eThekwini Municipality v. Richard Mandanice

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eThekwini Municipality (formerly the Durban Metropolitan Council) v Domain Strategy Inc

Case No. D2002-0204

1. The Parties

The Complainant is eThekwini Municipality (formerly the Durban Metropolitan Council) of PO Box 5588, Durban 4000, the Republic of South Africa.

The Respondent is Domain Strategy Inc of 959 Route 108, Bury, Quebec, Canada.

2. The Domain Name and Registrar

The domain name in dispute is <durbanexperience.com> and is registered with Dotster Inc., of 11807 N.E. 99th St., Suite 100, Vancouver, WA 98682, U.S.A.

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution

Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on August 26, 1999 ("the Policy"), in accordance with the

Rules for Uniform Domain Name Dispute Resolution Policy, also adopted by ICANN

on October 24, 1999 ("the Rules"), and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center

(the "Center") on March 1, 2002 (by email) and on March 7, 2002

(in hardcopy). Following verification of the registration of the domain name

and other details with the Registrar (Dotster Inc) on March 7, 2002,

the Center completed its compliance checklist on March 11, 2002, and

then notified the Respondent of the Complaint and the commencement of administrative

proceedings, together with a copy of the Complaint, on the same day. This was

done in accordance with paragraph 2(a) of the Rules by email, facsimile communication

and post/courier, addressed to the domain name registrant, administrative, and

technical contact, (Richard Mandanice of Domain Strategy Inc). In accordance

with the Rules and Supplementary Rules, the Respondent was given until March 31, 2002,

in which to file a Response.

3.3 On April 3, 2002, the Center issued a Notification of Respondent Default

to the Respondent by email and post/courier, stating that it had received no

Response within the specified time, and that it would now proceed to the appointment

of an Administrative Panel.

3.5 On April 9, 2002, the parties were notified of the appointment of the administrative

panel to be composed of Staniforth Ricketson (as sole member) and the projected

decision date of April 23, 2002.

3.6 In light of the above, the Panel finds that:

- The Complaint was filed in accordance with the requirements of the Rules

and the WIPO Supplemental Rules.

- The Respondent was properly notified of the Complaint, in accordance with

paragraph 2 of the Rules.

- The Panel was correctly constituted.

3.7 No communication has been received from the Respondent at any time during

these proceedings, although the Panel would have been prepared to receive and

consider such a communication up to the date of finalization of the decision.

In the absence of any response by the Respondent, the Panel now proceeds to

determine the dispute on the basis of the Complaint under paragraph 5(e) of

the Rules.

4. Factual Background

4.1 The Complainant is the local government of the City of Durban, located

in the Province of KwaZulu-Natal in the Republic of South Africa. It is asserted

that it has used the mark "Durban Experience" since 1985, when

it held an internationally marketed exhibition of the City of Durban that was

attended by thousands of South Africans and tourists. A central feature of this

exhibition was an audiovisual presentation called the "Durban Experience"

(Complaint, par 2.2.1). It is asserted further that, following the "overwhelming

success" of the exhibition, the Complainant continued to use the "keynote

‘Durban Experience’ presentation as a central means of marketing the City of

Durban (Complaint, par 2.2.2). No detail, however, is given of the way in which

this "marketing" was carried out in this post-Exhibition period.

4.2 The Complainant then states that in 1994 it launched a website that had,

and still has, as its central theme the "Durban Experience" (Complaint,

par 2.2.3). Various newspaper items relating to the initial launch of the website

are contained in annexure "C" to the Complaint. It is stated that

the words "Durban Experience" were used as a central theme on the

website, although the actual web address was http://www.dbn.org. There is a

further reference to archival material relating to the website going back as

far as 1996 that is contained at http://web.archive.org/web/*/http://www.durbanexperience.com.

4.3 The Complaint states further at par 2.2.4 that the Complainant reserved

a number of domain names in 1999, including <durbanexperience.com> on

August 13, 1999. It is stated that its reason for reserving the domain

was to extend "its longstanding marketing campaign of the City of Durban

through the catchphrase ‘Durban Experience’, which has become synonymous with

visits to the City. It is stated further that the domain name was renewed in 2000,

but, for various reasons, was not renewed when the registration lapsed on October 31, 2001

(Complaint, para 2.2.6). It was then discovered that another party – the Respondent

– had been registered as the owner of the domain name (Complaint, par 2.2.8)

and that subsequently the domain name had been diverted by the Respondent to

the URL http://www.tinawebcam.com, a site offering access to a live camera in

New York City showing pictures of a teenage girl in various states of undress

(Complaint, para 2.2.9).

4.4 Correspondence then ensued between the parties, leading to the present

Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant seeks transfer to it of the disputed domain name <durbanexperience.com>. In support of such a contention, it is necessary for a Complainant under the UDRP to address each of the elements described in paragraph 4(a) of the Policy. In substance, however, the Complainant’s submissions on these points are as follows.

- With respect to the elements described in paragraph 4(a)(i), the Complainant

makes no specific submissions with respect to the question of whether the domain

name is identical or confusingly similar to a trade mark in which it has rights,

assuming, perhaps, that this is unnecessary because of the identity between

the two. Its submissions under this head are rather directed to the question

of whether it has "rights" in a trade mark in the first place. In

this regard, it contends that the UDRP does not exclude unregistered trade marks

and notes that these are recognized in many jurisdictions, including those of

the parties to the present proceeding, namely South Africa (Complainant) and

Canada (Respondent). It goes on to argue (Complaint, pars 2.3.4) that the Complainant’s

use of the mark "Durban Experience" in the present case falls within

the ambit of an unregistered trade mark, namely use in relation to goods or

services for the purposes of distinguishing them from the same kinds of goods

or services connected in the course of trade with any other person (citing here

South African law). It is asserted that the "use of the mark ‘Durban Experience’

in relation to the experiences that await tourists, and indeed residents, in

the City of Durban clearly distinguished the variety of ‘services, amenities

and unique goods’ that are particular to Durban, as a city, from goods or services

offered by any other city" (Complaint, par 2.3.3). There is a further assertion

in para 2.3.4 that the domain name had become synonymous with the Complainant’s

trade mark through its use by the Complainant for over 2 years and has its "own

significant goodwill attached to it".

- With respect to the elements described in para 4(a)(ii) and (iii), the Complainant

deals with these together. In essence, its arguments as to lack of any rights

or legitimate interests of the Respondent under para 4(a)(ii) appear to turn

on what the Complainant asserts is the Respondent’s bad faith in registering

the domain name once it fell available following the Complainant’s failure to

renew. With respect to the element described in paragraph 4(a)(iii), the Complainant

submits that the Respondent has registered and used the domain names in bad

faith, and refers to correspondence between the parties in which the Respondent

has offered to sell the domain name back to the Complainant, first for the sum

of $1,000 and then for $700 (Complaint, para 3.2). The Complainant points also

to the damage to its goodwill that has flowed from the Respondent’s registration

of the domain name, and likens the Respondent’s behavior to that of a hijacker

or kidnapper (Complaint, paras 3.3.1-3.3.2). It refers also to evidence of other

registrations by the Respondent of recently expired domain names which it has

redirected to pornographic sites, suggesting that these may point to a pattern

of behavior on the part of the Respondent that consists of "an intention

to acquire domain names in which it has no legitimate interest but rather the

sole aim, to profit from the embarrassment of legitimate trademark holders who

have, through administrative oversights, failed to timeously renew their domain

name registrations" (Complaint, par 3.3.4).

B. Respondent

As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panel’s attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the

burden of demonstrating three elements. Each of these must be shown in turn.

6.1 That the Complainant has rights in a trade or service mark with which the

Respondent’s domain name is identical or confusingly similar

On the face of the Complaint as filed, the Complainant has not satisfied the

first part of this requirement, namely that it has "rights in a trade or

service mark". The Panel accepts the Complainant’s submission that the

UDRP is not confined to registered marks, and that it will suffice for a Complainant

to point to rights that it has in an unregistered trade mark: see further Brisbane

City Council v. Warren Bolton Consulting Pty Ltd , WIPO

Case No D2001-0047. Nonetheless, it is still incumbent on a Complainant

in such a case to show that its unregistered trade mark has been used as a trade

mark with respect to particular goods and services, so as to distinguish these

from the goods or services of other traders, and to adduce evidence of this

usage. These requirements are clearly part of both the Canadian and South African

laws that would apply to the respective parties in a domestic setting, and are

consistent with the way in which the conception of trade mark protection is

understood in most jurisdictions and is to be applied under the UDRP. Use as

a trade mark is clearly more difficult to establish where the alleged trade

mark is a geographical name, such as the name of a city or a region. Thus, in

a number of decisions, Panels have refused complaints where the name in question

was geographical, and there was little or no evidence that it had been used

as a trade mark. A good example is the Brisbane City case already cited;

others are Kur- und Verkehrsverein St Moritz v. StMoritz.com, WIPO

Case No. D2000-0617; Port of Helsinki v. Paragon International Projects

Ltd WIPO Case No. D2001-0002; Stadt

Heidelberg v. Media Factory WIPO Case

No. D2001-1500, which may be compared to Excelentisimo Ayuntamiento

de Barcelona v. Barcelona.com Inc WIPO

Case No. D2000-0505 where the city name of Barcelona had been registered

in a series of trade marks for specific activities, and City of Hamina v.

Paragon International Projects Ltd WIPO Case

No. D2001-0001 where the Panel held that the evidence showed that "Port

of Hanima" had been used as a trade mark.

The present case differs somewhat from those cited above, in that the

alleged trade mark is not just a city name ("Durban"), but is

used as part of the phrase "Durban Experience". Nonetheless,

the annexures to the Complaint fall short of showing that this has been

used as a trade mark rather than just as a means of referring to the city

in general. Thus:

- the initial audiovisual exhibition in 1985 appeared to be part of a larger

publicity campaign for the city as a whole and was of relatively short duration

- it is stated that the words "Durban Experience" were used as a

central part of the marketing of the city in the years following this, but no

evidence of this marketing campaign is provided

- there are generalized claims made that the words "Durban Experience"

were used in relation to services and goods coming from the city, but no detail

is provided here of particular usages

- the archived webpage materials at http://web.archive.org/web/*/http://www.durbanexperience.com

indicate that the name "Durban Experience" has been used widely in

the context of online promotion of the City of Durban, but that this has not

been in relation to any particular goods or services offered by the Complainant.

Thus, the various headings on the webpage refer to such matters as "About

Durban", "Art and Culture", "Economy", "Business

Directory", "Tourism", "Sport" and "Outdoors",

but these seem intended simply to convey information concerning these activities

within the City of Durban and do not refer to any particular good or service

provided specifically by the Complainant which it is seeking to distinguish

from goods or services offered by others.

- it is not otherwise stated in the Complaint what services and goods the Complainant

provides, other than those of a local government of the City of Durban, located

in the Province of KwaZulu-Natal

- the statement that the domain name <durbanexperience.com> generated

a goodwill during the two years of its registration by the Complainant means

little, unless it can be shown that this constituted the use of a trade mark

in relation to particular goods or services.

Accordingly, on the evidence presented by the Complainant, the Panel is not

satisfied that the words "Durban Experience" were used in any other

way than simply to refer to, and promote, the City of Durban as a particular

location. As a number of previous Panels have noted, the purpose of the UDRP

is to prevent the bad faith registration of domain names that are identical

or confusingly similar to trade marks. This is a limited purpose that does not

presently cover the protection of geographical names, however desirable this

may be: see further WIPO Case No. D2001-0002

<portofhelsinki.com> and WIPO

Case No. D2001-0002 <portofhamina.com>. Of these two cases, the Panel

in the Brisbane City case (WIPO Case

No. D2001-0047) stated:

"In both of the above two cases, the Panel was of the view that

the legal authority of a geographical area does not, as a matter

of principle, have an exclusive right to the name of that area.

This Administrative Panel agrees with that view. In both of the above

two cases, the Panel did recognize that, in certain circumstances,

the legal authority of a geographical area might, depending on

the actual facts, have a trademark right in the name of that area.

Again, this Administrative Panel agrees with that view. 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."

In the <portofhelsinki.com> case, the Panel pointed to the lack

of market research or similar evidence on the question of trademark usage;

by contrast, there was sufficient evidence of this kind in the <portofhamina.com>

case to establish that "Port of Hamina" was a trade mark in

which the Complainant had rights (the Complainant’s case there failed

on other grounds). In the Brisbane City case, however, there was

insufficient evidence of trade mark use by the Complainant to distinguish

the goods or services of the Complainant from those of other traders.

Indeed, in that case, the Panel noted that there were likely to be many

traders providing goods or services in or relating to the City of Brisbane

who would have a bona fide interest in using those words in relation to

those goods or services.

The present Panel agrees with the principles outlined in the above decisions,

and is not satisfied here that the words "Durban Experience"

have been used by the Complainant in relation to particular goods or services

so as to give it rights in an unregistered trade mark for the purposes

of paragraph 4(a)(i). While the conduct of the Respondent in registering

the domain name immediately after the previous registration of the Complainant

lapsed may be described as opportunistic and may well lead to undesirable

associations with the Complainant when the domain name is linked to inappropriate

websites, this is not conduct that is within the scope of the UDRP as

presently formulated.

6.2 That the Respondents must be shown to have no rights or legitimate interests

in the Domain Name

Given the conclusion in par 6.1, it is unnecessary for the Panel to determine

whether the Respondent has rights or legitimate interests in the domain

name, as required by paragraph 4(a)(ii) of the Policy.

6.3 That the Respondent registered and is using the Domain Name in bad faith

In view of the finding under par 6.1 above, it is unnecessary for the

Panel to make any findings in relation to whether the registration and

use of the domain name was done in bad faith, as required in paragraph

4(a)(iii) of the Policy.

6.4 Conclusions

The Panel finds that the Complainant has not established its case with

respect to each of the elements stated in paragraph 4(a) of the Policy

in relation to the domain name that is the subject of this Complaint.

7. Decision

The Panel accordingly denies the request of the Complainant that the Registrar,

Dotster Inc, be required to transfer to the Complainant the domain name

<durbanexperience.com>.

Staniforth Ricketson

Sole Panelist

Dated: April 23, 2002