rotorua5star.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rotorua 5 Star Atractions Limited v. Rotorua 5 Star Travel Limited

Case No. D2006-1416

1. The Parties

The Complainant is Rotorua 5 Star Atractions Limited, of Rotorua, New Zealand, represented by Mark Beech, New Zealand.

The Respondents are Rotorua 5 Star Travel Limited and Netmark Limited, c/o Graham Winter, of Rotorua, New Zealand, represented by Douglas John Joseph Clemens, New Zealand.

2. The Domain Name and Registrar

The disputed domain name <rotorua5star.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2006. On November 8, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On November 8, 2006, Tucows transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint with the Center by email on November 23, 2006, with the hard copy received by the Center on December 4, 2006. The Center verified that the amended 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 December 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2006. The Response was filed with the Center on December 20, 2006.

On January 10, 2007, the Complainant filed an unsolicited supplemental submission with the Center, receipt of which was acknowledged by the Center on that date. The Respondent filed an unsolicited submission on January 19, 2007 which was acknowledged by the Center on January 22, 2007.

There are two Respondents named in this case - Netmark Limited, the proxy registrant of the domain and Rotorua 5 Star Travel Limited, which, is presumably the beneficial domain name owner. The practice of naming as respondents in a UDRP proceeding, both a proxy and the beneficial domain name owner was discussed at length in WWF-World Wildlife Fund for Nature aka WWF International v Moniker Online Services LCC and Ricks, Case No.WIPO D2006-0975. It will be convenient in the course of this decision to refer to Rotorua 5 Star Travel Limited as the “Respondent”.

The Center appointed the Honourable Sir Ian Barker as the sole panelist in this matter on January 16, 2006. 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.

The only reason given by the Complainant for its unsolicited further submission was “our client believes that it was important to bring its comments to the attention of the Panel Member to ensure the decision is based on accurate information”.

Unsolicited supplementary submissions are considered only at the discretion of the Panel. Various cases decided under the Policy show that it is by no means automatic that a complainant is given the right to file an unsolicited supplemental submission. Normally, the party submitting such a filing should state why it is relevant and why the party was unable to provide the information in the initial document. In the present case, no real reason has been given. Nor is any obvious reason apparent, such as can be the case when a complainant seeks to reply to a counter-claim of reverse domain name hijacking. Accordingly, the Panel has decided to not receive the further filing of the Complainant, nor the further filing of the Respondent.

4. Factual Background

The Complainant has been incorporated since1997, although its activities commenced in an unincorporated basis in 1989. The Complainant promoted and formed a consortium of five key tourism businesses in the Rotorua area, which is one of the most significant tourism destinations in New Zealand. The idea behind the consortium was to offer a “5 star” attraction pass to facilitate admission by tourists into the five tourism operations. In September 2006, one of these operations ceased to be a member of the consortium. The Complainant claims to have used the mark “5 star” over the years to promote the various tourism attractions.

Mr. Graham Winter, a director of the Respondent, was engaged in 1996 as an independent contractor to provide marketing and administration services for the unincorporated predecessor of the Complainant. After its incorporation, he continued to provide these services to the Complainant. He was paid a retainer and received sales commissions for selling the five products on a non-exclusive basis and used the “5 star” brand in the course of his agency.

There is no registered trademark for “ROTORUA 5 STAR”. The Complaint mentioned a pending trademark application but no details were provided. In any event, until a trademark has been granted, no statutory rights are created, even although upon registration, trademark rights may relate back to the date of filing of the application.

Mr. Winter traveled overseas to promote the “5 star” attractions and performed other promotional activities. In 1999, the Complainant instructed him to register domain names and set up websites relevant to the Rotorua “5 star” operation. He registered the domain name <rotorua5star.co.nz>.

Mr Winter started his own business in 1998; he incorporated it as Rotorua 5 Star Travel Limited in 2000. At this time, Mr. Winter was a non-exclusive contractor to the Complainant under the 1996 arrangement.

On August 27, 2004, the Respondent entered into an agreement with “Rotorua 5 Star Attractions Companies” for a two-year period commencing September 1, 2004. The other party to this agreement represented the same five tourist attractions as comprised in the consortium represented by the Complainant. The Respondent was to supply “marketing support” as specified in the agreement. Its primary role was to sell the products of the five tourist attractions, including packages. The Respondent was permitted to sell other products with the approval of the five companies. The agreement reserved the right to review its conditions at any time within the two-year period in the event of bona fide changes to circumstances or in the event of non-performance by the Respondent.

On April 14, 2005, during the currency of this agreement, the Respondent registered the disputed domain name. The agreement referred to above was terminated on December 31, 2005, but the parties to it still continued to have some ongoing relationship, as detailed in various items of correspondence annexed to the Response.

The Complainant asserts that the Respondent was not permitted to register the disputed domain name on his own behalf but should have held it for the Complainant.

A letter from the Respondents’ solicitors dated October 25, 2006, to the Complainant’s solicitors, stated that the disputed domain name had been purchased for the Respondent and for “Rotorua 5 Star Attractions”. However, on October 30, 2006, another letter from the same solicitors stated that the disputed domain name was acquired only for the benefit of the Respondent.

The Respondent acknowledges that the disputed domain name <rotorua5star.co.nz> had been requested by the Complainant. The Respondent operates its business under the name of “Rotorua 5 Star Travel Limited” and claims that the disputed domain name is vital to the profitability of that business.

The website operated by the Respondent at the disputed domain name offers the Complainant’s tourism products as well as products from other attractions in the Rotorua tourist catchment.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent was instructed to secure and host domain names relevant to the businesses operated by the Complainant. The Respondent was not allowed to introduce hyper-links on any website connected with the Complainant’s products but has done so by introducing hyper-links for products outside.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. Mr. Winter was instructed to register the disputed domain name on behalf of the Complainant. The Respondent is seeking to obtain commercial gain by using the website associated with the disputed domain name in bad faith. Mr. Winter was employed as an agent for the Complainant and had been given a direction by the Complainant to secure and host for the Complainant’s benefit, domain names relevant to the operation of their businesses.

By registering the disputed domain name, Mr. Winter was acting in bad faith and in breach of his agency relationship. He is intentionally continuing to act in bad faith and attempting to attract internet users to the disputed domain name site to increase sales for his own company.

B. Respondent

The Respondent admits that he was engaged by the Complainant to provide marketing administration services, and that he visited a number of countries promoting tourism in New Zealand generally and the five Rotorua attractions, in particular.

The Complainant has no trademark, either registered or unregistered. There are approximately 45 companies in New Zealand with “5 star” as part of a name. The soubriquet “5 star” is common in the service, wine and hospitality industries.

The Respondent acknowledges that the name <rotorua5star.co.nz> was registered by Mr. Winter for the Complainant and that it has been transferred to the Complainant. However, the Respondent was never requested to register the disputed domain name on behalf of the Complainant. It has not been paid any disbursements by the Complainant for registering that name.

The Complainant has no rights to the words “5 star”. Mr. Winter was presented by the Complainant in December 2005, with a travel certificate to the value of NZ$5,000 in recognition of services he had given to the Complainant. When his connection with the Complainant was terminated as from December 31, 2005, he was informed by the Complainant’s directors he was able to promote any product he wished. The Respondent displays the Complainant’s products on its website but has added further attractions because he was told he could sell anything he wished.

The Respondent’s solicitors’ first letter was incorrect and promptly withdrawn.

The disputed domain name is vital to the profitability of the Respondent’s travel agency business registered under the name of 5 Star Travel Limited. The Complainant knew about the Respondent’s company when its alter ego entered into the agreement with the Respondent in 2004. It was only through the Respondent’s activities and contacts that the operations represented by the Complainant have grown, as was acknowledged by the Complainant’s tangible expression of gratitude to Mr. Winter.

The Respondent denies that it acted in bad faith. It is not intentionally attracting internet users but is helping the Complainant by promoting the particular attractions in Rotorua represented by the Complainant as well as others.

6. Discussion and Findings

A. Identical or Confusingly Similar

In order to succeed under the first limb of the Policy, the Complainant has to prove that the disputed domain name is identical to or confusingly similar to a mark in which the Complainant has rights. The mark here is said to be ROTORUA 5 STAR. There is no registered trademark, so therefore in order to succeed, the Complainant has to prove a common law mark. The situation pertaining to common law marks was summarised by the Panel in NAF case Capstar Radio Operating Company v. SterlingDavenport.com c/o Sterling Davenport, Claim No. FA505000473842 as follows:

“Extensive use of a common law mark was demonstrated in BroadcastAmerica.com v Quo (WIPO DTV2000-0001). There, the Complainant used its unregistered mark in offering Internet broadcast services to users worldwide. More than 500 individual radio stations and 67 television stations in the United States and 9 other countries employed the Complainant as their exclusive internet broadcast outlet. More than 2 million individual internet users accessed audio and video programming through a website operated by the Complainant. Supplementary evidence from the Complainant showed immense exposure to its brand or mark. It was little wonder, therefore, that the Panel found a common law service mark, despite the absence of a registered trademark.

Trade names or marks which have, through usage, become distinctive of the owner’s goods or services may be protectable as common law marks because they have acquired a secondary meaning. Another way of looking at whether a common law mark has been established is to enquire whether the person with the competing mark is “passing-off” the alleged common law mark. See BAA plc v Larkin case (WIPO D2004-555) where the Panel said:

As noted by the Panelist in Julian Barnes v. Old Barnes Studios Limited, WIPO Case No. D2001-0121…This involves understanding what is meant by “passing off” because the easiest way of defining a common law trademark is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorized use (or imitation) of which by another trader will lead to “passing off”.

Passing off is a tort based upon the proposition that it is unlawful to represent contrary to fact that one’s goods or services are the goods or services of another. “Commonly, such misrepresentations are made by using a name or mark which identifies the Claimant was otherwise a symbol of his goodwill.” (ibid). The above quotations are taken from one of the numerous cases where the common-law mark attached to a popular author. There are similar cases in respect of pop stars and sporting personalities.

See similar comments about common-law marks in Luis Cobos v. West, NorthWIPO Case No. D2004-0182. To succeed the Complainant would have to establish a reputation and goodwill in the United Kingdom under his name. He would have to prove that the third party’s use of his name would be likely to lead to deception in the market place, and he would have to prove a likelihood of consequential damage to his goodwill.”

A complainant must accordingly show that the disputed domain name has become a distinctive identifier, associated with the Complainant or its goods and services. Relevant evidence of such secondary meaning in a mark includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit the Complainant’s rights in a common law trademark (See Overview of WIPO Panel Views on Selected UDRP Questions at 1.7).

In the present case, the evidence suggested by the Complainant is hardly enough to pass the fairly high threshold of proof of common law mark. “5 Star” is a common expression in the entertainment and hospitality industries. It is used, for example, to denote a very high quality hotel or restaurant and, generally, it betokens excellence. The fact, as mentioned in the Response, that some 35 companies use the term “5 Star” in New Zealand alone indicates that the term is becoming generic, if it is not already so.

Moreover, the Complainant would have difficulty in succeeding in an action for passing-off. In 2000, the Respondent, Rotorua 5 Star Travel Limited, was registered, during the course of Mr. Winter’s agency arrangement with the Complainant. Although the Complainant may not have been happy with this development, it nevertheless went along with the Respondent trading under this name by entering into the written agreement in August 2004 through Rotorua 5 Star Attractions Companies”. The existence of the Respondent company under this name indicates a lack of exclusivity in the expression “Rotorua 5 Star” in a travel and tourism context. There is just not that high degree of exclusivity as would justify the inference of a common law trademark.

Accordingly, the Complainant cannot succeed, because it does not satisfy the first limb of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests/Registered and Used in Bad Faith

In these circumstances, it is unnecessary for the Panel to consider the remaining limbs of Paragraph 4(a) of the Policy. However, it would be particularly difficult to infer bad faith registration in these circumstances. Whatever the situation with the ongoing use of the disputed domain name, the Complainant has to prove separately that registration was effected in bad faith. Here, the Complainant’s view is that the Respondent should not have registered the disputed domain name. Whereas, the Respondent claims that there was nothing to stop it from so registering and that the name is required for its own business which it registered as a company in 2000 as Rotorua 5 Star Travel Limited.

In those circumstances, the Panel would find it difficult to infer bad faith registration. To make such a finding, one would have to hear the conflicting views of witnesses and make a credibility assessment unfavourable to Mr. Winter. Such an enquiry is something quite outside the parameters of the Policy and would need to be litigated in a court. This seems like a commercial dispute which it is not possible to resolve in a UDRP proceeding.

7. Decision

For all the foregoing reasons, the Complaint is denied. The disputed domain name <rotorua5star.com> is to remain with the Respondent, Rotorua 5 Star Travel Limited

Hon. Sir Ian Barker
Sole Panelist

Dated: January 31, 2007