Excmo Cabildo Insular de Tenerife; Promoción Exterior de Tenerife, SA v. Jupiter Web Services Limited

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited

Case No. D2003-0525

1. The Parties

The Complainant is Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A., of Santa Cruz de Tenerife, Tenerife, represented by Clarke, Modet & Co., of Madrid, Spain.

The Respondent is Jupiter Web Services Limited, of Merseyside, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <tenerife.info> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2003. On July 4, 2003, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On July 4, 2003, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2003. The Response was filed with the Center on August 4, 2003.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 22, 2003. 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.

On August 29, 2003, Complainant transmitted to the Center, Respondent and the Panel via email (and by telefax to the Center) a supplemental submission styled "Findings of Law to be Submitted by the Complainants." In its acknowledgment of receipt, the Center reminded Complainant that direct communication with the Panel is not permitted by the Rules.

On August 29, 2003, Respondent via email transmitted to the Center a reply to Complainant’s supplemental submission, which was (at the Panel’s request) forwarded by the Center to the Panel.

On September 4, 2003, on motion of the Panel, the Center advised the parties that the due date for decision in this proceeding was extended until September 12, 2003.

4. Factual Background

Complainant Excmo. Cabildo Insular de Tenerife is the government of the Isle of Tenerife, a province of Spain. Complainant has identified Promocion Exterior de Tenerife, S.A., a share company based in Santa Cruz de Tenerife, which is wholly owned by Complainant, as its co-Complainant.

Complainant is the holder of a service mark registration for the word mark "TENERIFE" at the Spanish Patent and Trade Office, reg. no., M 1717823, applied for August 20, 1992, grant published December 2, 1993, and subsequently renewed. The mark "TENERIFE" is registered in International Class (IC) 41, covering "servicios de educacion, formacion, esparcimiento, actividades deportivas y culturales." Directly or through its share corporation, Promocion Exterior de Tenerife, S.A., Complainant is the holder of registrations at the Spanish Patent and Trademark Office for several word and design marks, including "CABILDO INSULAR DE TENERIFE," "TENERIFE SELECT," "TENERIFE UNA ISLA CON SABOR," "TENERIFE GOLF," and "TENERIFE CAPITAL BUSINESS," covering various services. (Complaint, para. 12 & Exhibit 3)

Complainant is the holder of a domain name registration for <tenerife.es> (id., at Exhibit 5). Complainant operates an active website at "www.webtenerife.com," which provides detailed information concerning activities on the island.

Complainant promotes tourism and related activities on the Isle of Tenerife, and the island is well known as a tourist destination. Numerous travel and tourism publications refer to Tenerife as a desirable tourist destination. (Id., para. 12 & Exhibit 6)

According to the Registrar’s verification, the registrant of the disputed domain name is Robert Edmonds of Jupiter Web Services Limited, of Merseyside. Although the registration lists "AL" (for Albania) as the registrant’s country, there is a postal code and telephone number listing for the United Kingdom. The Registrar’s verification indicates that the disputed domain name was created on July 25, 2001, is "active" and "is currently on Registrar Lock within our system and will remain locked during the pending administrative proceeding." Respondent created its registration during the ".info" Sunrise registration period, but without submitting evidence of trademark registration as required for early registration. Although the record is not entirely clear regarding whether the domain name was ever unlocked by the Registrar, the last email correspondence provided by Respondent (dated April 2, 2002) indicates that the name was still locked.

Respondent indicates that Robert Edmonds and Jupiter Web Services Limited have acted on behalf of John Goodreid, of Wirral, United Kingdom. Mr. Goodreid operates a commercial Internet website with addresses both at "www.tenerife-apartments.co.uk" and "www.tenerife-apartments.com." This website provides information concerning tourist activities and destinations on Tenerife, as well as offers to book lodgings, air travel and car rental. According to Mr. Goodreid, the two web addresses are "receiving over 1,000,000 hits a month." (Response)

The Registration Agreement in effect between the Respondent and Tucows Inc., subjects the Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts rights in the trademark "TENERIFE" based on registration of the word mark at the Spanish Patent and Trademark Office, as well as rights in TENERIFE-formative word and design marks based on registration at the Spanish Patent and Trademark Office (see Factual Background, supra).

Complainant argues that the "TENERIFE" mark is well known and that Respondent was aware of the mark when it registered the disputed domain name.

Complainant states that the disputed domain name is identical to its "TENERIFE" mark.

Complainant asserts that it has not authorized Respondent to use the "TENERIFE"

mark in the disputed domain name.

Complainant states that Respondent has not operated an active website using

the disputed domain name, and therefore is not making bona fide

use of it.

Complainant argues that Respondent’s use of its mark would dilute its rights.

Complainant contends that Respondent registered the disputed domain name with

the intention of selling or renting it to Complainant because the domain name

incorporates the Complainant’s well-known mark.

Complainant asserts that Respondent’s application for the disputed domain name

was invalid because of the provision of false information. This included registrant

information: "Trademark name: Unknown," "Trademark date: 2040-01-02,"

"Trademark Country: AL," and "Trademark Number: 0."

Complainant states that lack of use of the disputed domain name is evidence

of bad faith.

Complainant requests that the Panel direct the Registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent states Mr. Edmonds and Jupiter Web Services Limited were not

able to transfer the disputed domain name to its rightful owner, Mr. Goodreid,

because it was locked by Afilias, adding: "We have already sent a copy

of the complaint to Afilias as they requested, but they have not come back to

us so far with their comments."

Respondent asserts that it contacted the United Kingdom Trademark Office and

was advised that it could not register "TENERIFE" as a trademark,

because "world trademarks are only recognized by signatories of the Madrid

Accord. The UK apparently did not sign up to this and work (sic) on the premise

that if a name is already used by many people worldwide generally, particularly

the UK; prior to and at the present time; it cannot be used as a trademark."

Respondent adds: "So the argument is, is it in English, (the principle

(sic) language of the international language of the Internet) and for all those

in the English speaking countries or is it in Spanish, of which it is physically

and politically a dependency, region or province?"

Respondent argues that Complainant as a government should be required to use

a non-commercial "web extension" such as ".gov," "eliminating

the objections of any commercial bias."

Respondent asserts that is has rights in the disputed domain name because it

has been actively involved in bringing business into Tenerife through operation

of its popular commercial website (see Factual Background supra).

Respondent asserts that there are additional shareholders in Promocion Exterior

de Tenerife, S.A., including the "main hotel groups." Respondent

asserts that Complainant and these commercial interests are attempting in bad

faith to take the name from it.

Respondent indicates that it has received inquiries from third parties to purchase

the disputed domain name, which it did not take up.

Respondent states that granting Complainant an exclusive right to the "TENERIFE"

name gives the government and the tourist promotion authority an unfair advantage

over commercial businesses.

Respondent requests that the Panel reject Complainant’s request.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a Respondent have notice

of proceedings that may substantially affect its rights. The Policy and the

Rules establish procedures intended to ensure that Respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Respondent has filed a timely Response. The Panel is satisfied

that the Respondent had adequate notice of the proceedings.

Complainant filed a request to submit a supplemental submission and Findings

of Law subsequent to receipt of the Response. Respondent submitted a reply to

that request and submission. Although the Panel has discretion to accept supplemental

submissions, it will not do so here. Complainant’s supplemental submission does

not respond to facts or legal argumentation that could not reasonably have been

anticipated at the time of the filing of its Complaint. Moreover, Complainant

transmitted its supplemental submission directly to the Panel in contravention

of paragraph 8 of the Rules, and the Panel has taken this into account

in considering the admissibility of the submission. In view of its rejection

of Complainant’s supplemental submission, the Panel does not accept Respondent’s

reply, which also did not add material facts to its initial Response.

Complainant submitted its Complaint in the name of two legal entities. Excmo. Cabillo de

Tenerife is a government organization that is the sole shareholder of a share

corporation, Promocion Exterior de Tenerife, S.A. There are circumstances

in which a complainant properly acts on behalf of affiliated enterprises with

rights in a mark. Decisions under the Policy have recognized that complex intra-enterprise

relationships and/or licensing arrangements may determine the ownership or control

of a particular mark. Conversely, the assertion of rights in a mark has been

denied where a party is unable to demonstrate the requisite ownership or control

interest. In some cases, parties acting as complainant have been specifically

identified as co-Complainants in the proceeding. Practice in this regard has

not been consistent. The named co-Complainants have established that they are

under the common control of Excmo. Cabillo de Tenerife.

The Panel accepts the designation of both entities as Complainant without suggesting

a uniform practice on the issue of joinder of complaining parties under the

Policy and Rules. The Panel refers to the co-Complainants as "Complainant."

A. Identical or Confusingly Similar

Complainant asserts rights in the service mark and trademark "TENERIFE."

This word describes a land territory that is a province of Spain. The Trademark

Law of Spain, consistent with the First Trade Mark Directive of the European

Community, treats as absolutely prohibited from registration as a trademark,

"those consisting exclusively of signs or of indications that may serve

in trade to designate the … geographical origin … of the goods or rendering

of the services, or other characteristics of the goods or services."

An equivalent rule is part of the trademark law of the United Kingdom.

The fact that a designation of geographical origin is prohibited absolutely

from registration as a trademark or service mark does not mean that place names

cannot be registered and take on trademark or service mark functions. So, for

example, a geographic name may be used in fanciful association with a product

and serve a trademark function. Panels rendering decisions under the Policy

have recognized consistently with basic trademark law principles that geographic

names can serve a trademark or service mark function in some circumstances.

However, those decisions do not stand for the proposition that geographic designations,

such as the names of provinces, are protected as trademarks or service marks

as such.

Complainant has registered the service mark "TENERIFE" for use in

connection with education, training, information, sports and cultural services.

It has registered word and design marks incorporating the term "TENERIFE"

for use in connection with other activities, such as restaurant services.

The Panel does not have sufficient information to determine the basis on which

the Spanish Patent and Trademark Office granted registration of the word service

mark "TENERIFE" to Complainant. However, such registration was granted

a decade ago, the registration remains in force and, under Spanish trademark

law registration confers rights on the trademark holder. If the validity of

the Spanish trademark is to be challenged, such challenge would most appropriately

be undertaken before Spanish trademark authorities.

The Panel is aware that the U.S. Court of Appeals for the Fourth Circuit in

Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617

(4th Cir. 2003) effectively overturned the decision of

an administrative panel in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com

Inc., WIPO Case No. D2000-0505, decided

August 4, 2000. The court reasoned that (a) the parties to that dispute

had consented to the jurisdiction of U.S. courts in the event of a challenge

to a decision of the administrative panel, (b) the decision was challenged on

the basis of U.S. law (i.e., Anticybersquatting Consumer Protection Act (ACPA)-based

amendments to the Lanham Act), (c) U.S. law would not furnish trademark protection

to a city name used in a purely geographically descriptive sense, (d) the Spanish

trademark holder (City Council of Barcelona) did not use its geographically

descriptive name in a trademark sense in the United States (and so did not have

trademark rights there), so that (e) the registrant who challenged the determination

by the panel did not act unlawfully as a matter of U.S. law.

It suffices for present purposes to note that the facts in this proceeding

are materially distinct from those considered by the U.S. Fourth Circuit in

Barcelona.com. The parties assert no jurisdictional or substantive legal

connection with the United States or U.S. law. Whatever might be Complainant’s

rights in the "TENERIFE" word service mark under the U.S. Lanham Act

is not relevant to the decision by the Spanish Patent and Trademark Office to

register and thereby confer on Complainant rights in the mark.

Based on the registration granted by the Spanish Patent and Trademark Office,

the Panel accepts that Complainant has rights in the service mark "TENERIFE"

under Spanish trademark law. The Panel is not deciding that Complainant

has rights in the geographic name of the province "TENERIFE" as such.

Complainant additionally asserts rights in "TENERIFE"-formative marks,

such as "TENERIFE GOLF." Combinations of descriptive terms may acquire

secondary meaning and trademark status (as combinations) under certain circumstances.

However, trademark rights in combinations of commonly descriptive terms do not

confer independent protection to elements of the combination that may not take

on trademark characteristics. By establishing trademark rights in "TENERIFE

GOLF," as example, Complainant does not acquire independent rights in the

term "TENERIFE" as a geographic description. Complainant has established

rights under Spanish trademark law in the term "TENERIFE," standing

alone, as something other than a purely geographic designation (pursuant to

the decision of the Spanish Trademark Office). This is sufficient to give it

rights that it has opposed to the disputed domain name under the Policy. Respondent

relies on fair use of the term "TENERIFE" in its geographically descriptive

sense as a defense to Complainant’s claims. Complainant does not add to its

interests in the geographically descriptive sense of "TENERIFE" by

combining it with other terms.

The disputed domain name <tenerife.info> is identical to the service

mark "TENERIFE" for purposes of Paragraph 4(a)(i) of the Policy.

Principally because a generic top level domain (gTLD) does not serve a source

identification function, the addition of a gTLD designation to a mark does not

distinguish the domain name from the mark.

The Panel determines that Complainant has rights in the service mark "TENERIFE"

and that the disputed domain name <tenerife.info> is identical to the

mark. Complainant has satisfied the first element necessary to demonstrate abusive

domain name registration and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration is that the

respondent has no rights or legitimate interests in respect of the domain name

(Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which

a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, paragraph 4(c)).

Complainant asserts that Respondent cannot have rights or legitimate interests

in the disputed domain name because it succeeded in registering the name during

the ".info" Sunrise registration proceeding by providing false information

to the Registrar (Tucows Inc.) and Registry (Afilias). Most pertinently,

in order to take advantage of Sunrise registration, a registrant was required

to be the holder of a valid trademark. Complainant argues that Respondent did

not hold such a trademark and therefore misled the Registrar and Registry.

Respondent has conceded that it did not have rights in a trademark when it

registered the disputed domain name during the Sunrise period for ".info"

domain names. While Complainant has characterized Respondent as having transmitted

"false" information to the Registrar and Registry, Respondent in fact

said that its "Trademark Name" was "Unknown," and that the

"Trademark date" was in the year 2040. Respondent essentially told

the Registrar and Registry that it had no valid trademark, presumably in hopes

that its registration would not be challenged by a third party or the Registry.

Although a third party challenge appears to have been filed, it was dropped.

The Registry made so-called "bulk challenges" to a large number of

registered ".info" names, but the disputed domain name was not included.

Nevertheless the Registry placed a lock on Respondent’s disputed domain name,

but so far apparently has not released it. Based on a Report by the Center,

the various challenges to names registered during the Sunrise period appear

to be completed, with no specific action as yet notified by the Registry (Afilias)

to Respondent. The disputed domain name appears to be in administrative limbo.

The Registrar has advised the Center (and therefore the Panel) that the disputed

domain name is "registered" to the Respondent, even though the name

is presently "locked." This administrative proceeding is not

a Sunrise challenge. This administrative proceeding is conducted under the Policy.

While the Respondent required a trademark to register under the Sunrise rules,

it does not need to hold a trademark to maintain a ".info" registration

under the Policy. The Policy does not provide a general remedy against inaccurate

representations made during the domain name registration process. Administrative

Proceedings under the Policy are not framed as a mechanism to cure breaches

under Paragraph 2. The Policy sets out the rules applicable to disputes

regarding abusive domain name registration and use in its Paragraph 4.

Complainant is essentially asking the Panel to reject a claim of rights or

legitimate interests in the disputed domain names as an ex post facto

Sunrise challenge. Yet the Complainant could have participated in the Sunrise

registration process and made a third party challenge. It did not. The Panel

does not consider it appropriate to reach back and make a determination as if

it were the Center deciding a Sunrise challenge. It is not instructed by the

Policy to do that. The Panel does not know what the Registry and Registrar might

be contemplating with respect to Respondent and the disputed domain name since

it was never unlocked. The Panel appreciates that Respondent is not before it

with "clean hands." However, the Panel will focus on the legal principles

at issue in this proceeding.

The Panel will treat the Respondent as if it registered the disputed domain

name during the Sunrise period and survived the potential Sunrise challenges,

without prejudice to whether the disputed domain name may be revoked by the

Registrar and/or Registry under a set of rules other than the Policy.

Respondent carries on an active Internet-based business that provides information

regarding Tenerife as a tourist destination with commercial portals to various

service providers (e.g., hotels, air transport, automobiles). It is using the

term "TENERIFE" in web addresses, "www.tenerife-apartments.co.uk"

and "www.tenerife-apartments.com," that identify an active commercial

website. That website does not purport to be associated with the government

of Tenerife or its tourism promotion authority. It is instead referring to the

island as an attractive tourist destination. The Respondent on its existing

website, addressed by domain names incorporating the term "TENERIFE,"

is using the term "TENERIFE" in a geographically descriptive sense.

Although Respondent has not yet used the disputed domain name in connection

with an active website, it alleges that it has been blocked from doing so by

the Sunrise Registry (Afilias) and Registrar. Based on Respondent’s existing

business activities, there is no reason to reject its assertion that, if the

domain name is unblocked, it will use it for a purpose comparable to present

use of its other "TENERIFE"-formative domain names. This sole panelist

has in several contexts determined that the establishment of rights or legitimate

interests in a domain name is not precluded by the absence of active use, when

such absence is justified by the circumstances.

Respondent’s planned use of the disputed domain name constitutes a fair use

of Complainant’s geographically descriptive service mark. Based on Respondent’s

past practices, there is insufficient reason to conclude that its use will be

undertaken in a way that will misleading divert consumers or tarnish the service

mark. Respondent has established rights in the disputed name because it has

concrete and demonstrated plans to fairly use it in a geographically descriptive

sense "without intent for commercial gain to misleadingly divert consumers

or to tarnish the trademark or service mark at issue," within the meaning

of Paragraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

Because the Panel has found that Respondent has established rights or legitimate

interests in the disputed domain name, it need not make a finding concerning

bad faith. However, the Panel notes that Complainant after filing of its Complaint

submitted written evidence of an offer of settlement by Respondent that would

have included a payment by Complainant in excess of the Respondent’s out-of-pocket

expenses directly related to the domain name. Paragraph 4(b) of the Policy

does not preclude settlement offers made in good faith. Settlement of disputes

prior to the conclusion of formal administrative or judicial proceedings is

a common matter, reducing uncertainty and risk for the parties. Respondent in

this proceeding had reasonable grounds for believing that it had rights in the

disputed domain name. By making a settlement offer to Complainant, it did not

act in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

The Panel wishes to make clear to the Registrar that this determination does

not purport to resolve any issues outstanding between Respondent, the Registrar

and/or the ".info" Registry (Afilias) regarding whether Respondent

is entitled to maintain its registration of the disputed domain name based on

actions Respondent undertook in connection with its Sunrise period registration.

This decision should not be understood as approval of Respondent’s actions in

connection with that registration.

Frederick M. Abbott

Sole Panelist

Dated: September 9, 2003