The Complainant is Gstaad Saanenland Tourismus of Gstaad, Switzerland, represented by Weinmann Zimmerli, Switzerland.
The Respondent is Connecting Concepts BV of Amsterdam, the Netherlands, represented by Mr. Drs. C.W.I van Vlokhoven, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with M, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2014. On September 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 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.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 23, 2014. The Response was filed with the Center on October 16, 2014.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 21, 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 paragraph 7 of the Rules.
On the same day, the Center received a supplemental submission from the Complainant. 4. Factual Background
The Complainant owns trademark rights in the trademark GSTAAD inter alia through International trademark registration no. 894936 GSTAAD & design, registered on June 26, 2006 in connection with goods and services in classes 25, 39, 41, 42, 43 and 44, Swiss trademark registration no. 547368 GSTAAD & design, registered on June 26, 2006 in connection with goods and services in classes 25, 39, 41, 42, 43 and 44; and US trademark registration no. 3578306 GSTAAD, registered on February 24, 2009 in connection with services in classes 41, 43 and 44 (hereinafter referred to as the “GSTAAD Marks”). The Complainant’s trademarks cover inter alia the territory of the Netherlands, where the Respondent has its principal place of business. In addition, the Complainant owns further trademarks containing GSTAAD and additional word and design elements and is the owner of several domain names containing GSTAAD, such as .
The disputed domain name was registered on March 26, 2013 and is used in connection with a website providing information on the history of the Gstaad valley as well as offering postcards and promoting a chalet on sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the GSTAAD Marks have a very high degree of reputation, and stand for premium quality services, especially with regard to cultural events, leisure, the hotel sector as well as all services provided by restaurants. It states that events like the tennis tournament Suisse Open GSTAAD and the Menuhin Festival GSTAAD are being promoted using the GSTAAD Marks and that the positioning of the GSTAAD Marks in the prime sector for touristic services has made the trademark well known all over the world. The Complainant offers to “additionally submit a broad scope of evidence to prove his market position and the high profile as well as the secondary meaning of his trademarks and kindly requests the Panel to allow the Complainant to prove the above statements further if there is any doubt about their validity.”
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the GSTAAD Marks as it contains the word “Gstaad” and as the addition of the word “Valley” does not affect the finding of confusing similarity as such word is highly descriptive.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as it is not descriptive, as the Respondent is using the disputed domain name only for the purpose of attracting Internet user to his website by creating a confusion with the Complainant’s trademarks and in order to sell his goods such as postcards and a chalet, which is not bona fide under the Policy, as the Respondent is not commonly known by the disputed domain name, and as the Respondent cannot claim making a legitimate non-commercial or fair use of the disputed domain name since the domain name is used for selling postcards and a chalet.
(3) The Complainant contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that the Respondent must have known about the Complainant and its trademarks as the Complainant as well as the Complainant’s trademarks are well known and used in connection with cultural and sports events that are known worldwide. In addition, the Respondent must have known about the Complainant’s position as the Respondent or Mr. Huijbregts, the person acting in the name of the Respondent, is the owner of a chalet called “Flueblümli” that is located in the Gstaad valley and admits to be familiar with the Gstaad valley and its history and therefore the Respondent also had to be familiar with the Complainant’s trademarks. With regard to bad faith use, the Complainant contends that the Respondent intends to attract Internet users to its website for commercial gain by deceiving the Internet users with a confusing domain name that contains a combination of the Complainant’s trademarks with a generic and highly descriptive addition. It argues that such finding is confirmed by the fact that the Respondent operates in a business field and offers goods - such as postcards - that are covered by further GSTAAD trademarks owned by the Complainant. B. Respondent
The Respondent denies the Complainant’s contentions. It states that it uses the disputed domain name for a website that shows the beauty of the nature of Gstaad Valley on the basis of old travel stories and old postcards, which are no longer produced and which are offered in auctions only. In addition, it allows third parties to place their property for sale on the website for free and itself offers a chalet.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent states as follows:
(1) The word “Gstaad” has stronger significance as a geographic term than as a trademark or company name and the Complainant has no exclusive rights in the word “Gstaad”, which is purely descriptive. Furthermore, the Respondent uses the disputed domain name in connection with a website referring to such descriptive sense. The Respondent further argues, that the Complainant is not known under the name “Gstaad”, but under the name “Gstaad Saanenland Tourismus”.
(2) The Respondent contends that the addition of the word “valley” to the descriptive word “Gstaad” results in a distinctive term. Furthermore, it states that the GSTAAD Marks are neither registered for postcards nor for real estate or brokerage and that the Respondent is therefore not operating in the business field of the Complainant. It argues that the disputed domain name is descriptive and that it uses the disputed domain name in connection with a website referring to such descriptive sense. The Respondent also denies that the Complainant is well known under the name “Gstaad”. Additionally, it argues that the Respondent is using the disputed domain name in a legitimate non-commercial manner without misleading consumers, without any purpose of commercial gain, and without harming the reputation of the Complainant, and that the benefits of the auction of postcards will be spent to protect nature. It further states that even if the present use of the disputed domain name was not to be regarded as non-commercial, it would at least constitute a bona fide offering of goods and services.
(3) The Respondent states that it was not familiar with the GSTAAD Marks and that the mere fact that Mr. Huijbregts owns a chalet in the Gstaad valley is not sufficient for a finding of bad faith. It states that it had no intention to create confusion with and abuse the goodwill of the Complainant. It further argues that the geographical identifier “Gstaad valley” does not only refer to “Gstaad” but also to Gsteig, Saanen and other places in the valley and that the website refers not only to Gstaad but to the entire valley.
Finally, the Respondent requests the Panel to order the Complainant to pay the costs of the present proceedings, including necessary legal costs. 6. Discussion and Findings
The first point to be dealt with is the admissibility of the Complainant’s supplemental submission. The Rules do not allow the parties to file supplemental submissions on their own volition, and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence. Grounds justifying new submissions are generally those regarding the existence of new pertinent facts that did not arise until after the complaint was filed. In particular, if the respondent raises objections that reasonably could not have been anticipated when the complaint was filed, a panel can give the complainant a right to reply to the submission or may accept the complainant’s unsolicited additional submission (cf. UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENTERPRISES,WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim,WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line,WIPO Case No. D2000-1151). In the present case, the Complainant does not cite any exceptional circumstances necessitating further submissions, nor does the Response itself disclose any new facts or new legal authority unavailable at the time the Complaint was submitted. Instead, the Complainant appears to have made the supplemental filing solely to reply to the argumentation brought forward in the Response. Therefore, the reply is not justified under the Rules (cf. AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553; UNIVERSAL CITY STUDIOS, INC. v. G.A.B. ENTERPRISES, supra; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485) and the Panel elects not to accept the Complainant’s supplemental submission and has not relied on it in reaching this Decision. In any event, the Panel wishes to point out that considering the supplemental submission would not have changed the outcome of the present decision.
Secondly, the Complainant’s request “to allow the Complainant to prove the above statements further if there is any doubt about their validity” is not applicable here. In the normal course of things, it is consensus view that, based on the nature of the present proceeding, there is an obligation on the part of a Complainant to provided all the information necessary to prove its case from the material contained in the complaint and its annexes alone (cf. inc. v. Sand WebNames,WIPO Case No. D2001-0076; Doğan Gazetecilik İnternet Hizmetleri ve Ticaret A.S v. NA VeliNA (Enes Oğuş),WIPO Case No. D2013-1369). It is not the function of any panel to request additional documentary evidence from either party in order to substantiate their allegations, except e.g., where new evidence facts are raised in the response that the complainant could not have reasonably foreseen in its initial pleadings.
Finally, the UDRP does not provide for damages and attorneys’ fees to the prevailing party.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s GSTAAD Marks and is confusingly similar to such marks.
Some geographical terms may be protected under the Policy, if the complainant has shown that it has rights in the term and that the term is being used as a trademark for goods or services other than those that are described by or related to the geographical meaning of the term (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.5 with further references).
The fact that some of the Complainant’s GSTAAD Marks include additional graphical elements does not hinder a finding of confusing similarity under the Policy. It is well established that the similarity between a trademark and a disputed domain name is not eliminated by the fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932).
The additional word “valley” in the disputed domain name is merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of geographic identifiers, such as “valley” (cf. Six Continents Hotels, Inc. v. Daniel Kirchhof, Unister GmbH,WIPO Case No. D2010-1960 ( et al.); Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof,WIPO Case No. D2009-1661 ()).
Finally, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
Here, the Complainant has submitted that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent, however, denies the Complainant’s contentions and argues that it has rights or legitimate interests in the disputed domain name based on the generic meaning of the disputed domain name and the use of the disputed domain name in connection with a website associated with its generic meaning.
If a complainant owns registered trademark rights in a geographical term, it is well established that such rights do generally not prevent third parties to use domain names consisting of the respective geographic term in connection with a website which refers to geographical meaning as geographical terms are treated as generic terms under the Policy (cf. NEUSIEDLER AKTIENGESELLSCHAFT v. VINAYAK KULKARNI,WIPO Case No. D2000-1769 (); Junta de Andalucia Consejeria de Turismo, Comercio y Deporte, Turismo Andaluz, S.A. v. Andalucía.Com Limited,WIPO Case No. D2006-0749 (); Ministre des Relations internationales, de la Francophonie et du Commerce extérieur (Minister of International Relations, La Francophonie and External Trade), acting in this proceeding for and on behalf of the Government of Québec v. A, Ltd.,WIPO Case No. D2013-2181 ().
In the present case, the Panel finds that the Respondent can rely on rights or legitimate interests in the disputed domain name based on the following grounds:
- The disputed domain name does not refer primarily to the village “Gstaad” in Switzerland but to the region “Gstaad valley”, which is a geographical region which includes other places in the valley as well.
- The Panel finds that the Respondent uses the disputed domain name commercially. Such use, however, refers to the geographical meaning of the disputed domain name in that the Respondent provides information on the Gstaad valley and offers historical postcards of such region as well as a chalet located in such region for sale.
- There is no indication that the Respondent has used the disputed domain name to target the Complainant on its trademark. The Respondent does not appear to use the Complainant’s protected trademark “GSTAAD & design” on its website. Moreover, that the Respondent has not tried to mislead Internet users with regard to the origin of the content provided on the website available at the disputed domain name and seems to use the disputed domain name in a manner related to its geographical sense, rather than in a manner related to the Complainant’s trademark.
.Therefore, the Panel finds that the Complainant has not satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
In the present case, the Panel finds that the Respondent did not register the disputed domain name with positive knowledge of the Complainant’s trademark rights and therefore in bad faith. Although it is beyond dispute that the Respondent was familiar with the village of Gstaad and its surroundings, it is not established that the Respondent had knowledge of the Complainant’s registered rights in the GSTAAD Marks. In this regard, the Complainant contends that the GSTAAD Marks are well known worldwide. However, it does not provide any evidence with regard to the extent of the use of the GSTAAD Marks or the fact that they are well known, but merely refers to the decision Gstaad Saanenland Tourismus v. Beat Schnydrig,WIPO Case No. D2014-0831 (). The Panel cannot simply follow the findings of the panel in Gstaad Saanenland Tourismus v. Beat Schnydrig on this point, as each case is decided on its merits and evidence submitted. The Panel further notes that the factual circumstances of that case appear to differ from the circumstances of this case. In the present proceeding, the Complainant has failed to establish that the GSTAAD Marks are well known. As a result, from the facts presented to the Panel, the Panel cannot accept the Complainant’s contention that the Respondent knew about the registered GSTAAD Marks at the time of the registration of the disputed domain name. In any event, as the Panel has found above, the Respondent’s use of the disputed domain name relates to the generic and geographical sense of the term and the Respondent does not appear to target the Complainant.
Consequently, the Panel finds that the Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.
This Decision shall not prevent any party from submitting the dispute to a court of competent jurisdiction for independent resolution. 7. Decision
For the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Date: November 14, 2014
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