The Complainant is Land Nordrhein-Westfalen of Münster, Germany, represented by Hogan Lovells International LLP, Germany.
The Respondent is Jason Roberts / Inetagency Corporation, Ralf Gettler of North Miami Beach, Florida, United States of America (the "USA"), self-represented. 2. The Domain Names and Registrars
The disputed domain names , , , , and (the "Domain Names") are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 19, 2014. On March 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 20, 2014, 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.
On March 21, 2014, the Center received an informal communication from the Respondent.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 29, 2014. The Respondent did not file a formal Response. On April 30, 2014, the Center informed the parties about the commencement of the Panel appointment process.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 13, 2014. 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. 4. Factual Background
"Finanzamt Münster", which forms part of each of the Domain Names, is the name of the tax office of the city of Münster and a state agency of the federal state of North Rhine-Westphalia (Germany), the Complainant. The tax office in Münster has two local branches, the Finanzamt Münster-Innenstadt (in English, Tax Office Münster City) and the Finanzamt Münster-Außenstadt (in English, Tax Office Münster Outer Town). The designation of these offices is laid down in the State governance ordinance regulating the allocation of responsibilities of tax offices.
By judgement of November 19, 2012, the District Court of Münster has issued a preliminary injunction against the Respondent concerning, inter alia, the use of the names "finanzamt-muenster", "finanzamt-muenster-innenstadt" and "finanzamt-muenster-außenstadt" as second level domain names. In addition to legal action to make the Respondent meet the preliminary injunction, the Complainant has filed the Complaint in the current UDRP proceedings.
The Complainant does not have a registered trademark, but in these proceedings relies on common law service mark rights in the names "Finanzamt", "Münster", "Finanzamt Münster-Innenstadt" and "Finanzamt Münster-Außenstadt" (the "Names").
The Respondent is a former citizen of the city of Münster and has registered the Domain Names in July and August 2012. At the time of the filing of the Complaint, the Domain Names resolved to one or more web pages containing accusations against the Münster tax office and several of its officials, apparently in connection with the attachment of a bank account of the Complainant for a period of two weeks in May 2012. The web pages contained, inter alia, the names, addresses and telephone numbers as well as photographs of these officials of the tax department.
When the Panel consulted the website under the Domain Names on May 26, 2014, they all contained the same placeholder message to the effect that the Respondent is registering new domain names "to show the people in Germany how the tax government is working". 5. Parties' Contentions A. Complainant
The Complainant submits that it has common law service mark rights in the Names. According to the Complainant, the tax offices acting under these Names are well known in the state of Nordrhein-Westphalia as they are in charge of the administration of most kind of taxes and, acting in this capacity, offer a number of services to the public such as providing public information as well as online and offline services relating to tax declarations. The Complainant states that due to extensive use of the Names in the course of trade, they have acquired secondary meaning and therefore enjoy trademark protection in Germany (the "Trademarks") in accordance with section 4, item 2 of the German Trademark Act.
According to the Complainant, the Domain Names are identical to the Trademarks as they only differ in spelling.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Names as it does not use, nor shows an intent to use the Domain Names for a bona fide offering of goods or services. The Complainant alleges that the Respondent uses the Domain Names to mislead Internet traffic searching for the official websites of the Münster tax office to its website. According to the Complainant, the statements on the website under the Domain Names are offensive and infringe the personal rights of several employees of the tax offices. In addition, the photographs of the employees infringe the personal rights of the depicted employees. The Complainant also states that the Respondent's use of the Domain Names does not constitute a legitimate non-commercial use. According to the Complainant, the Respondent registered the Domain Names solely for the purpose of intentionally attracting Internet users to the Respondent's websites by creating a likelihood of confusion with the Trademarks in a way that is detrimental to both the reputation of the marks and the German State government authorities, so that the Respondent registered and uses the Domain Names in bad faith. B. Respondent
The Center received an informal communication from the Respondent on March 21, 2014.
In the absence of a formal Response, the Panel has decided to take into account the content of the Respondent's email in reaching its decision, since it contains arguments aimed at justifying the Respondent's registration and use of the Domain Names.
According to the Respondent, the Domain Names are common names, normal to use and register for everyone. The Respondent alleges that the Domain Names are only protected under the extension ".de" for the government but not with extensions like ".com", ".info" and the like. The Respondent submits that the first person to register is the rightful owner of a domain name. According to the Respondent, the websites under the Domain Names show "real and true information" about the tax department and its mistakes in relation to the Respondent. The Respondent states that the images of the persons on the website are taken from newspapers and that everyone can use these images as the persons involved are in public office. Finally, the Respondent submits that since the Domain Names are registered in the USA, the laws of the United States apply and that under such laws the Respondent has the right to show this information. 6. Discussion and Findings A. Applicable laws and regulations
Paragraph 15(a) of the UDRP rules provides:
"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".
It has been widely accepted that the phrase "any rules and principles of law that it deems applicable" refers to the principles of law that apply on the basis of conflict of laws rules, when the parties are in different jurisdictions. See 1066 Housing Association Ltd. v. Mr D. Morgan,WIPO Case No. D2007-1461 () and Sermo, Inc. v. CatlystMD, LLC,WIPO Case No. D2008-0647 ().
In accordance with paragraph 15(a) of the Rules, the Panel will decide this case based on the applicable principles enunciated at paragraph 4(a) of the Policy and, to the extent it is necessary, the laws applicable where the parties are located. B. Identical or Confusingly Similar
The principal question is whether the Complainant has shown that it has rights in a trademark, as required by paragraph 4(a)(i) of the Policy.
The Complainant relies on unregistered trademark rights under German law. Trademark law in the European Union (the "EU") is, to a large extent, harmonized by Directive 2008/95/EC (the "Directive") to approximate the laws of the member states relating to trademarks. It is therefore convenient to take German and European trademark law into account in determining whether the Complainant has trademark rights.
Section 3 item 1 of the German Trademark Act defines trademarks as:
"any signs (…) which are capable of distinguishing the goods or services of one undertaking from those of another undertaking" (…).
This wording is identical to article 2 of the Directive.
The Complainant does not have a registered trademark, but relies on common law service mark rights in the Names in accordance with section 4, item 2 of the German Trademark Act, which provides that:
"Trademark protection shall accrue
(…)
2. through the use of a sign in the course of trade in so far as the sign has acquired a secondary meaning as a trademark within the affected trade circles". [emphasis added]
The specific questions to be answered in this respect is whether under German and EU trademark law the name of a public authority, consisting of a descriptive term and a geographical denomination (like "Finanzamt Münster") may constitute a valid trademark and, if so, whether in this case that trademark has acquired secondary meaning in accordance with German trademark law.
The name "Finanzamt Münster" is descriptive of the tax office of that name in the city of Münster. However, since there is only one such office in Germany, the Panel is of the opinion that it has distinctive character in that it is capable of distinguishing services of the Münster tax office from those of all other institutions and companies.
Furthermore, the Panel accepts that the term "undertaking" includes public authorities. This term has not been defined in the Directive and is used in many EU legal instruments, including the Treaty on the European Union. It follows from the case-law of the European Court of Justice that the concept of an undertaking encompasses every entity engaged in an economic activity, regardless of the legal status of the entity and the way in which it is financed.1 In addition, both the UDRP and German (and EU) trademark law recognize that public bodies can hold or acquire trademark rights. Therefore, the Panel considers that the Complainant constitutes an undertaking under section 3 item 1 of the German Trademark Act and article 2 of the Directive and that the Trademarks can be valid trademarks under these provisions.
This leaves the questions whether in this case the Trademarks are used "in the course of trade" and have acquired secondary meaning, as required for protection of an unregistered trademark under article 4, item 2 of the German Trademark Law. The Complainant in this respect has merely submitted that the authorities acting under these names "are in charge of the administration of most kind of taxes and, acting in this capacity, offer a number of services to the public such as providing public information as well as online and offline services relating to tax declarations".
From the evidence submitted, the Panel concludes that the Complainant is using the Names for the delivery of its services. Although the Directive does not apply to unregistered trademarks, it may be relied upon to interpret terms which are used both in national trademark law and the Directive. The term "in the course of trade" is used in several provisions of the Directive. In the first place, the Court of Justice has ruled that activities in the course of trade are to be distinguished from private activities.2 Furthermore, "in the course of trade" does not exclude economic activities which are not for profit.3 It follows that government services which are rendered against administrative costs or for free, may also be considered to be activities in the course of trade. Therefore, in this case, the processing of tax returns as well as the provision of information on taxes and the filing of tax returns are to be considered activities "in the course of trade".
It follows that the Trademarks have been used by the Complainant in the course of trade.
In addition, as every individual above a certain age and each corporation, living or domiciled in the city of Münster, is subject to the instructions and findings of the Finanzamt Münster, the Panel assumes that the Trademarks are well known, certainly in the city of Münster. This would imply that they have acquired secondary meaning "in the affected trade circles" in Germany.
The Panel concludes from all of the above that the Complainant has unregistered trademark rights in the Trademarks4.
In the Panel's view, the Trademarks and the Domain Names are confusingly similar. The only differences are in the spelling of the "ü" and the "ß", which are replaced respectively by "ue" and "ss" in the Domain Names, which is a generally acknowledged way to transcribe this lettering in German. The first element of the Policy is therefore satisfied. C. Rights or Legitimate Interests
The website under the Domain Names was used by the Respondent (before the content changed) to criticize the tax office of the City of Münster in connection with the treatment of the Respondent by that office. The question therefore is whether the way the Respondent is using the Domain Names in this case provides him with a right or legitimate interest under the Policy.
Under established UDRP case law, there are different views as to whether criticism sites generate rights or legitimate interests (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.4). While some panels have determined that "the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the complainant's trademark", others are of the opinion that "irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if such use is fair and non-commercial".
In the Panel's view, the principal issue in cases such as this one is that the right to criticize does not justify that a respondent use a domain name in a way that might deceive Internet users into believing that such domain name is somehow connected to a trademark owner. For example see Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776 () and Anastasia International Inc. v. Domains by Proxy Inc./rumen kadiev,WIPO Case No. D2009-1416 (). In the present case, the Domain Names are almost identical to the Complainant's Trademarks and the original content of the website associated with the Domain Names indicated that the Domain Names were deliberately chosen with the Complainant's Trademarks in mind. In the view of this Panel, the right to criticize does not justify such a deceptive use of the Trademarks. In addition, the original content of the website was not only aimed at the Complainant, but also at some of its officials who allegedly were involved in taking a decision which apparently was unfavorable for the Respondent. The Panel is of the opinion that by publishing the names, pictures and contact data of those persons, while using language apparently intended to incite others to visit or contact the officials involved, the Respondent has acted in a way that goes beyond what could be considered reasonably necessary to criticize the Complainant.
The Panel does not wish to restrict unduly the right of the Respondent to express his views on the Complainant and its actions, but believes there is no need to do so with the use of the Domain Names which, as set out, are confusingly similar and (almost) identical to the Trademarks. See Anastasia International, supra and Fundación Calvin Ayre Foundation v. Erik Deutsch,WIPO Case No. D2007 -1947 ().
On the basis of the above, the Panel concludes that the Respondent does not have a right or legitimate interest in the Domain Names. D. Registered and Used in Bad Faith
Based on its considerations above in relation to rights or legitimate interests, the Panel finds that the Domain Names were registered and are being used in bad faith, namely for the purpose of intentionally attracting Internet users to the Respondent's website by creating a likelihood of confusion with the Trademarks in a way that is detrimental to both the reputation of the Complainant, the Trademarks and the individuals involved. Bad faith use is also found in the publication of photographs and contact details of government officials, apparently with a view to intimidate them, on the website to which the Domain Names resolve. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , and be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: June 3, 2014
1 See especially the judgments in Case C41/90 Hoefner and Elser v Macrotron GmbH [1991] ECR I-1979, at paragraph 21, and in Joined Cases C-159/91 and C-160/91 Poucet et Pistre [1993] ECR I-637, at paragraph 17.
2 CJ Case C-206/01 Arsenal Football Club plc v. Matthew Reed [2002], ECR I-10273 at paragraph 40.
3 CJ Case 442/07, Verein Radetzky-Orden v. Bundesvereinigung Kameradschaft 'Feldmarschall Radetzky' [2009], ETMR 14, 9 December 2008 at paragraph 17 to 21.
4 The Panel notes that other governmental bodies have successfully asserted unregistered trademark rights in Policy proceedings in the past. See Skattedirektoratet v. Eivind Nag,WIPO Case No. D2000-1314 and The State of the Netherlands v. Goldnames Inc.,WIPO Case No. D2001-0520 and Bundesrepublik Deutschland (Federal Republic of Germany) v. RJG Engineering Inc.,WIPO Case No. D2001-1401.
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