Gstaad Saanenland Tourismus v. Dominic Longcroft
Claim Number: FA1506001623885
Complainant is Gstaad Saanenland Tourismus (“Complainant”), represented by Marco Handle, Switzerland. Respondent is Dominic Longcroft (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gstaadimmobilien.com>, registered with Lcn.Com Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 11, 2015.
On June 11, 2015, Lcn.Com Ltd., Lcn.Com Ltd confirmed by e-mail to the Forum that the <gstaadimmobilien.com> domain name is registered with Lcn.Com Ltd., Lcn.Com Ltd and that Respondent is the current registrant of the name. Lcn.Com Ltd., Lcn.Com Ltd has verified that Respondent is bound by the Lcn.Com Ltd., Lcn.Com Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gstaadimmobilien.com. Also on June 15, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 1, 2015.
A timely additional submission was received from Complainant on July 6, 2015.
A timely additional submission was received from Respondent on July 8, 2015.
On July 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
In substance, in its amended Complaint Complainant contends as follows:
Complainant owns the GSTAAD mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,578,306, registered Feb. 24, 2009). Complainant uses the GSTAAD mark in connection with its business, which offers tourism-related products and services. The disputed domain name is confusingly similar to Complainant’s GSTAAD mark. The disputed domain name contains Complainant’s mark in full, adds the generic term “Immobilien” (which is German for “real estates”), and inserts the generic top-level domain (“gTLD”) “.com” to the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information for the disputed domain name does not indicate that Respondent is commonly known by the disputed domain name. See Compl., at Attached Ex. 2, 3. Further, Respondent lacks rights or legitimate interests in the disputed domain name, as evidenced by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain name to offer services similar to Complainant, including chalet rental and cleaning services. See Compl., at Attached Ex. 35, 38.
Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent has offered to sell the disputed domain name to Complainant in excess of out-of-pocket costs, which constitutes bad faith. Additionally, Respondent seeks to attract Internet users, through a likelihood of confusion with Complainant’s mark, for its own commercial gain. Finally, Respondent had knowledge of Complainant’s rights in the GSTAAD mark when it registered the disputed domain name, which is additional evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
In substance, in its Response Respondent contends the following:
On September 1, 2003, Respondent registered the disputed domain name. The disputed domain name is not confusingly similar to Complainant’s GSTAAD mark. Complainant does not possess exclusive rights over all uses of the term “Gstaad” for all uses in commerce. Respondent registered the disputed domain name in connection with its company’s offering of real estate services, and the physical premises of the company were located in Gstaad and Lauenen, where Respondent resided from 2001 to 2013. Respondent registered the trade name “Lauenen Gstaad Immobilien” in the company offices of the Canton of Berne, in which Gstaad is located. See Response, at Attached Ex. 1. The disputed domain name is a direct representation of Respondent’s registered trade name, where “Immobilien” translates to “real estate” in Swiss German.
Respondent has rights and legitimate interests in the disputed domain name. Respondent was commonly known in the Gstaad region and among its international clients as its registered trade name, “Lauenen Gstaad Immobilien.” Respondent registered the disputed domain name in connection with its registered company, which offers real estate services. Respondent used the domain name for an active offering of its services as a real estate agent in the Gstaad and Saanenland region from 2003 to 2011. Respondent invested significant financial and personnel resources in developing its business and online presence.
Respondent acquired and used the disputed domain name in good faith and used the site since 2003 in connection with its legitimate commercial real estate businesses. Respondent’s website clearly indicates that its real estate business connected with the disputed domain name is a privately owned commercial company with no affiliation with Complainant. See Response at Attached Ex. 5. Respondent refused Complainant’s offer of 3,000 Swiss Francs for a package of domain names, as Respondent continues to use the disputed domain name in connection with its legitimate business and Respondent’s refusal is evidence that Respondent did not register the domain name with intent to sell it to Complainant.
Complainant’s behavior in the matter constitutes bad faith and unfair trade practices so as to constitute reverse domain name hijacking and abuse of this proceeding.
C. Additional Submissions
In principle, the Panel would be ready to accept an un-requested additional filing from a complainant when it deals with arguments or evidence in the response that reasonably could not have been anticipated at the time of submitting the Complaint. See Vaga-lume Midia Ltda v. Ouz, FA 1287151 (Nat. Arb. Forum Dec. 7, 2009) (deciding to admit and consider the complainant’s additional submission with evidence unavailable at the time the complaint was submitted). However, after examining the Additional Submission of Complainant the Panel concludes that it does not address any issue raised in the Response which could not have been anticipated by Complainant, and instead is mostly repetitive of arguments already contained in the Complaint. Therefore, to reach the decision on the merits the Panel has considered neither this additional submission of Complainant nor Respondent`s reply thereto. See Acumen Enterps., Inc. v. Morgan, FA 1381503 (Nat. Arb. Forum May 17, 2011) (“The Panel decided not to consider Complainant’s Additional Submission […] because it does not deal with any argument of Respondent which could not have been anticipated by Complainant”); see also Am. Airlines, Inc. v. Proxied Domains, FA 1248138 (Nat. Arb. Forum Apr. 8, 2009) (declining to consider an additional submission not containing any new information or arguments that could not have been anticipated).
Complainant is an association registered under Swiss law. Complainant owns, inter alia, the following registrations:
- Swiss mark GSTAAD and design, Reg. No. 547,368, Reg. Date June 26, 2006, filed in July 1999, covering goods of international class 25, and services of classes 39, 41, 42, 43 and 44.
- U.S. trademark GSTAAD, Reg. No. 3,578,306, Reg. Date February 24, 2009, filed on July 28, 1999, covering educational services and other services of International Class 41; hotel services, travel services, middlemen`s accommodation services of International class 43; health and beauty spa services of international class 44. This registration claims priority of the above mentioned Swiss mark.
- International Trademark GSTAAD and design, Reg. No. 894,936, Reg. Date June 26, 2006, with basic registration CH (Switzerland), 06.04.2006, Reg. No. 547,368.
The creation date of the record for the disputed domain name in the WhoIs database of the Registrar is September 1, 2003.
Respondent has been using the disputed domain name in a website promoting commercial (sale and rental) services with regard to real estate located in Gstaad and its vicinity in Switzerland, which the Panel finds to be a legitimate use under Policy paragraph 4(c)(i) of the UDRP Policy. Accordingly, the Complaint is denied.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
By submitting copies of certificates of registration, Complainant has shown that it owns trademark rights in the GSTAAD trademark. See section on Findings above. Since the disputed domain name contains the GSTAAD trademark, just adding the generic term “Immobilien” (which means real estate in German) and the “.com” top level domain, the Panel finds that the disputed domain name is confusingly similar to Complainant`s marks. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Parties agree that Respondent lived in Gstaad, Switzerland, for many years. Also, it is proven that Respondent, before notice of the dispute, has been using the website at the disputed domain name to offer real estate services in Gstaad and its neighboring region through two different companies successively.
According to the evidence submitted with the Complaint, on January 10, 2009, on the website at the disputed domain name Respondent stated the aim of its business as follows: “Our aim is to list all properties for SALE or for RENT in Saanenland and the Pays D' Enhaut." Complainant also shows that on November 4, 2005 and April 17, 2008 the contact details of GstaadBusiness.com S.A., a firm then owned by Respondent, and of other realtors in Gstaad, appeared on the same website.
In the Panel`s opinion, such contents of the website at the disputed domain name demonstrate a legitimate use by Respondent of the geographic term “Gstaad”, pursuant to Policy ¶ 4(c)(i). The Panel believes that adding the German word for “real estate” and the top level domain “.com” to “Gstaad” appears to be a direct and obvious way to legitimately offer –and provide a means to search for – commercial services related to real estate located in Gstaad and surroundings on the Internet. See Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding that the respondent may have a legitimate interest in the domain name where it provides informational services about the city of St. Moritz and Switzerland, and has built a network of websites providing information on different cities, general news, net cafes, etc., which does qualify as a bona fide activity.) See also Neusiedler Aktiengesellschaft v. VIinayak Kuljkrni, D2000-1769 (WIPO Feb. 5, 2001) (relating to <neusiedler.com>) (finding that the identical trademark and company name of Complainant does not have an exclusive effect with regard to the use of the geographic term "Neusiedler" as such in domain names or otherwise by third parties, and thus Complainant`s trademark or company name did not exclude the rights in the domain name of Respondent.); see also City of Hamina v. Paragon International Projects Ltd., D2001-0001 (WIPO March 12, 2001) (relating to <portofhamina.com>) (finding that presenting under domain names of the type "portof[name of port].com" information for users of the respective ports or services rendered there or in connection with the ports by port authorities, servicing companies etc. has not been proven to be in disaccord with honest industrial and commercial practices, and that Respondent had acquired a legitimate interest in the domain name <portofhamina.com>.) Previous panels made similar findings in Port of Helsinki v. Paragon International Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (relating to <portofhelsinki.com>), Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc., D2004-0242 (WIPO July 19, 2004) (relating to <mexico.com>), and BAA plc v. Bob Larkin, D2004-0555 (WIPO Nov. 11, 2004) (relating to <gatwick.com>), and Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, D2007-1318 (WIPO Oct. 29, 2007).
The Panel believes that Respondent`s use of the disputed domain name as described above does not suggest an intent to profit from Complainant`s marks containing the “Gstaad” term. Also, the Panel notes that Complainant`s GSTAAD marks either are mixed, i. e. include a design element (as in the Swiss and international marks of Complainant), or indicate a priority based on mixed marks (as in US trademark Reg. No. 3,578,306). Further, Complainant`s marks do not cover services of realtors as those provided by Respondent. In any case, Complainant`s GSTAAD trademarks do not appear to grant Complainant any exclusivity in the use of the geographic term “Gstaad”, as such and standing alone, or combined with a generic or descriptive term in a combination different from Complainant`s marks, as in the disputed domain name.
For the above reasons the Panel is not satisfied that Respondent lacks rights or legitimate interests in the disputed domain name.
Given the finding made with regard to rights and legitimate interests, the Panel need not address the issue of bad faith. See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding it unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as the complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).
Finally, the Panel does not believe that this a case of RDNH. Complainant may have over-estimated the strength of its case due, inter alia, to the fact that Respondent between sometime around 2005 and September 2008[1] did post Complainant`s “GSTAAD COME UP – SLOW DOWN” mark (and design) on the website at the disputed domain name, which use could arguably be considered an infringement of such mark or unfair competition (although that fact would not necessarily be an evidence of cybersquatting in relation to the disputed domain name).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <gstaadimmobilien.com> domain name REMAIN WITH Respondent.
Roberto A. Bianchi, Panelist
Dated: July 22, 2015
[1] According to the “Wayback Machine” available at www.archive.org, visited by the Panel on July 22, 2015.
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