ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution Policy

 


Complainant:

Graz Tourismus

Respondent:

NA Global Link Limited

Case Number:

AF- 0950

Contested Domain Name:

graz.com

Panel Member:

Jonathan Weinberg

 

1. Parties and Contested Domain Name

Complainant is Graz Tourismus, the official tourist organization of the city of Graz, Austria. Respondent is NA Global Link Limited, the registrant of <graz.com>. The postal address of NA Global Link Limited and of its representative, Ming Yiu Chow, locate them in Hong Kong

2. Procedural history

Complainant filed its complaint through eResolutionís website on July 25, 2001. eResolution received a hard copy of the complaint form and annexes on August 15. On August 20, eResolution forwarded the complaint to respondent. Respondent submitted its response through eResolution's website on September 10, and eResolution received the signed version of the response on September 17. On September 19, Jonathan Weinberg agreed to act as panelist in this case, and eResolution notified the parties that absent exceptional circumstances, a decision would be handed down on October 3, 2001. On September 21, Graz Tourismus sought to file a reply to NA Global Link's response, and on September 25 NA Global Link sought to file a reply to Graz Tourismus's reply. The eResolution clerk's office forwarded both new documents to Mr. Weinberg.

3. Factual Backgrounds

The URL <http://www.graz.com>, when typed into a Web browser, resolves to a page located at <http://www.restaurants.com/VisitorsGuide/Graz_home.asp>. That page is located within a directory maintained by restaurants.com. Restaurants.com is a portal for information about restaurants in cities throughout the world, and is operated by a firm affiliated with respondent. As of this writing, the page includes links to information about Austria; the current weather in Graz (courtesy of the Weather Channel); seventy restaurants in Graz; a Graz hotel; and the opportunity to book hotel or airline reservations via the Travelocity online travel service. The page also includes advertisements. Respondent states that it intends to improve the <www.graz.com> web site, ultimately making it "a fully developed city portal." That change, it explains, is in line with its planned development of the larger restaurants.com site to go beyond information about restaurants.

The city of Graz is the second-largest city in Austria, and the majority shareholder of Graz Tourismus. Graz Tourismus exists to promote the city of Graz, and in that connection maintains websites at domains including <www.visitgraz.com>, <www.graztourismus.com>, and <www.graztourismus.at>. Other entities maintain websites at <graz.net> and <graz.org>. Complainant states that the city of Graz now owns <graz.at>, by virtue of a decision of Austria's High Court that cities in Austria have rights to domains in the form <cityname.at>.

4. Parties' Contentions

Graz Tourismus emphasizes that, as the official tourist organization of the city of Graz, it maintains websites providing high-quality tourist information and online booking. By contrast, it argues, the information and services available on the <www.graz.com> website are incomplete and inferior. Some links are broken; the city's tourist attractions are not even mentioned; a visitor to the web site, it concludes, "must get the feeling that the city of Graz is not worth a trip."International visitors, it continues, are unlikely to go to <graz.at> for tourist information. In consequence, it urges, Graz hotels and the Graz economy are suffering from lost tourist business.

Graz Tourismus argues that the prerequisites for UDRP relief are satisfied here because "Graz is our product and the brandname of our product"; respondent has no connection with the city of Graz; and the "intention of the domain-holder is obviously only to get as much traffic as possible by grabbing different domains which have nothing to do with the core business."

Respondent answers that none of the prerequisites for relief are satisfied. First, it urges, Graz is simply a geographic term, and Graz Tourismus cannot claim an exclusive right to use it. Graz Tourismus is not the owner of any relevant trademark. Second, respondent argues, it plainly has legitimate interests in <graz.com>. Its website is part of a legitimate business, still in development, that provides tourist information. Indeed, respondent continues, any entity can legitimately establish a web site providing information about the city of Graz. Finally, it urges, the registration of a second-level domain name identical to the name of a city, so as to provide information about that city, does not amount to registration and use in bad faith.

5. Discussions and Findings

Under the Uniform Domain Name Dispute Resolution Policy, a complainant must satisfy each of three requirements to be entitled to UDRP relief. First, the domain name must be "identical or confusingly similar to a trademark or service mark in which the complainant has rights." Second, respondent must "have no rights or legitimate interests in respect of the domain name." Third, it must be the case that the domain name "has been registered and is being used in bad faith." Unfortunately for complainant, none of these requirements appears to be satisfied in this case.

First, as Graz Tourismus candidly concedes, the word Graz "is not a trademark." As Graz Tourismus notes, one cannot register a city's name as a trademark under Austrian law. Nor does Graz Tourismus allege that it has otherwise acquired trademark rights in the word "Graz." This, standing alone, is fatal to any relief under the UDRP.

The requirement that the complainant have rights in a relevant trademark or service mark is an unavoidable prerequisite for UDRP relief. See, e.g., Fondazione Arena di Verona v. Rainer Klose (arena-verona.com), http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0566.html; Brisbane City Council v. Joyce Russ Advertising (brisbane.com),
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0069.html; 
Brisbane City Council v. Warren Bolton Consulting (brisbanecity.com),
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0047.html; 
Port of Helsinki v. Paragon International Projects (portofhelsinki.com),
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0002.html; 
City of Hamina v. Paragon International Projects, (cityofhamina.com),
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0001.html; 
see also Chambre de Commerce et d'Industrie de Rouen v. Marcel Stenzel (rouen.com),
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0348.html. As a scholarly and detailed study of the UDRP recently indicated, to grant UDRP relief where complainant relies on no trademark rights and simply asserts that the domain name is identical or confusingly similar to a geographical term "would require a revision of the UDRP, in the form of the incorporation into it of an additional cause of action."  The Recognition of Rights and the Use of Names in the Internet Domain Name System: Interim Report of the Second WIPO Internet Domain Name Process, (Apr. 12, 2001), para. 282, 
<http://wipo2.wipo.int/process2/rfc/rfc3/report.html>.  ICANN has undertaken no such revision.

The reason for this limitation is sound. The drafters of the UDRP did not intend it as a remedy for all woes relating to domain names. They did not intend it to create new intellectual property rights. The UDRP is available only in a limited class of cases, in which respondent's liability under national law is plain. Because national laws relating to the use of geographical terms were uneven, the UDRP's drafters concluded that disputes relating to domain names where the only claim for relief was the misuse of a geographic term were not suitable for the UDRP process.

The second and third requirements for UDRP eligibility are also not satisfied here. The Uniform Domain Name Dispute Resolution Policy states that a domain-name holder has rights or legitimate interests in a name if it is using the name "in connection with a bona fide offering of goods or services" (as well as in other circumstances). That language covers this case; respondent's use of the <graz.com> name is bona fide because it relates directly to the focus of the relevant portion of its business -- providing information about the city of Graz.  See Kur- und Verkehrsverein St. Moritz v. StMoritz.com (stmoritz.com), http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0617.html; Brisbane City Council v. Warren Bolton Consulting, supra; Port of Helsinki, supra; City of Hamina, supra.  While a panelist took a different approach in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc. (barcelona.com), http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0505.html>, that approach has been rejected by panelists and commentators.

Similarly, respondent cannot be said to be using the domain name in bad faith. It is not bad faith to use a domain name to point to a web site devoted to the provision of information concerning a city, even where the site is a commercial one. There is no reasonable likelihood that Internet users will confuse respondent's web site with one operated by the city of Graz, or by Graz Tourismus. See Fondazione Arena di Verona, supra; Port of Helsinki, supra; City of Hamina, supra; Kur- und Verkehrsverein St. Moritz, supra. Cf. Excelentisimo Ayuntamiento de Barcelona, supra (finding bad faith in part on the basis of the panelist's finding that respondent was acting as a cybersquatter, hoping to obtain payment from complainant).

This is not to say that Graz Tourismus has no possible avenue of relief. Graz Tourismus is free to file suit in a national court, urging that it is entitled to transfer of the domain name under national law. But the UDRP offers far more limited avenues of relief that do national courts. Under the UDRP, no relief is available here.

6. Conclusion

Accordingly, I direct that no relief issue.

7. Signature

 

(s) Jonathan Weinberg

Ann Arbor, Michigan

October 3, 2001

Presiding Panelist