereign state to the flag of the United States of America. The term Staten-Generaal was revived for the bicameral parliament of the Kingdom of the Netherlands established by the Constitution of 1814 (cf. Chapter 3, � 1, articles 50 and 51 et seq. of the Constitution of the Kingdom of the Netherlands) and is still in use as such.
The term "Staten-Generaal" has achieved broad recognition and use within the Netherlands � among the general public, scholars, journalists and others � as referring exclusively to the Complainant�s parliament. In the mind of the Dutch public, the name "Staten-Generaal" has become synonymous with the country�s bicameral parliament. There likewise appears to be significant international recognition and use of the term in the same regard, albeit naturally to a lesser extent than within the Netherlands. From this it follows that the name "Staten-Generaal" has achieved a sufficient secondary meaning or association with the Dutch parliament such that the Complainant can be viewed as having legally protectable rights in the name.
The Respondent, which is incorporated in a non-Dutch speaking area of the world, has offered the domain name for sale at an unspecified price. Complainant asserts that the Respondent has offered other similar Dutch-language names for sale, although it has neglected to provide proof in this regard.
The Respondent has made no substantive response to the Complainant�s allegations, despite being properly served with the Complaint. However, on May 14, 2001, the date that the Notice of Default was issued by the Center, an individual named Danny Oberman, who identified himself as a Vice-President of the Respondent, sent an email to the Center as follows:
"As I told Boukema [Complainant�s counsel], I have no problem transferring him the name at no charge. Only problem is that it is frozen with NSI.
If he wants to go through a legal process, which will enable him to bill extra hours that�s fine with me, but please be advised that we do not reject the claim, and are willing to transfer the domain name immediately."
Notwithstanding this email, the Complainant has not withdrawn the Complaint and the domain name has not been transferred as far as the Panel is aware.
5. Parties� Contentions
Complainant:
The entirety of the Complainant�s common law mark Staten-Generaal is included in the domain name . The addition of ".com" is required for registration of a domain name and is non-distinctive.
The domain name is registered in bad faith and the Respondent has no legitimate interest in it.
- The Respondent is a legal entity residing in a non-Dutch language area. The uniquely Dutch mark Staten-Generaal does not serve a reasonable or legitimate purpose for the Respondent, a United States company.
The Respondent has been, and still is, offering the domain name for sale (together with other names belonging in the Dutch public domain).
- The Respondent�s express purpose to sell the domain name for valuable consideration in excess of the Respondent�s out-of-pocket costs directly related to the domain name, plus the fact that the Respondent offers a multitude of other domain names in Dutch, show that the domain name has been registered and is being used in bad faith.
The domain name suggests an association with or relationship to, or perhaps endorsement of, the site by the Staten-Generaal. This domain name confuses and misleads users of the internet in the search of information about the Complainant. Even a disclaimer on the website is not suffice to neutralize or redress confusion which has occurred.
The Respondent�s registration of the name thwarts the rights of the Complainant to make government and state information as much as possible available to the public and the public�s right to seek information from government and the state. It also limits the public�s right to address its views to government. The Respondent�s registration also limits the Complainant�s opportunities to encourage and put e-government into practice.
It is alleged that in the past the Respondent used the domain name for a pornographic site. This is improper and gives cause for grave concern, as regards likelihood of confusion, loss of reputation and misleading the public. The proximity of that domain name to the domain name in issue gives the Complainant further cause for concern.
The domain name can only be used in good faith by the Staten-Generaal and no one else. As indicated above, the reputation of the Staten-Generaal is vested in the eponymous name by which the Complainant is commonly known even whilst the Complainant has acquired no trademark or service mark rights. As such marks are by definition marks under which the goods or service by an undertaking are being traded, the Staten-Generaal which is the bicameral parliament of the Kingdom of the Netherlands, cannot register a trademark or service mark as it is by definition not an undertaking.
The Complainant contends that Dutch law applies to this case, at least by analogy, and asserts that "Dutch courts have repeatedly held that the use of a domain name similar to an institute of the Complainant (e.g. ; ) constitutes a tort vis-à-vis the Complainant" (Complaint p. 7) (the "tweede kamer" being the lower house of the Dutch parliament). The Panel notes, however, that in a decision rendered on August 3, 2000, in a case involving the name , a Dutch court denied relief on the ground that no tort was committed where the registered name had the "com" designation as opposed to the "nl" designation. Given that the claimant in that case was the Dutch State, and that the lawyer was the same counsel as in the present case, the Panel finds it most surprising that counsel failed to disclose this apparently contrary Dutch precedent.
The Respondent has made no submissions other than the email noted above.
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Respondent�s email of May 14, 2001, quoted above, constitutes a concession that arguably provides a sufficient basis for resolving this case without the necessity to make any further factual findings. See Juventus F.C. S.p.a. v. Sergio Bragança, Case No. D2000-1466 (WIPO December 20, 2000); United Advertising Publications, Inc. v. Net Marketing, Case No. D2000-0058 (WIPO March 31, 2000); Phoenix Technologies Ltd. v. Phoenix Global Networks, Inc., Case No. D2000-0319 (WIPO June 16, 2000). However, in light of the fact that the domain name has not been transferred and in the interest of reaching a definitive resolution in this matter, the Panel deems it prudent to proceed to make findings on the merits of the case.
Identical Mark
The Panel considers that the disputed domain name is identical to the mark of the Complainant. The addition of the designation ".com" to the domain name is insufficient to make the domain name non-identical.
Illegitimacy
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant�s rights or legitimate interests to the disputed domain names. The Complainant has the onus of proof on this, as on all issues. The Complainant has not given the Respondent any rights to use the disputed domain name.
The critical question is whether the Respondent was aware of the Complainant�s mark before it registered the domain name. The Panel notes that the Respondent is incorporated in a non-Dutch speaking area and that it has alleged neither absence of knowledge of the Complainant�s mark nor any legitimate interest in using the name. The Complainant asserts that the Respondent has registered many names with a Dutch connection and seeks to sell these names, including the subject name. Again, in the absence of a Response, the Panel can assume that this is not denied by the Respondent. The Complainant�s mark as representing the Dutch state is reasonably well-known throughout the world. In the absence of any suggestion to the contrary, the Panel infers that the Respondent was aware of the Complainant�s mark when it registered the name.
Bad Faith
Although presenting a somewhat close question, the Panel considers that the domain name was registered and is being used in bad faith. The Panel has already concluded that the Respondent knew of the Complainant�s mark at the time of registration.
The Panel concludes under all the circumstances of this case � including the Respondent�s attempt to sell the domain name, its lack of any apparent legitimate interest in the name, the fact that it is incorporated in a non-Dutch speaking region and the Complainant�s unrebutted allegation that the Respondent has registered and attempted to sell other official Dutch-language names � that the bad faith criterion is satisfied here.
7. Decision
The Panel determines that:
(a) The disputed domain name is identical to the Complainant�s mark.
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
(c) The disputed domain name has been registered and is being used in bad faith.
The Registrar is required to transfer the domain name to the Complainant.
Hon. Sir Ian Barker QC
Presiding Panelist
David C.L. Perkins
Panelist
D. Brian King
Panelist
Dated: June 3, 2001
Full & Egal Universal Law Academy