WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited
Case No. DIE2005-0002
1. The Parties
The Complainant is the Department of Arts, Sport and Tourism, Dublin, Ireland.
The Registrant is Odyssey Internet Portal Limited, Dublin, Ireland.
2. The Domain Name and Registry
The disputed domain name is registered with the IE Domain Registry Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�23,�2005. On August�24,�2005, the Center transmitted by email to the IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue. On August�24,�2005, the IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant was listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September�2,�2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for�.IE Domain Name Registrations (the “Rules”), and the WIPO Center Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on September�15,�2005. In accordance with the Rules, paragraph 5.1, the due date for the Response was October�5,�2005. The Registrant did not submit any response. Accordingly, the Center notified the Registrant’s default on October�7,�2005.
The Center appointed Adam Taylor, James Bridgeman and John P. Gaffney as panelists in this matter on October�19,�2005. The Panel finds that it was properly constituted. Each member of 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
The Complainant is a department of the Government of the Republic of Ireland.
The Complainant was registrant of the disputed domain name between October�4,�2002, and January�30,�2004. The circumstances whereby the Complainant ceased being registrant are not clear.
In February�2005, the Complainant set up a national agency called “Culture Ireland” to promote Irish arts and artists overseas under the aegis of the Complainant. Its remit included the allocation of grants for overseas activity to Irish artists or arts organisations, the funding and facilitation of Irish participation at strategic international arts events and the management of emblematic cultural events in Ireland and abroad.
The Registrant registered the disputed domain name in or about April�2005.
5. Parties’ Contentions
A. The Complainant
Identical or misleadingly similar
The Government agency Culture Ireland was launched by the Complainant in February�2005, and has been widely publicised both nationally and internationally. The disputed domain name is identical to the name of the agency.
The Complainant used a website at the disputed domain name between October 4,�2002, and January�30,�2004, to promote Irish national cultural institutions. The Complainant had intended to continue to use the site for the new agency Culture Ireland to facilitate parties seeking grant aid for promotion of Irish arts abroad or information about the agency. The address “www.” has been printed on the agency’s stationery.
Although “Culture Ireland” is not a registered trade or service mark, there has been a long standing use of that name by the Complainant. The establishment of the new agency and its title, Culture Ireland, was widely publicised at the time of its launch in February�2005. It was only after this date, on April�15,�2005, that the Registrant registered the disputed domain name based on a registered business certificate for the name “Culture Ireland”.
Culture Ireland, the national agency, had already gained a reputation in both Ireland and abroad. The existence of a website with the same name for another purpose can only cause confusion and may cause damage to this national agency.
Rights or legitimate interests
The Complainant is the primary body charged with the promotion of Irish arts inside and outside the State and it has no knowledge of any arts or cultural activities being carried out by the Registrant or of any role it plays in the cultural field.
It appears from the Registrant’s website that it has a role in managing/developing websites but no cultural remit.
Registered or used in bad faith
There is no website available at the disputed domain name. Given that the Registrant has no cultural involvement, its proposed use of the disputed domain name is unclear. But given the nature of the Registrant’s business, there is a strong possibility that it was acquired to encourage the agency Culture Ireland to use the Registrant’s services. If so, there is likely to be a cost implication for Culture Ireland.
B. The Registrant
The Registrant did not reply to the Complainant’s contentions.
6. Discussion and Findings
On a preliminary note, the Panel is not convinced that a Government department has legal personality and wonders whether the Minister heading the department should rather have been the Complainant. However, this is not formal litigation and the point is a technical one. Accordingly, the Panel does not propose to draw any distinction between the Minister and the department in this case.
Paragraph 1.4 of the Policy states: “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met”.
The Registrant has defaulted. Paragraph 13.2 of the Rules (which is identical to paragraph 14(b) of the Rules for Uniform Domain Name Dispute Resolution Policy) states: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.”
The Panel considers that the Registrant’s default does not automatically result in a decision for the Complainant, which must still prove its case to the required standard. Indeed, this is the consensus view under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) – see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“”). That paragraph goes on to say: “…While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”
A. Identical or Misleadingly Similar
The first condition in paragraph 1.1 of the Policy is that the disputed domain name is identical or misleadingly similar to a “Protected Identifier” in which the Complainant has rights.
Under paragraph 1.3 of the Policy, “Protected Identifiers” are defined as:
“1.3.1 trade and service marks protected in the island of Ireland.
1.3.2 personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland.
1.3.3 geographical indications that can prima facie be protected in the island of Ireland. Geographical indications are, for the purposes of this Policy, indications which identify a good as originating in a territory or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. A Complainant is deemed to have rights in a geographical indication for the purposes of this Policy, if it has standing to bring an action based on the alleged infringement of the geographical indication before the courts of Ireland.”
The Complainant acknowledges that it has no relevant registered trade or service mark and instead relies on use of, and reputation in, the name “Culture Ireland”. While the Complainant does not identify which subparagraphs of paragraph 1.3 are relevant, the Panel assumes that the Complainant bases its case on unregistered trade mark rights (otherwise known as “common law rights”) which are covered by paragraph 1.3.1. There is nothing before the Panel which suggests that any of the other “Protected Identifiers” in paragraph 1.3 might apply here.
According to paragraph 1.7 of the WIPO Overview (see above), the consensus regarding the UDRP is that in order to establish an unregistered trade mark a complainant “must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition...”. The Panel considers that this approach applies equally to the Policy.
So the Complainant must show that the name “Culture Ireland” has become a distinctive identifier associated with the Complainant (including the agency it has established) or the Complainant’s services. As a general comment, the Panel observes that the name is of a highly descriptive nature and so the Complainant has some work to do in order to demonstrate acquired distinctiveness.
The Panel deals first with the Complainant’s use of the name “Culture Ireland” before establishment of the agency. Here, the Complainant has done no more than allege “longstanding use” of the name by it and that it had formerly used a website at the disputed domain name from October�4,�2002 to January�30,�2004, to promote Irish national cultural institutions.
These assertions raise more questions than they answer. Is the Complainant relying on any use other than the website? If so, what other use exactly? When did the other use start? How extensive was it? If the only use was as a website, how exactly was the name used? Was this just as a domain name or was it also used as branding on the website? How many visitors did the website attract? Was there any promotion or marketing by reference to the name or website? What happened to the website on January�30,�2004 - did the Complainant voluntarily stop using the name / website or did the disputed domain name accidentally expire or indeed is there some other explanation?
Furthermore, the Complainant has produced no evidence at all in support of its assertions. The kinds of documents which the Complainant might have provided include: website printouts, advertisements or other marketing material; website visitor statistics; evidence of marketing spend; samples of press coverage.
As to the use of the name “Culture Ireland” by the agency established by the Complainant in February 2005, the Complainant asserts that the agency and its name were “widely publicized” at the time of launch and that the agency “has already gained recognition and has established a reputation in both Ireland and abroad”.
Again there is little detail let alone supporting evidence. Just how widely was the agency publicized in February 2005? Why have no examples of this publicity been produced? What activities has the agency undertaken in the six month period between its launch and the filing of this Complaint to generate the claimed reputation and recognition in that relatively short period? Again the Complainant might have exhibited samples of marketing material or details of marketing spend amongst other things.
In light of the lack of detail concerning the period, nature and extent of the Complainant’s use of the name “Culture Ireland”, the failure of the Complainant to provide any evidence at all in support of its assertions, and the highly descriptive nature of the name, the Panel finds that it does not have sufficient information to conclude – even prima facie – that the name “Culture Ireland” is, or has become, distinctive of the Complainant and/or its services. This is notwithstanding that the Registrant has not contested the Complainant’s case.
The Panel concludes that the Complainant has failed to establish the existence of a “Protected Identifier” under paragraph 1.1 of the Policy.
In light of the Panel’s finding above, it is unnecessary to address the second and third factors of the Policy. The Panel stresses that this decision is not intended to prejudge any other proceeding, and this decision does not of course prejudice the Complainant’s right to pursue this matter in the relevant national court.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Adam Taylor
Presiding�Panelist
James Bridgeman
Panelist
John P. Gaffney
Panelist
Dated: November�8,�2005
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