ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Destination Hauraki Coromandel Trust v. Askerov Askar Case No. D2025-3014 1. The Parties The Complainant is Destination Hauraki Coromandel Trust, New Zealand, represented by Create IP, New Zealand. The Respondent is Askerov Askar, Kazakhstan. 2. The Domain Name and Registrar The disputed domain name is registered with Gname.com Pte. Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2025. On July 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Lian Xin Zhou) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 1, 2025. On August 1, 2025, the Respondent sent two email communications to the Complainant, which were subsequently forwarded to the Center. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2025. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2025. On August 9, 2025, the Respondent confirmed that its above-referenced communications could be considered the Respondent’s complete Response.
page 2 The Center appointed Jane Seager as the sole panelist in this matter on August 21, 2025. 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 First established in 1987 as “Coromandel Peninsula Regional Promotions Incorporated”, the Complainant is a charitable trust registered in New Zealand, operated as a council-controlled organization by two trust settlors – the Hauraki Council and Thames District Council. The Complainant is one of thirty regional tourism organizations in New Zealand. The Complainant is responsible for promoting the Coromandel region as a tourist destination. The Complainant works to support local operators, grow sustainable tourism, and highlight the natural, cultural, and seasonal experiences that the Coromandel region has to offer. From April 19, 2000, until around April 19, 2025, the Complainant was the registrant of the disputed domain name. The Complainant had continuously used the disputed domain name to host a website (the “Complainant’s website”) used to share visitor information, host marketing campaigns, provide travel trade resources, and connect people with local tourism businesses in the Coromandel region. In April 2025, the disputed domain name was inadvertently allowed to expire. The disputed domain name was subsequently sold at auction on or around May 30, 2025, initially registered by a third party. The disputed domain name was transferred to the Respondent several days later. In June 2025, the disputed domain name resolved to a website that reproduced the contents of the Complainant’s website and included a link to online gambling services. In July 2025, the website at the disputed domain name was altered to promote exclusively gambling-related services. At the time of this decision, the disputed domain name resolves to a similar website promoting online gambling services targeting Internet users based in New Zealand. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant asserts ownership of the common law trademark “thecoromandel.com” (the “Trademark”) based on 25 years of continuous use in connection with tourism services, including online promotion. The Complainant claims substantial goodwill and reputation in the Trademark, which is widely recognized by third parties, including the New Zealand government, trade associations, businesses, and international visitors. The Complainant argues that the Trademark has acquired distinctiveness and secondary meaning, even though it includes a geographical term. In support of these claims, the Complainant observes, inter alia, that the Complainant’s website hosted listings for over 1,200 third-party businesses and tourism experiences and enjoyed substantial amounts of online traffic; the Trademark has been featured in extensive advertising campaigns, including print media, billboards, radio, and social media; the Complainant has spent substantial amounts on advertising over the past ten years; and the Trademark appears on signage, vehicles, and promotional materials distributed throughout New Zealand. The Complainant submits that geographical terms can be protected under the Policy if evidence of their use shows that they have become distinctive of the goods or services of a particular trader. The Complainant argues that by reason of its longstanding use, the Trademark is performing the function of a trademark in distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade and has acquired the requisite secondary meaning. The Complainant asserts that the
page 3 Trademark is not the geographical region on its own, but also includes “.com”, which adds to the distinctiveness of the trademark. The Complainant states that trademarks featuring domain name extensions are capable of registration in New Zealand under the Trade Marks Act 2002. The Complainant submits that the disputed domain name is identical to the Trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has no connection to the Complainant, the Trademark, or the Coromandel geographical region. The Complainant has not authorized the Respondent to use the Trademark or the disputed domain name. The Complainant notes that the Respondent initially hosted a cloned version of the Complainant’s website, which included links to online gambling services, and that the disputed domain name now resolves to another gambling website that in turn promotes the website of a third party. The Complainant asserts that the Respondent’s use of the disputed domain name promotes online gambling services, which are illegal in New Zealand except through authorized entities. The Complainant argues that the website misrepresents there to be a connection to the Coromandel region and falsely implies endorsement by New Zealand gambling authorities. The Complainant submits that the Respondent is not commonly known by the disputed domain name, nor does it have any relevant trademark registrations or legitimate business activities associated with it. The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that subsequent to its expiry in 2025, the disputed domain name was initially acquired by a known domain speculator with a history of trademark-abusive registrations, and that the disputed domain name was transferred to the Respondent within a week, violating ICANN’s rules for transfer. The Complainant argues that the Respondent is either associated with said domain speculator or knowingly participated in bad faith conduct. The Complainant notes that the disputed domain name previously resolved to a website that reproduced the contents of the Complainant’s website, including a copyright notice referencing the Complainant, demonstrating the Respondent’s awareness of the Complainant and the Trademark at the time of registration. The Complainant asserts that the Respondent’s use of a privacy service to mask its identity indicates a deliberate attempt on the part of the Respondent to avoid detection and amounts to further evidence of bad faith. The Complainant notes that the disputed domain name was the Complainant’s principal business tool, and its ongoing registration by the Respondent disrupts the Complainant’s operations and those of third parties who had listings on the Complainant’s website. The Complainant argues that the current use of the disputed domain name has caused consumer confusion, as Internet users reasonably expect the disputed domain name to resolve to the Complainant’s website. The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent asserts that the Complainant has no registered trademark rights in “The Coromandel” or “thecoromandel.com”. The Respondent argues that the Complainant does not possess exclusive rights to the term “The Coromandel”, which is inherently geographic in nature and commonly used, thus, the Complainant has not established valid rights under paragraph 4(a)(i) of the Policy. The Respondent asserts legitimate interests in the disputed domain name on the basis that the website to which the disputed domain name currently resolves does not replicate or pass itself off as the Complainant’s website, and there is no misleading branding or claim of affiliation with the Complainant. The Respondent argues that use of a generic and geographic domain name is legitimate when used in good faith, as is the case here. The Respondent asserts that it acquired the disputed domain name legally through a public auction following the expiry of the disputed domain name on April 19, 2025. The Respondent states that at the time of acquisition, the disputed domain name was available to the public and not subject to any active trademark registration or notice of dispute. The Respondent further argues that the website at the disputed domain name contains original, unrelated informational content about online entertainment and does not use or imitate any trademarks, logos, or copyright material related to the Complainant. The Respondent denies
page 4 having knowledge of or intention to target the Complainant at the time of registration of the disputed domain name. Any temporary resemblance to the Complainant’s prior site has been removed, and no such content exists today. The Respondent requests that the Complaint be denied. 6. Discussion and Findings In order to prevail, the Complainant must demonstrate on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy: (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 disputed domain name; and (iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant does not assert registered trademark rights. As noted above, the Complainant asserts common law trademark rights in “thecoromandel.com”. As a preliminary point, although the Complainant states that “Trademarks featuring domain name extensions are capable of [registration] under the NZ Trade Marks Act 2002”, the Panel notes that the Act itself is silent on this particular point. The Panel further notes that the New Zealand Intellectual Property Office has issued practice guidelines, which state, inter alia, “Standard address code material is considered to have no distinctive character and therefore elements such as ‘www’, ‘.co’ and ‘.com’ are considered unregistrable prima facie. Examination of domain names will focus on any identifier as the potentially distinctive element of the mark. For example, the identifier in IPONZ’s domain name www.iponz.govt.nz is ‘iponz’.”1 The Panel therefore considers the relevant identifier to be “The Coromandel”, excluding the generic Top-Level Domain “.com”. The geographic term “The Coromandel” is used to refer to a peninsula on the North Island of New Zealand. The term is also used to refer to a coastal region in India, “The Coromandel Coast”. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.6: “Geographical terms used only in their ordinary geographical sense, except where registered as a trademark, would not as such provide standing to file a UDRP case. Geographical terms which are not used solely in a geographically descriptive sense (e.g., “Nantucket Nectars” for beverages) and which are registered as a trademark, would provide standing to file a UDRP case. Panels have exceptionally found that geographical terms which are not registered as trademarks may support standing to file a UDRP complaint if the complainant is able to show that it has rights in the term sufficient to demonstrate consumer recognition of the mark in relation to the complainant’s goods or services (often referred to as secondary meaning). 1 See “https://www.iponz.govt.nz/get-ip/trade-marks/practice-guidelines/current/absolute-grounds-distinctiveness/”
page 5 Under the UDRP however, it has generally proven difficult for an entity affiliated with or responsible for a geographical area (which has not otherwise obtained a relevant trademark registration) to show unregistered trademark rights in that geographical term on the basis of secondary meaning. It is further noted that the Report of the Second WIPO Internet Domain Name Process ultimately declined to recommend specifically extending protection to geographical terms as such under the UDRP.” The question of whether official authorities can establish unregistered trademark rights in a geographic name was considered in Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 (): “As a general rule, geographical terms are not per se protected by the Policy [...] That is because geographical terms ordinarily cannot serve as trademarks for the geographical areas to which they relate […] Geographical terms usually distinguish goods and services emanating from one region from those emanating from a different region, and this indication of geographical origin is distinct from the source-identifying function of trademarks. Trademarks serve to identify a specific trader as the origin of specific goods and services, and a geographical term typically cannot identify a single trader with sufficient particularity […] However, complainants may be able to establish trademark rights in a geographical term if the term is […] used, in connection with goods and services unrelated to a geographical location. Under these circumstances, a trader’s use of a geographical term will not create a goods-place association in the minds of consumers, but rather will create an association between the goods and the trader itself […]” The Panel notes that in the present case, the Complainant has attempted to establish common law trademark right in “The Coromandel” as a source identifier for its tourism promotion services. Notwithstanding the Complainant’s extensive and longstanding use of the term in connection with its tourism promotion services, the difficulty that the Complainant faces in the present case is that, based on the evidence on record, the Complainant’s services relate exclusively to the provision of information about tourism services located in the Coromandel region. There is no evidence to suggest that the Complainant’s website served as a tourism platform for the promotion of goods or services originating from any other region or location. As such, the goods and services promoted under the relevant identifier cannot be said to lack a goods-place association with the Coromandel region itself, and would therefore not support a claim of common law trademark rights. See also in this regard Einwohnergemeinde Solothurn, Verein “Region Solothurn Tourismus”, Verein “Kanton Solothurn Tourismus” v. M.A. Stenzel, WIPO Case No. D2019-1164 (): “As regards unregistered trade mark rights, the Complainant has supplied a substantial amount of evidence regarding its promotion of Solothurn as a travel destination. The Complainant claims that this demonstrates consumer recognition of the geographical term ‘Solothurn’ in relation to the Complainant’s goods and services, otherwise known as ‘secondary meaning’, and that the term ‘Solothurn’ therefore allegedly performs the function of a trade mark. […] [H]ere, the Complainant has not provided any evidence of use of the term ‘Solothurn’ on goods or services unconnected with the geographic location. Indeed, the Complainant has specifically emphasized that the term Solothurn is exclusively associated with the city of that name.” This position is consistent with the panel’s reasoning in Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis, WIPO Case No. D2016-2601 (): “[…] where the geographical term at issue has been used and/or registered only in connection with goods or services related to the geographic locale, UDRP panels typically find an absence of trade mark rights.”
page 6 In light of the foregoing, the Panel does not find that the Complainant has established common law trademark rights in the term “The Coromandel” for purposes of standing under the Policy. The Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests In light of the Panel’s findings under the first element, the Panel does not consider it necessary to enter findings under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In light of the Panel’s findings under the first element, the Panel does not consider it necessary to enter findings under paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. /Jane Seager/ Jane Seager Sole Panelist Date: September 19, 2025
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