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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade
Virtual Countries, Inc
Case No. D2002-0754
1. The Parties
The Complainant is HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade c/o The New Zealand Trade Development Board, Auckland, New Zealand.
The Respondent is Virtual Countries, Inc., Seattle, United States of America.
2. The Domain Name and Registrar
The Domain Name is <newzealand.com>.
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") on August 12, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
Network Solutions, Inc has confirmed that the domain name <newzealand.com> ("the Domain Name") was registered through Network Solutions, Inc and that Virtual Countries, Inc is the current registrant. Network Solutions, Inc has further confirmed that the Policy is applicable to the Domain Name.
The Panel is of the view that all the domain names the subject of the Complaint ought sensibly to be dealt with together. However, it cannot be. The agreement between CentralNic and the Respondent, which was in force at the date of the Complaint, does not incorporate the Policy. The agreement currently in force refers to the Policy, but insofar as the Policy is concerned only permits CentralNic to cancel or suspend the registration of a domain name. It does not seem to permit CentralNic to transfer a domain name. The Complaint only seeks transfer of the ‘.uk.com’ domain names. More fundamentally, in the context of the Policy, the new agreement only permits action adverse to the Respondent in circumstances where " … following [the Policy] the name has been judged to infringe the trademark or other intellectual property of the complainant." That is not a finding, which a Panel is required to make under the Policy.Reluctantly, the Panel concludes that it does not have jurisdiction to hear this Complaint insofar as it concerns the ‘.uk.com’ domain names.On August 20, 2002, the Center notified the Respondent of the Complaint in the usual manner. The last day for the Respondent to send its Response to the Complainant and to The Center was extended by agreement to September 19, 2002.
On September 20, 2002, The Center received the Response, which was dated September 19, 2002. No point has been taken on the Response having been received out of time and even if the point had been taken, the Panel would have allowed the out of time filing.
The Respondent has subsequently sought to file three further supplemental submissions. The submissions are dated September 23, 2002, October 9, 2002, and October 10, 2002. The first of these submissions is a matter with which the Respondent could have dealt at the time of filing the original Response. The second concerns a matter, which only came to light on October 5, 2002. The third concerns a matter which could have come to the attention of the Respondent earlier, but the Panel accepts that it did not do so and that it raises a matter of significant importance in the context of the claim of Reverse Domain Hijacking (see below). The Panel declines to admit the first of these submissions, but admits the other two on the basis that it would be manifestly unjust not to do so.
The Panel nonetheless regarded it as important that the Complainant should have an opportunity to respond to the Respondent’s supplemental submissions dated October 9 and 10, 2002, and issued the Procedural Order a copy of which is appended to this decision.
While the Complainant acknowledged receipt of the Procedural Order, no Response has been received (in time or at all).
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date finally scheduled for the Panel’s Decision is November 27, 2002.
4. Factual Background
The Complainant is Her Majesty The Queen, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade. New Zealand is an Independent Constitutional Monarchy (the Complainant is its Head of State) situated in the South Pacific Ocean.
The Respondent is Virtual Countries, Inc, a company based in Seattle, USA. It registered the Domain Name in 1996, and has for several years been operating a website containing information about New Zealand at "www.newzealand.com".
The Respondent is the proprietor of US trademark registration number 2557448 (filing date February 11, 2000) for NEWZEALAND.COM for business advertising.
On June 29, 2001, the Complainant filed five trademark applications in New Zealand for the mark NEW ZEALAND in classes 22, 29, 31, 33 and 41.
In the course of 2000 and 2001, the Respondent was in communication with various third parties in relation to transfer of the Domain Name, but there is a dispute as to the nature of some of those communications and who initiated them. Some of those third parties clearly came away with the impression that the Respondent would be willing to transfer the Domain Name in return for a very large sum of money.
5. Parties’ Contentions
The Complainant’s contentions are conveniently summarised in paragraph 75 of the Complaint which reads as follows:-
"75. The Criteria articulated in clause 4(a) of the Policy have been established:
75.1 The name NEW ZEALAND is a trade and service mark in the hands of the Complainant, as the Head of State of New Zealand. The domain name in dispute is identical with that trademark.
75.2 Virtual Countries has no rights or legitimate interests in respect of the domain name because only the Complainant as Head of the Sovereign State of New Zealand, or its agencies, can have those rights or interests.
75.3 The domain name has been registered and is being used in bad faith. Virtual Countries registered the domain name in contravention of the known and established rights to the trademark NEW ZEALAND owned by the citizens, institutions and state of New Zealand represented by New Zealand’s Head of State, her Majesty the Queen in Right of her Government in New Zealand. Further, Virtual Countries’ purpose was to obtain the domain name and then sell it on for a substantial profit to a third party. Its current website is mere token use designed solely to seek to legitimise its improper acquisition of the domain name."
The Respondent rejects the Complainant’s allegations. It denies that New Zealand is capable of being a trademark or service mark. It denies that it has no rights or legitimate interests in respect of the Domain Name and points to the fact that it has the Domain Name registered as a trademark in the United States. Further, it denies that it registered the Domain Name in bad faith, or is using it in bad faith. Given the Panel’s rejection of the Complaint under paragraph 4(a)(i) of the Policy (see below) it is not necessary to detail the Respondent’s extensive response on this topic.
In its second and third supplemental filings the Respondent draws attention to (a) WIPO Case No. DBIZ2002-0270 dated October 2, 2002, in relation to the domain name, <newzealand.biz>, in which the panellist, while finding that the Complainant has no trademark or service mark rights in the name NEW ZEALAND, nonetheless directs transfer of that domain name to the Complainant; and (b) the submission of the New Zealand Government in March 2002, in response to the "Secretariat’s Questionnaire on the Protection of Country Names in the Domain Name System" in connection with the Second WIPO Internet Domain Name Process in which the New Zealand Government makes a number of statements which appear inconsistent with what is claimed in the Complaint including, for example, "New Zealand law, custom or practice does not preclude the use of country names under any circumstances. New Zealand does not see any reason why the domain names should be excepted from this general rule".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
Identical or confusingly similar
The first thing that a Complainant is required to prove under paragraph 4(a) of the Policy is that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Domain Name, absent the generic domain suffix, is NEW ZEALAND and the name in which the Complainant claims trademark and service rights is also NEW ZEALAND. Accordingly, the Domain Name and the Complainant’s claimed trade/service mark are identical. But is NEW ZEALAND a trademark or service mark?
In paragraph 19 of the Complaint the Complainant claims that "the goods and services branded NEW ZEALAND have a single trade source, namely the State and Territory of New Zealand."
In paragraph 16 of the Complaint, the Complainant asserts that:-
"NEW ZEALAND is a trade and service mark owned collectively by all NZ citizens and their institutions represented by the Head of State that is to say the Complainant. This trademark is used to identify those goods and services produced by and for citizens, organisations and the State of New Zealand from the goods and services produced by citizens, organisations and/or States of other countries."
The Complainant has no trademark registrations of the name and has not produced in evidence details of any such registrations in the name of anybody else whom she represents. In passing, the Panel observes that the trademark and service mark applications for NEW ZEALAND filed in New Zealand by the Complainant of themselves are no indication that the Complainant has any relevant rights in the name and the Panel ignores them. On their face they are open to the objection that they are deceptive unless the specifications are restricted to goods/services from New Zealand; yet, if the specifications are so limited, the inherent descriptiveness of the name will be highlighted.
The Complainant in her representative capacity (as identified above) claims common law rights in the name. In other words, NEW ZEALAND is claimed to be a trademark or service mark in which the Complainant has unregistered rights.
The primary function of a trademark or service mark is to identify the proprietor as the source of the goods or services to which the mark has been applied and, in so doing, to distinguish the proprietor’s goods or services from the goods or services from the goods or services of other traders.
The primary function of the name NEW ZEALAND is to identify a geographical location, which, while inevitably the geographical source of goods and services, is not the specific trade source of those goods and services.
As an indication of geographical origin, when properly applied to goods and services, the name NEW ZEALAND does indeed serve to distinguish goods and services emanating from New Zealand from the goods and services emanating from other geographical areas. But indications of geographical origin are not of themselves trade/service marks. They are not trade/service marks for precisely the reason that they serve to indicate geographical origin. Trade/service marks on the other hand indicate a very precise trade origin. They identify the specific trader, the source of the goods/services. Ordinarily, an indication of geographical origin cannot serve that purpose. A wine label reading "NEW ZEALAND wine", for example, indicates that the wine emanates from New Zealand, but it does not indicate which of the hundreds of New Zealand wine producers is the source of that particular wine.
Indications of geographical origin, whether they be the names of towns, cities, regions, countries or indeed continents are certainly capable of being trademarks or service marks, but only when the geographical significance of the name is displaced. This usually only occurs after long and extensive use of the name as a brand by a single trader in such a manner as to distinguish his goods and services from those of his competitors. Thus, in England, for example, to golfers, NEW ZEALAND is well known as being the name of a golf club; to the general public ICELAND is a well known supermarket chain and food brand, MALVERN, the name of a town, is well known as a brand of mineral water and YORK, the name of a city, is a well known brand of vehicular trailer. In all those cases, the names in question are trade/service marks in the narrow areas of activity identified, where the geographical significance of those names has been displaced.
Here the Complainant does not seek to argue that the geographical significance of the name NEW ZEALAND has been displaced. Nor does the Complainant produce a shred of evidence to suggest that the name NEW ZEALAND has acquired a secondary (in this case, non-geographical) meaning. On the contrary, to support the claim to trade/service mark rights the Complainant relies solely and exclusively upon the geographical significance of the name.
In summary, the Complainant claims that, contrary to all the tenets of trademark law and practice, a geographical indication is a trade/service mark and precisely because it serves to identify a geographical origin.
The Complainant arrived at this astonishing position by the following line of reasoning:
1. For the purposes of the Policy, a complainant’s trademark or service mark does not have to be a registered mark. An unregistered trademark or service mark will suffice.
2. An unregistered trademark or service mark in common law jurisdictions is any mark, the unauthorised use of which by a third party can be restrained at the suit of the putative ‘owner’ by way of a passing off action or some similar cause of action on the basis that the unauthorised use complained of will be likely to lead consumers to believe that the goods or services of the defendant user are the goods or services of the plaintiff ‘owner’.
3. In other words an unregistered trade/service mark is a mark, the unauthorised use of which can be restrained by way of a passing off action.
4. In some jurisdictions (including New Zealand and the UK) the ‘classic form’ passing off action (i.e. the form referred to in 2 above) has been extended. In such jurisdictions the courts will entertain actions brought by traders sharing a goodwill associated with a particular product description to restrain misuse of that product description. Thus, producers of Scotch whisky are able to sue third parties who represent their product to be Scotch whisky when it is not Scotch whisky. Champagne producers are able to sue to restrain third parties passing off their products as Champagne. The product description does not have to be a geographical description, but many of the relevant cases concern such descriptions.
5. By the same token New Zealand producers of wine and lamb, for example, can restrain by way of the ‘extended form’ passing off action misuse of the geographical term ‘NEW ZEALAND’ when applied to wine/lamb et cetera.
6. Since terms protectable by way of passing off actions are common law/unregistered trademarks (see 3 above), ‘SCOTCH’ in relation to whisky, ‘CHAMPAGNE’ in relation to sparkling wine from the Champagne region of France and ‘NEW ZEALAND’ in relation to anything emanating from New Zealand are all unregistered trademarks.
The fundamental flaw in this line of reasoning is that the ‘classic form’ passing off action and the ‘extended form’ passing off action are two completely different animals, albeit both variants of the tort of passing off. The ‘classic form’ passing off action is designed to prevent misrepresentations as to trade origin and therefore serves to protect trade/service marks, such marks being indications of trade origin, whereas the ‘extended form’ passing off action serves to protect product descriptions in relation to which groups of traders have a shared goodwill. Self-evidently, product descriptions, which are available for use by all traders in such products, cannot constitute trade/service marks.
The Panel finds that the Complainant has failed to prove that ‘NEW ZEALAND’ is a trade/service mark in which the Complainant has rights.
If support is needed for this conclusion of the Panel, one need look no further than the New Zealand Government’s response dated March 4, 2002, to the WIPO Secretariat questionnaire on the protection of country names in the domain name system. The following paragraph is of particular interest:-
"New Zealand law, custom or practice does not preclude the use of country names under any circumstances. New Zealand does not see any reason why the domain names should be excepted from this general rule."
Respondent’s Rights or Legitimate Interests
In light of the foregoing finding, it is unnecessary for the Panel to address this topic. However, the Panel cannot but observe that the Respondent is the proprietor of a trademark registration in the United States in respect of the Domain Name and that the Domain Name is connected to a website, which, although sketchy and badly in need of being updated, appears to the Panel at one time to have been a genuine website concerned with New Zealand. Accordingly, even if the Complainant does have trademark or service mark rights in respect of the Domain Name, the Panel would have required a lot more evidence than the Complainant has put before the Panel to persuade it that the Respondent has no rights or legitimate interests in respect of the Domain Name.
In light of the finding under paragraph 4(a)(i) it is unnecessary for the Panel to address this topic, but, again, the Panel has nothing before it to suggest any bad faith on the part of the Respondent. Even if, as the Complainant asserts, the Respondent registered the Domain Name with a view to selling it for a very large sum of money, there is nothing to suggest that the Respondent did so in order to sell it to the Complainant or a competitor of the Complainant (paragraph 4(b)(i) of the Policy). Significantly, there is nothing to suggest that when the Respondent registered the Domain Name it intended to violate anybody’s trademark rights, nor in the view of the Panel could the Respondent sensibly have anticipated that by registering the Domain Name it would be violating any such rights. Accordingly, whether one adopts an objective test or a subjective test in assessing ‘bad faith’, the allegation has to fail.
Reverse Domain Name Hijacking
Have those responsible for this Complaint used the Policy in bad faith to attempt to deprive the Respondent, a registered domain name holder, of the Domain Name? In addressing this question, the members of the Panel were unanimous in concluding that the filing of a complaint in the knowledge that the complaint is unmeritorious constitutes ‘use of the Policy in bad faith’ within the meaning of paragraph 1 of the Rules.
Prior to reading the Respondent’s supplementary submissions, the members of the Panel were divided on the question of reverse domain name hijacking. It seemed to some of the Panel that there might just be enough case law under the Policy (e.g. the <barcelona.com> decision) to encourage those responsible for the Complaint to hold a genuine belief in the merits of the Complaint.
However, having read the Response of the New Zealand Government to the WIPO Secretariat’s questionnaire referred to above, the Panel is unanimous in its view that when the Complaint was launched, those responsible for the Complaint, the New Zealand Government, were well aware that a claim to trademark and service mark rights in respect of NEW ZEALAND was baseless. Moreover, that document makes it clear that the New Zealand Government regards the protection of country names (qua country names) as being outside the scope of the Policy and does not approve of the Policy being extended to cover those country names, which are not trademarks.
There might have been scope for an argument in mitigation that the limb of the New Zealand Government responsible for the Complaint is the Ministry of Foreign Affairs and Trade whereas the limb of the New Zealand Government responsible for the Response to the questionnaire was the Ministry of Economic Development, but that argument has not been put to the Panel. Indeed, the Complainant has not responded to the allegation of reverse domain name hijacking despite the Panel’s invitation to do so. There has been no response to the Panel’s Procedural Order.
In the circumstances, the Panel has no hesitation in branding this misconceived Complaint as an abuse of the Policy, which has put the Respondent to needless expense.
The allegation of reverse domain name hijacking succeeds.
The Complaint is dismissed and the Panel upholds the allegation of reverse domain name hijacking.
Dated: November 27, 2002