Community of Zermatt loses battle over 'zermatt.com'
A World Intellectual Property Organization (WIPO) administrative panel has refused to transfer the domain name 'zermatt.com' to the community of Zermatt and Zermatt Tourismus. The domain name will thus remain in the hands of Activelifestyle Multi Media Travel Network, a Thai company.
On September 4 2007 the Swiss community of Zermatt and its tourist board filed a complaint with the WIPO Arbitration and Mediation Centre against Activelifestyle, the owner of the domain name 'zermatt.com'. Activelifestyle has been and is still using the domain name for information about the Zermatt community.
In order to succeed in its claim, the complainants had to demonstrate that all the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP) had been satisfied, namely:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainants have rights;
- The respondent has no rights or legitimate interests in the domain name; and
- The domain name has been registered and used in bad faith.
With regard to the first element of the three-pronged test, the complainants claimed that they had rights in the name 'Zermatt' and in the trademarks ZERMATT MATTERHORN and ZERMATT ALPINE MONUMENT. The panel agreed that the domain name at issue was confusingly similar to the trademark of the complainants and therefore accepted this argument. In light of this, it did not examine whether rights to a name under the Swiss Civil Code may constitute an unregistered mark under Paragraph 4(a)(i) of the UDRP.
However, with regard to the second prerequisite of the test, the panel found that the complainants had failed to show that Activelifestyle had no rights or legitimate interests in the domain name. In contrast, it held that Activelifestyle had established a legitimate interest in the domain name, since its website contained extensive information about the Zermatt community and had served as a portal to a large number of businesses in Zermatt for 11 years. Since the second prerequisite was not met, the panel did not examine whether the domain name had been registered and used in bad faith, and denied the complaint.
While very few claims referring to geographical indications have been allowed (eg, 'potsdam.com' and 'barcelona.com'), most of these claims are usually rejected on the grounds that the domain name owner is acting in good faith if the goods or services offered on a website specifically relate to the generic or descriptive meaning of the domain name. This is sufficient to establish legitimate interests. This decision once more shows that it is difficult for a community in a famous location to obtain a favourable decision in UDRP proceedings. It remains to be seen whether the commune of Zermatt and Zermatt Tourismus will bring action before the civil courts.
Marco Bundi, Meisser & Partners, Klosters
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