Geography Reference
In-Depth Information
MDNH Inc of Las Vegas, Nevada, USA, registered the domain name
<warendorf.com>. On 15 June 2009 the Complainant applied to register in
Germany a trade mark consisting of the word 'Warendorf ' together with a
motif consisting of various triangles. The trade mark was entered on the register
on 11 August 2009 and the opposition period began. There are currently three
other trade marks registered in Germany that include the word 'Warendorf '.
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The Complainant argued that the disputed domain name was confusingly
similar to the company name Warendorfer Küchen GmbH, and also to the
Complainant's service mark 'Warendorfer'. The Complainant stated that the
Respondent had no rights or legitimate interests in the disputed domain name,
as it did not own any trade mark rights in 'Warendorf ' or 'Warendorfer' or offer
goods or services under the disputed domain name. The Complainant also
stated that the Respondent had acted in bad faith within the meaning of the
Policy.
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The Respondent argued that this dispute concerned a geographical term, and in
particular the name of a municipality in Germany, which it had been using as a
domain name to provide travel-related advertising.
i. Identical or confusingly similar
The Panel ruled that the disputed domain name was not identical or confus-
ingly similar to the Complainant's corporate name 'Warendorfer Küchen' for
the following reasons: (i) Warendorf is a geographical name, used by numerous
businesses; (ii) 'Warendorfer Küchen' is a descriptive term, meaning 'kitchens of
Warendorf ', and so has little inherent distinctiveness; (iii) the Complainant's
trade name consists of two descriptive words in German and does not confer
any rights to the two individual words or any derivative of the individual words;
(iv) the Complainant uses 'Warendorfer Küchen' as a business name rather than
in the active marketing of its products; (v) there was no evidence of actual
confusion by Internet users between the Respondent's website and the Com-
plainant's business (such evidence is not routinely required in a UDRP proceed-
ing; and (vi) there was no evidence that the sponsored links on the Respondent's
website had ever generated any links to the Complainant or its products. For
these reasons, the Panel found that the Complainant has failed to prove the first
element of the Policy, and the complaint was dismissed.
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