WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Einwohnergemeinde Solothurn, Verein “Region Solothurn Tourismus”, Verein “Kanton Solothurn Tourismus” v. M.A. Stenzel
Case No. D2019-1164
1. The Parties
The Complainant is Einwohnergemeinde Solothurn, Switzerland, Verein “Region Solothurn Tourismus”, Switzerland, Verein “Kanton Solothurn Tourismus”, Switzerland, represented by Pestalozzi Rechtsanwälte AG, Switzerland.
The Respondent is M.A. Stenzel, United States of America (“United States”), represented by ESQwire.com PC, United States.
2. The Domain Name and Registrar
The disputed domain name <solothurn.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2019. On May 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2019, 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2019. Upon receipt of a request by the Respondent, the Center automatically extended the due date for Response to June 22, 2019, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on June 21, 2019.
The Center appointed Adam Taylor, The Hon Neil Brown Q.C., and Tobias Zuberbühler as panelists in this matter on July 15, 2019. 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
Solothurn is a city in Switzerland with a history dating back to at least the Roman era.
The First Complainant is the city of Solothurn in the form of the residential community of Solothurn (“Einwohnergemeinde”), a Swiss public corporation. The Second and Third Complainants, which have existed for over 100 years and 27 years respectively, are associations under Swiss law. Their purpose is to promote tourism to the city of Solothurn and the surrounding area. All three Complainants are collectively referred to below as “the Complainant” except where it is necessary to refer to them separately.
The Complainant’s activities include running a tourism office, publicising seminars and events in the city, co-operating with foreign partner cities, offline advertising directed at visitors and potential visitors including printed leaflets, and promoting the city on “www.solothurn.ch” as well as on other websites and social media. The Complainant registered <solothurn.ch> on January 15, 1996.
The disputed domain name was registered on May 22, 1997.
According to archive records produced by the Complainant, there was originally no content on the website at the disputed domain name. From 2000 to around 2004, there was an “under construction” image together with a photograph of a beach and an invitation: “For valuable resources click here”. This linked to a website at “www.domaincenter.com” which itself included links inviting users to register a domain name, to search the web, and to visit eBay (“4 million reasons you’ll find it here”).
Thereafter the website at the disputed domain name was either blank, or contained information directed to the web hosting account holder, or promoted domain name and website services from a provider named “Yarie”.
By April 2019, the website comprised photographs of Singapore and Iceland.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain name is identical to a trade mark in which the Complainant has rights.
The Complainant has used the unregistered trade mark “Solothurn” intensively over the years such that it can demonstrate secondary meaning in the term.
Solothurn and its surrounding area are well known as a traditional tourist region. There is evidence that it has been marketed to tourists since the 1890s. It has been listed in travel guides from as early as 1910.
An article about Solothurn on the BBC website confirms the widespread recognition of the geographic mark “Solothurn” and of the Complainant’s international activities for this “brand”.
The term “Solothurn” is also used in connection with services associated with tourism, e.g., organizing seminars or event and guided city tours – provided under the name “Solothurn Services”.
The brand / market penetration of “Solothurn” both inside and outside Switzerland is corroborated by the fact that there were almost 150,000 overnight stays in Solothurn in 2018, generating CHF 367,000 in city taxes.
Accordingly, the Complainant has always used the term “Solothurn” to market the city / region of Solothurn as a tourist destination and also to promote the related services.
The term “Solothurn” refers only to the city, region, and canton of Solothurn in Switzerland and it bears no other meaning. No other goods or services in the world bear the sign “Solothurn” without addition.
The term “Solothurn” performs the function of a trade mark.
The disputed domain name is identical to the unregistered mark “Solothurn”.
The Complainant also possesses “trademark-like” protection in the term “Solothurn” under the Swiss Unfair Competition Act – which qualifies as trade mark rights under the first element of the Policy – as well as name protection under the Swiss Civil Code, and indication of source protection under the Swiss Trademark Protection Act and various international treaties.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent is not making any bona fide use of the disputed domain name. The Respondent offers no goods or services at all, let alone any in relation to the city or region of Solothurn. The Respondent’s website is basically void of content, or at least anything relating to the disputed domain name or even Switzerland.
The Complainant attempted to contact the Respondent through the Registrar, which informed the Complainant by telephone that the disputed domain name was generally available for sale but only within a bidding process. The Complainant was also informed that, prior to any bidding process, one would need to hire a domain advisor for initially CHF 75.35. Later, a higher amount would need to be paid, depending on the price to be paid for the disputed domain name. In view of this illicit domain name use and threat, the Complainant declined to participate in such bidding process.
The disputed domain name was obviously only “grabbed” to profit unlawfully, both by (i) generating links and income from advertisements, which is confirmed by the advertisement placed on the website by eBay; and (ii) selling the disputed domain name to the highest bidder.
The domain name <domainnames.net>, used for the email address shown in the “contact us” page of the Respondent’s website, shows that the Respondent’s only purpose was to sell the disputed domain name.
The Respondent is located in the United States and apparently has no connection with Solothurn or even with Switzerland.
The Respondent’s absolute lack of legitimate interests of the Respondent – neither commercial (e.g. sale of goods or services), nor noncommercial, nor in the sense of a fair use – is the important difference with previous UDRP decisions relating to geographic terms and is also the reason why this case must be treated differently.
It is obvious that the disputed domain name was registered and is being used in bad faith.
The Respondent acquired the disputed domain name for the purpose of selling it to the Complainant as registrant / user of the “Solothurn-sister-domains” for valuable consideration in excess of its out of pocket costs.
This is proven by the following facts: that the disputed domain name was registered only a few months after the Complainant had successfully launched its new website at “solothurn.ch”; that the Respondent’s website has always been devoid of meaningful content; that the Respondent is located in the United States; that the Respondent’s only interest is to take unlawful advantage of the Complainant’s trade mark by means of the eBay advertisement, presumably pay-per-click (“PPC”), and to sell the disputed domain name to the highest bidder; and that the Respondent sought to conceal his/her identity by using an anonymous email address on the website.
In addition, the Respondent is listed as one of the world’s largest domain owners, apparently with a specific interest in geographic domain names. The Respondent is engaged in a pattern of trade mark-abusive domain name registrations.
The Respondent cannot credibly claim to have been unaware of the meaning of “Solothurn”, which is a unique geographic term and highly specific.
As the term “Solothurn” is a unique geographic designation, Internet users will automatically connect the Respondent’s website with the city and tourism region Solothurn. Internet users will also suspect that behind the operator of the website there is either an official public body or an official tourism association of the region. The fact that the current website “www.solothurn.com” contains pictures of cities, regions, and countries that have no relation to Solothurn, Switzerland, or even Switzerland, is all the more confusing, particularly given that the Complainant’s partner cities are neither located in Iceland, nor in Singapore, and that the Complainant’s official partners do not feature on the Respondent’s website.
This risk of confusion, as well as the longstanding and intensive activity of the Complainant in marketing the brand “Solothurn”, entitles the Complainant to the disputed domain name.
A summary of the Respondent’s contentions is as follows:
The Complainant should be barred by the doctrine of laches because it has waited over two decades to initiate this proceeding, despite being aware of the disputed domain name for that period.
The Complainant’s reliance on purported non-trade mark rights under Swiss law is not applicable.
The Complainant does not hold trade mark rights for the geographic term “Solothurn” in any jurisdiction. Geographical identifiers, without more, that are purely descriptive of locations are generally not registrable as trade marks or subject to trade mark protection. This because it is not a unique source identifier for a product or service. The Complainant cannot monopolise a geographic descriptive term.
Moreover, the Second WIPO Report dated September 3, 2001, concluded that geographical indications should remain outside the scope of the Policy.
Many UDRP cases have concluded that the mere fact that the complainant exists at a geographical location included in a trade mark is not a sufficient basis to capture a geographical domain name standing alone – including a previous case involving the Respondent relating to <rouen.com>: Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348.
For a name be considered a trade mark for the purposes of the Policy, evidence must demonstrate that the name of a geographical location is in fact performing the function of a trade mark. That is not the case here.
The Respondent has rights and legitimate interests in the disputed domain name.
Registration of a geographic common word domain name of itself can establish a Respondent’s legitimate interest in that domain name.
The Respondent registered the disputed domain name solely because it is a common geographic word that he and anyone else is entitled to register. The Respondent has registered many other common geographic term domain names over the years.
The Respondent has been registering common word domain names for investment and development since 1997. Such a business itself constitutes a legitimate interest.
The Complainant has not demonstrated that the disputed domain name was registered or used in bad faith.
The Respondent registered the disputed domain name solely in good faith because it acquired a geographic domain name for development.
The Respondent did not register the disputed domain name with the Complainant’s purported trade mark in mind, whether to sell to the Complainant or otherwise.
Nor is there any evidence of confusion. No links have ever been designed to target the Complainant or mislead consumers.
In any case, the Complainant’s long delay before filing this proceeding raises the inference that the Complainant did not truly believe that the Respondent had acted in bad faith.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
– the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
– the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
– the disputed domain name has been registered and is being used in bad faith.
A. Multiple Complainants
The principles governing the question of whether a complaint may be brought by multiple complainants are set out in section 4.11 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Applying those principles, the Panel is satisfied that the Complainants, all official bodies connected with the city of Solothurn, have a specific common grievance against the Respondent and that it would be equitable and procedurally efficient to permit the consolidation.
B. Laches / Delay
It is unnecessary to consider this issue, which the Respondent has raised, in view of the Panel’s conclusion under the first element below.
C. Identical or Confusingly Similar
The Complainant does not claim ownership of any relevant registered trade marks. Instead it relies on unregistered trade mark rights as well as a range of “trademark-like” and other rights allegedly arising under Swiss law.
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.
Section 1.6 of the WIPO Overview 3.0 , which addresses the issue of rights in geographical terms, states as follows:
“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).
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”.
Clearly, therefore, the Complainant faces a difficult task in establishing that it has acquired unregistered trade mark rights in the geographical term “Solothurn”.
In this context, the Complainant has invoked BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717 (<aberdeenairport.com>), citing Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047 (<brisbanecity.com>): “Thus, the important issue in a case such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade”.
Just before the passage quoted by the Complainant, the panel in the Brisbane City case had stated that the legal authority of a geographical area did not, as a matter of principle, have an exclusive right to the name of that area but that it might nonetheless have a trade mark right in the name of that area – depending on the facts.
However, the facts in the Brisbane City case do not assist the Complainant because the panel rejected the assertion that the unregistered trade mark “Brisbane City” distinguished the goods and services of the complainant (Brisbane City Council) from any other person, concluding that the mark was purely descriptive of the geographical location.
Nor do the facts in the Aberdeen Airport case help the Complainant because, as the panel in that case pointed out, the domain name at issue referred not just to the city itself but to a facility, the airport, which served the city.
A number of UDRP cases indicate that there may be exceptional circumstances where official authorities can establish unregistered trade mark rights in a geographic name. See, e.g., Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 (<zermatt.com>), where the panel stated:
“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 found that, although “Zermatt” was a descriptive term when used in connection with the geographical area itself, and with goods and services that obviously emanate from the resort area of Zermatt, the term was inherently distinctive when used in connection with goods and services that lacked a goods-place association to Zermatt.
A similar approach was taken in Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis, WIPO Case No. D2016-2601 (<gstaad.com>). In that case, it was an important factor that the complainant’s marks were used in respect of a wide range of goods and services that extended far further than merely the provision of tourist related information in relation to a geographical region.
Whereas, here, the Complainant has not provided any evidence1 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.
The Complainant specifically seeks to distinguish the present case from both the Zermatt case and the Gstaad case, as well as from some other previous UDRP decisions relating to geographic terms, but only on the basis of the Respondent’s alleged lack of rights or legitimate interests under the second element – and not in the context of the first element.
For the above reasons, the Panel declines to hold that the Complainant has established unregistered trade mark rights in the geographic term “Solothurn”.
Nor does the Panel consider that the Complainant is entitled to rely on “trademark-like” rights or the other forms of statutory name / source protection under Swiss law invoked by the Complainant. This is because the first element of the Policy is expressly limited to “trademark or service mark” rights. See, e.g., Land Sachsen-Anhalt v. Skander Bouhaouala (<sachsen-anhalt.com>), WIPO Case No. D2002-0273, where the complainant, which had failed to establish unregistered trade mark rights in the geographic term “Sachsen-Anhalt”; was also barred from relying on alleged long-standing, unspecified, statutory rights under German law.
The Panel wishes to add that of course its decision in this proceeding does not prevent the Complainant from pursuing a case in the Swiss courts if it considers that it has grounds to do so.
The Panel concludes that the Complainant has failed to establish the first element under the Policy.
D. Rights or Legitimate Interests
It is unnecessary to consider this issue in view of the Panel’s conclusion under the first element.
E. Registered and Used in Bad Faith
It is unnecessary to consider this issue in view of the Panel’s conclusion under the first element.
For the foregoing reasons, the Complaint is denied.
The Hon Neil Brown Q.C.
Date: July 25, 2019
1 The Panel adds that it has not admitted those parts of the Complainant’s evidence which have not been translated into English – the language of the proceeding. However, the Panel has been briefed as to their contents by the German-speaking member of the Panel and can confirm that, even had they been admitted, they would not have affected the outcome.