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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network

Case No. D2007-1318

1. The Parties

Complainants are Commune of Zermatt, Zermatt, Switzerland, and Zermatt Tourismus, Zermatt, Switzerland, both represented by Fuhrer Marbach & Partner of Switzerland.

Respondent is Activelifestyle Travel Network (“Activelifestyle”), also known by its corporate name Activelifestyle Multi Media Travel Network (Thailand) Company Limited, Bangkok, Thailand, appearing pro se.

2. The Domain Name and Registrar

The disputed domain name <zermatt.com> (the “Domain Name”) is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2007. On September 10, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Name. On September 10, 2007, Wild West Domains, Inc. 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”), 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 September 12, 2007.

In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2007. The Response was filed with the Center on September 26, 2007, but did not contain the certification required by paragraph 5(b)(viii) of the Rules.

The Center appointed David H. Bernstein as the sole panelist in this matter on October 5, 2007. 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 October 22, 2007, the Panel issued a procedural order requesting that the Respondent submit the missing certification. See Visual Gis Engineering S.L. v. Nitin Tripathi, WIPO Case No. D2006-0079 (March 9, 2006). On October 24, 2007, Respondent submitted a certification affirming, inter alia, that the information in the Response is complete and accurate to the best of Respondent’s knowledge.

Although Complainants acknowledge that the language of the proceeding is English (which is correct because the registration agreement is in English, see paragraph 11(a) of the Rules) and submitted their Complaint in English, Complainants have submitted a number of exhibits and annexes in German. Based on the description in the Complaint of these documents, the Panel concludes that a fuller understanding of these documents would not affect the result in this matter, and thus the Panel has not requested that the Complainant translate the German documents into English.

4. Factual Background

Complainants are the municipal commune (“the Commune”) and the local tourist board (“the Tourist Board”) of Zermatt, Switzerland. Both the Commune and the Tourist Board have broad responsibility for promoting tourism in the Zermatt region. Although the Commune does not have any registered trademarks in the name “Zermatt,” it claims rights under Art. 29(2) of the Swiss Civil Code to protect the name “Zermatt” against detrimental infringing use by another person. The Tourist Board similarly asserts rights in the name “Zermatt Tourismus” under this provision, and also states that it is the owner of Swiss Trademark Registration No. 537 219 for ZERMATT MATTERHORN plus design and Swiss Trademark Registration No. 510 258 for ZERMATT ALPINE MONUMENT plus design. The design elements of both registered marks comprise (1) a rectangle with the word “Zermatt” prominently displayed above the words “Matterhorn” or “Alpine Monument,” both in a significantly smaller typeface; (2) an image of the Matterhorn mountain emerging from the top of the rectangle; and (3) the Swiss cross below. Both registrations cover a wide range of goods and services, and there is no disclaimer of any term in either registered mark.

Respondent Activelifestyle is a tourist information provider based in Bangkok, Thailand that is principally owned by William Fogarty. Mr. Fogarty has promoted tourism to ski resorts in Zermatt since 1978 and visits Zermatt at least four times annually. In 1996, Respondent registered <zermatt.com> to provide an informational portal to prospective Zermatt tourists. Respondent continues to actively develop <zermatt.com> in conjunction with 170 other domain names as part of the Swiss Travel Network. Several of these other domain names also contain the term “Zermatt,” such as <zermattswitzerland.com>, <bestpricezermatt.com> and <zermattaccommodation.com>. These websites provide information on travel suppliers in Zermatt, interactive ski maps, a reservation system, and feature e-cards, slideshows, and stories about Zermatt. Respondent’s revenue derives from Zermatt travel service providers listed on <zermatt.com> as well as from banner advertisements.

Respondent claims that Fogarty and the Tourist Board have cooperated significantly in promoting tourism in Zermatt. Furthermore, it claims that the Tourist Board was informed of the registration of <zermatt.com>, did not object to Fogarty’s registration or use of the Domain Name, and that their cooperation continued well after registration.

Complainants claim to have requested transfer of the Domain Name on several occasions, most recently by letter and email on April 5, 2007. Respondent received Complainants’ email but provided no response.

5. Parties’ Contentions

A. Complainant

In summary, the Complainants make the following arguments in support of their claims:

Under Art. 29(2) of the Swiss Civil Code, Complainants have the right to protect the names “Zermatt” and “Zermatt Tourismus” against uses that create a risk of confusion or wrongly imply an association with a third party. If a third party abuses the distinctive identifying effect of a name and creates the appearance of a personal, idealistic, spiritual or commercial connection with that name, such activity constitutes infringement under Swiss law. Respondent’s use of the Domain Name <zermatt.com> infringes both the identical “Zermatt” name and the name “Zermatt Tourismus.” “Zermatt” individualizes the Commune as a public law corporation of Switzerland as opposed to a mere geographical designation, and any visitor to <zermatt.com> will believe the page is managed or at least approved by the Commune itself. As to “Zermatt Tourismus,” a finding of unlawful use does not require a protected name to be used in its entirety so long as a third party uses the main element of the name without authorization. “Zermatt” is the main element of “Zermatt Tourismus”— as “Tourismus” simply describes the nature of the services provided— and a visitor to <zermatt.com> will therefore assume an association between the website and the Tourist Board that does not exist.

Similarly, “Zermatt” is the distinctive element in the Tourist Board’s registered trademarks ZERMATT MATTERHORN and ZERMATT ALPINE MONUMENT, both plus design. The similarity of the marks to the Domain Name, coupled with the similarity of the services offered by the website to the services offered by the Complainants, render confusion highly likely. Respondent’s use of <zermatt.com> thus infringes Complainants’ trademarks.

This risk of confusion is significantly increased by the high level of awareness of the name “Zermatt.” According to Federal Supreme Court of Switzerland, the greater the level of awareness of a name, the more risk of confusion must be assumed. Zermatt is well-known throughout Switzerland and the rest of the world as a popular holiday resort. Respondent is exploiting this high level of awareness through its registration of <zermatt.com>. Internet users outside of Switzerland will initially search for information on Zermatt by navigating to “www.zermatt.com” and assume that it is managed or at least authorized by the administrative body behind the name “Zermatt.” By retaining the Domain Name <zermatt.com>, Respondent creates a risk of confusion as to the association between Complainants’ and Respondent’s offerings.

Respondent is unable under any circumstances to claim rights to the name “Zermatt” or claim any legitimate interests in respect to the Domain Name <zermatt.com.> Respondent’s business name, Activelifestyle Travel Network, has no relation to the name “Zermatt” and, as a result, Respondent cannot be generally known under its registered Domain Name. Further, there is no evidence of lawful, non-commercial use, as the Respondent simply offers typical tourist services to anyone.

Lastly, the Domain Name was registered and is being used in bad faith. Respondent must have known of the tourist resort of Zermatt when it applied for the registration of the Domain Name because Respondent’s website offers links to hotels, restaurants and businesses in the resort area of Zermatt. Therefore, it would be implausible to argue that Respondent’s use is merely accidental. There is no necessity whatsoever for Respondent to offer its services under the Domain Name <zermatt.com>, and Respondent’s only intention must be to direct customers in error to its website.

B. Respondent

In summary, Respondent makes the following arguments:

Although the Commune certainly has the right to use the name “Zermatt,” this right is not exclusive. Thousands of travel service providers and media outlets regularly use the word “Zermatt” to describe their goods and services; indeed, entering “Zermatt” into the Google search engine yields over 4 million hits. Complainants’ arguments, if accepted, would make it increasingly difficult for anyone to promote Zermatt or refer to it in any manner.

The Domain Name <zermatt.com> does not use the name “Zermatt Tourismus” or the totality of the trademarks ZERMATT MATTERHORN or ZERMATT ALPINE MONUMENT.

Respondent’s use of the Domain Name <zermatt.com> does not create a risk of confusion. Visitors to the website will not assume that it is owned and managed by the administrative body of Zermatt, Switzerland, because most Internet users understand that domain names can be the private property of any individual. Internet users are not so easily confused.

The registration of the Domain Name <zermatt.com> was part of thirty years of ongoing business activities promoting travel services in the Zermatt region. Unlike other websites that use the name “Zermatt,” Respondent’s website is used specifically and solely to provide original information about Zermatt, and it links directly to providers of travel services in Zermatt. Respondent has spent several million Swiss Francs promoting Zermatt, and has continually provided bona fide promotional services for the Zermatt region. Charges of misrepresentation and bad faith are thus inaccurate and defamatory.

The Tourist Board had full knowledge of Respondent’s registration of the Domain Name in 1996, several years before the registration of the Tourist Board’s trademarks and eleven years before the filing of this Complaint. It was not until Respondent received Complainants’ request for uncompensated transfer of the Domain Name <zermatt.com> in April 2007 that any mention of misrepresentation or bad faith had ever been made. Respondent took risks and made major investments in promoting Zermatt, and Complainants now demand that he forfeit the results of his vision.

6. Discussion and Findings

In order to succeed in its claim, Complainants must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied, namely:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and

(iii) the Domain Name has been registered and used in bad faith

A. Identical or Confusingly Similar

Complainants have satisfied their burden of showing that the Domain Name <zermatt.com> is confusingly similar to a trademark in which they have rights.

As a general rule, geographical terms are not per se protected by the Policy. Empresa Municipal Promociуn Madrid S.A. v. Easylink Services Corp., WIPO Case No. D2002-1110 (February 26, 2003); Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273 (July 8, 2002). That is because geographical terms ordinarily cannot serve as trademarks for the geographical areas to which they relate. City of Lake Worth v. John C. Becker, Inc., WIPO Case No. D2003-0576 (September 18, 2003) (provision of customary municipal services such as tourism promotion under the name “City of Lake Worth” is insufficient to establish trademark rights). 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. See HER MAJESTY THE QUEEN v. Virtual Countries, Inc., WIPO Case No. D2002-0754 (November 27, 2002) (denying the government of New Zealand trademark rights in the name “New Zealand”).

Geographical terms are afforded no greater protection if they are part of registered trademarks containing additional word or design elements. If the geographical element is meant solely as a reference to a geographical area, or if the geographical element is disclaimed, the registration creates no trademark rights in the geographical term in isolation. For this reason, several panels have refused to find trademark rights in a geographical term where complainant’s valid trademark combines a geographical term with other words or design elements. See, e.g., Empresa Municipal Promociуn Madrid, supra (registered trademarks for PROMOCION MADRID and MADRID CIUDAD 2002 did not create trademark rights in “Madrid” standing alone); Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348 (June 18, 2001) (registered trademark for C.C.I. ROUEN E.S.C. ROUEN L’ESPRIT DE CONQUETE did not create trademark rights in “Rouen”); Brisbane City Council v. Joyce Russ Advertising Pty Ltd., WIPO Case No. D2001-0069 (May 14, 2001) (finding the distinguishing feature of registered trademark BRISBANE CITY WORKS to be the conjunction of “WORKS” with “BRISBANE CITY” and not “BRISBANE CITY” by itself).

However, complainants may be able to establish trademark rights in a geographical term if the term is either registered, or, in common law jurisdictions, 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. E.g., BAA plc v. Bob Larkin, WIPO Case No. D2004-0555 (November 11, 2004) (“Gatwick” has required distinctiveness with respect to airport services as opposed to merely identifying a geographical region); Kur-und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 (August 17, 2000) (Complainant had registered ST. MORITZ in 27 countries in connection a wide range of goods and services ); see also WIPO Overview of WIPO Panel View on Selected UDRP Questions Sec. 1.5 (“The report of the Second WIPO Internet Domain Name Process declined to specifically extend protection to geographical terms under the UDRP. Some geographical terms however, can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark.”).

Here, Complainants have shown protectible rights in their registered marks, which include the word “Zermatt.” The registrations for ZERMATT MATTERHORN and ZERMATT ALPINE MONUMENT, plus design, cover a wide range of goods and services that go far beyond the resort area itself, including such diverse goods and services as chemical products used in the photographic industry, electrical energy, cars, and insurance services. Although “Zermatt” is 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 is inherently distinctive when used in connection with goods and services that lack a goods-place association to Zermatt. Moreover, it is significant that the registrations do not include a disclaimer of the geographical term “Zermatt.” Cf. Puerto Rico Tourism Co. v. Virtual Countries, Inc., WIPO Case No. D2002-1129 (April 14, 2003) (complainant’s seven registered trademarks all disclaimed any right to the words used except as used in the trademark); Brisbane City Council, supra (presence of disclaimer of “Brisbane City” evidenced lack of exclusive rights).

Because the Panel has found trademark rights based on the registrations, it need not determine whether Complainants also have any trademark rights based on the cited Swiss statues. This Panel notes, however, that it has found a lack of trademark rights in an analogous situation involving a German statute. See Land Sachsen-Anhalt, supra (assertion of “long standing statutory right” to use a name, without more, is insufficient to prove trademark rights).

Having determined that the Tourist Board’s registered trademarks are sufficient to establish trademark rights in the term “Zermatt,” the Panel further concludes that the Domain Name <zermatt.com> is confusingly similar to these trademarks. An examination of the Tourist Board’s registrations clearly indicates that “Zermatt” is the dominant, distinctive element of both the ZERMATT MATTERHORN and ZERMATT ALPINE MONUMENT trademark registrations. Both designs prominently display the word “Zermatt” in their center with “Matterhorn” and “Alpine Monument” written in substantially smaller typeface below. See Consejo de Promociуn Turнstica de Mйxico, S.A. de C.V. v. Latin America Telecom, Inc. WIPO Case No. D2004-0242 (July 19, 2004) (finding <mexico.com> confusingly similar to mark “MEXICO and design,” in which the capitalized word “MEXICO” was dominant, but not confusingly similar to TIANGUIS TURISTICO MEXICO, in which the word “Mexico” was not dominant). Further supporting the distinctiveness of the word “Zermatt” is the absence of any disclaimer for the geographical term, as noted above. Because the Domain Name <zermatt.com> consists entirely of the distinctive, non-disclaimed element “Zermatt,” Complainants have satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which a Respondent may demonstrate rights or legitimate interests in the contested Domain Name:

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is 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

Although the Policy speaks of the ways in which a Respondent may demonstrate rights or legitimate interests, it is well-established that the burden of proof is on the complainant to prove an absence of rights or a legitimate interest. Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). In the present case, Complainants have failed to make a prima facie showing, with respect to Paragraph 4(c)(i), that Respondent has failed to use the Domain Name in connection with a bona fide offering of services.

In support of their arguments with respect to that paragraph of the Policy, Complainants state:

“The Respondent, which has its registered office in Thailand, offers services on its website, as already mentioned, that relate to the Valais community of Zermatt. In relation to this, it must be stressed that the Respondent is unable under any circumstances to claim rights to the name “Zermatt.”

Complaint V(i) (emphasis added). This conclusory allegation is self-contradictory because Complainants acknowledge that the information on Respondent’s website relates to the community of Zermatt. Furthermore, the exhibit attached to the Complaint confirms that the website relates exclusively to Zermatt. Where the goods or services offered on a website specifically relate to the generic or descriptive meaning of the domain name, the registrant is making the very kind of bona fide offering that is sufficient to establish legitimate interests under the Policy. See, e.g., EAuto, L.L.C. v, EAuto Parts, WIPO Case No. D2001-1208 (April 9, 2000) (finding domain name <eautoparts.com> to be legitimate for a site that sells auto parts). That principle is particularly appropriate in the context of a domain name that consists solely of a geographical term if the website to which it resolves contains information about that geographical area. See Brisbane City Council, supra (acknowledging that all traders of Brisbane-related goods or services are equally entitled to use the word “Brisbane” in the absence of improper motive). Even where trademark rights in a geographical term have been established in connection with certain goods and services, those rights do not preclude uses that legitimately describe other classes of goods and services that are related to the geographical area. See, e.g., City of Hamina, supra; Kur-und Verkerverein St. Moritz, supra.

Also unpersuasive is Complainants’ contention that any visitor to the <zermatt.com> website will mistakenly believe it to be the official site of Zermatt’s administrative authority. Whether or not such evidence would be relevant, see, e.g., Empresa Municipal Promociуn Madrid, supra (rejecting the contention that domain names comprising the name of a town, city, county or country, are per se the property of the legal entity of the geographical area), Complainants have submitted no factual evidence to support that assertion; rather, they merely speculate as to consumers’ beliefs. Because the burden of proof is on Complainants, Complainants have failed to submit evidence that would substantiate such a claim. Cf. BAA, supra (rejecting contention that any use of complainant’s mark in a website would indicate that site is licensed or approved of by complainant).

Not only have Complainants thus failed to show an absence of rights or a legitimate interest, but Respondent also has come forward with evidence that affirmatively establishes a legitimate interest in the Domain Name <zermatt.com>. Respondent’s website includes extensive information about the Zermatt community and for eleven years has continually served as a portal to a large number of businesses in Zermatt. The provision of tourism information and services on a website that uses a domain name consisting of the geographical area at issue has repeatedly been upheld as a bona fide use. See, e.g., Consejo de Promociуn Turнstica de Mйxico, supra (finding a portal to information on Mexico to be a bona fide use of <mexico.com>); BAA, supra (finding the offering of links to various businesses associated with the Gatwick airport to be a bona fide use of <gatwick.com>); Empresa Municipal Promociуn Madrid, supra (finding the offering of links to hotel bookings in Spain to be a bona fide use of <madrid.com>); Kur-und Verkerverein St. Moritz, supra (finding the offering of information on St. Moritz to be bona fide use of <stmoritz.com>). Moreover, nothing on Respondent’s website would mislead Internet users into believing that it is the official site of the Commune or Tourist Board. Under these circumstances, Complainants have failed to show that Respondent lacks a legitimate interest in its registered Domain Name.

C. Registered and Used in Bad Faith

Because Complainants have failed to meet their burden under Paragraph 4(a)(ii), the Panel need not extensively analyze the issue of bad faith. That said, the Panel briefly notes Respondent’s claims that it registered the Domain Name more than a decade ago with the Tourist Board’s knowledge and acquiescence (and before the Tourist Board acquired its own registrations), which would tend to support a finding of no bad faith registration. Furthermore, Respondent appears to be using the Domain Name openly and notoriously, without any indicia that would seem to support a finding of trademark infringement or of a likelihood of confusion. Thus, it appears that Complainants would be unable to establish bad faith registration and use.

7. Decision

For all the foregoing reasons, the Complaint is denied.

David H. Bernstein
Sole Panelist

Dated: October 29, 2007