WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Momo s.r.l. v. Andreoni, Inc

Case No. D2001-0961

 

1. The Parties

The Complainant is Momo s.r.l., a limited liability corporation organized and existing under Italian laws, having its registered address and place of business at Via Decemviri 20, I-20138, Milan, Italy. It is represented by Roberta Calò of Mittler & C s.r.l. in Milan, Italy.

The Respondent is Andreoni, Inc, a company organized under the laws of Canada, having its registered address as 6352 Villanelle, St-Léonard, PQ H1S1 W1, Canada. It is represented by Benoit Archambault, Attorney, 284 St-Louis Square, Montreal, Quebec, Canada.

 

2. The Domain Name and Registrar

The domain name at issue is <momoracing.com>. The Registrar with which the domain name is registered is Register.Com of 575 8th Avenue, 11th Floor, New York, NY 10018, United States of America.

 

3. Procedural History

On July 26, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. The hard copy was received by the WIPO Center on July 27, 2001.

On August 21, 2001, the Registrar responded to a request for Registrar Verification and confirmed details of the Respondent, that the Policy applied to the domain name and that the current status of the name was "active".

On August 27, 2001, the WIPO Center transmitted a notification of complaint and commencement of administrative proceedings to the Respondent.

On September 17, 2001, a Response was received from the Respondent.

On October 10, 2001, the WIPO Center received a request from the Complainant for an extension of time in which to reply to the Respondentís Response. On October 11, 2001, the Panel advised the WIPO Center that it was prepared to consent to the Complainantís request on the following terms:

(a) That the Complainant file its Reply with the WIPO Center within seven days, and send a copy of the Reply contemporaneously to the Respondent and its counsel; and

(b) That the Respondent be given four days from the date of service of the Complainantís Reply to respond solely on new matters raised in the Reply.

On October 18, 2001, the WIPO Center received a Reply from the Complainant and on October 22, 2001, it received the Respondentís Rebuttal to the Complainantís Reply.

The parties elected to a have a single member Panel. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

The language of the administrative proceedings is English, being the language of the Registration Agreement.

 

4. Factual Background

A. The Complainant

The Complainant describes itself as an Italian company which has been developing and manufacturing high quality automotive products for more than 20 years "in the tradition of the best Italian technology and design". It submits that its MOMO products are marketed worldwide, and that some of its more significant markets include the United States of America, Canada, Japan, Europe, South America, and Australia.

The Complainant claims that it is deeply involved with racing products and the world of racing competitions.

The Complainant provided evidence that it is the registered proprietor of the trademarks MOMO, MOMO R3 and the MOMO device in numerous countries around the world. It annexed to its submissions a number of its trademark registrations, many of which were registered in class 12 (automotive goods).

The Complainant is also the registered proprietor in Japan, Brazil and Argentina of the MOMOCORSE device. The English translation of "MOMOCORSE" is "MOMORACES".

The Complainant stated that it became aware of the website <momoracing.com> in February 2001. The website indicated that it was run by "... A team of dedicated racing fans" and its stated mission was "... to provide fans with the most resourceful and complete racing website". The site offered for sale genuine MOMO products.

On May 28, 2001, the Complainantís Canadian trademark agents, Marks & Clerk, sent a cease and desist letter to the Respondent. This letter requested that the Respondent cease any use of the MOMO trademark as a mark and domain name and requested the immediate transfer of the disputed domain name to the Complainant. The Respondent did not respond to that letter.

In July 2001, the website <momoracing.com> was discontinued and users were re-directed to the site <streetpassion.com>, apparently also operated by the Respondent.

B. The Respondent

In its submissions, the Respondent refers to Andreoni, Inc and its principal, Mr. Sabatino Andreoni interchangeably.

The Respondent states that in September 2000, Mr. Andreoni explored the possibility of creating a website that would combine a racing resource center and a store for MOMO original products.

The Respondent provided a detailed account of how that site was developed. A summary of the Respondentís account of that process is as follows.

In early October 2000, after conducting some market research, arrangements were made for a meeting between Mr. Andreoni and Mr. Fabio Iovannone, who represented himself to be the owner of Grand-Prix Import, Inc (the Complainantís Canadian distributor of MOMO products). The Respondent submits that Mr. Iovannone was in fact the son of the owner but was authorised to act on behalf of Grand-Prix Import, Inc.

At this meeting, Mr. Andreoni claims to have discussed with Mr. Iovannone various issues relating to the proposed site, such as price levels, advertising restrictions and supply of products and of promotional tools such as stickers, catalogues, posters and so forth. Mr. Andreoni claims it was agreed that the Respondent would offer original MOMO products for sale on its online store <momoracing.com>. It would purchase those products from Grand-Prix Import, Inc.

The Respondent states that on the basis of this agreement, it secured registration of the domain name <momoracing.com> on October 14, 2000.

From the end of October until the beginning of December 2000, the Respondent developed the design and functionality of the <momoracing.com> site. The Respondent states that during this time, Mr. Andreoni often visited Mr. Iovannone at Grand-Prix Import, Inc to show him the progress of the website on his laptop. He said that "both parties were happy with the look and content of the site".

In early December 2000, the first test pages were posted on the website featuring fictitious prices ($100 for every item) in order to test the site. As it was only for testing purposes, no shopping cart or contact email was available and no orders could be placed. The Respondent claims that during this two day test period, the site was visited by both Grand-Prix Import, Inc and by the Complainant.

Following this test period, Mr. Iovannone informed the Respondent that the Complainant had contacted him to enquire about the pricing situation on the test pages. Mr. Iovannone confirmed to the Respondent that he had explained to the Complainant that the situation was temporary and would be resolved shortly.

From the end of December 2000, to early January 2001, the Respondent continued to develop the <momoracing.com> site and claims to have frequently visited Grand-Prix Import, Inc to demonstrate the progress of the website. The Respondent says that "at all times during these visits, Mr. Iovannone fully supported the Respondentís website and the use of the <momoracing.com> domain name".

At the end of January 2001, the Respondent officially launched its website under the domain name <momoracing.com>. At this time, Mr. Iovannone apparently asked the Respondent to help him eliminate excess inventory, namely some discontinued MOMO snowboards and sunglasses, by selling them on auction sites.

The Respondent states that he was selling all original MOMO products at the suggested retail prices, and in some cases, higher. He says that nonetheless, in early February 2001, Mr. Iovannone called Mr. Andreoni to a meeting to inform him that the Complainantís US distributor was not happy with the Respondentís presence on auction sites because, he said, the "prices were too low".

The Respondent informed Mr. Iovannone that many US retailers were selling MOMO products on auction sites and, in some cases, below the Respondentís cost price. Furthermore, the Respondentís prices advertised on its site were the highest on the Internet.

As a result of this "misunderstanding" with the Complainantís US distributor, the Respondent asked Mr. Iovannone for a written confirmation from the Complainant in regards to the Respondentís Internet sales, in which "the parameters of the operation would be better defined." Mr. Iovannone agreed and said he would attend to this.

In mid-February 2001, after repeated requests from the Respondent regarding the status of the agreement, and after always getting the same answer from Mr. Iovannone, namely "they are looking at it ... this might take weeks ... Momo USA is involved in the decision ...", the Respondent decided to contact the Complainant directly.

The Respondent claims that in all cases where the Respondent contacted the Complainant directly, the Complainant redirected the Respondentís requests back to Grand-Prix Import, Inc.

Sometime before the end of February 2001, Grand-Prix Import, Inc stopped selling products to the Respondent, saying that it was "awaiting a decision" from the Complainant.

In early March 2001, the Respondent claims that it made repeated attempts to contact both the Complainant and the Complainantís US distributor, without receiving any response. The Respondent submits that the only response it received was in the form of the cease and desist letter of May 28, 2001, sent by the Complainantís Canadian trademark agents and the notification of this Complaint on August 27, 2001.

In light of these circumstances, the Respondent decided to suspend the operation of its website and temporarily redirect the domain name to a related site pending the resolution of this case.

C. The Complainantís Reply

In the Complainantís Reply it denies that it visited the site in early December 2000. It reiterates its previous evidence that it became aware of the existence of the disputed domain name only in February 2001, when it received a complaint from Momo USA.  The complaint from Momo USA concerned the low sale prices at which MOMO branded products were being sold on the website operated by the Respondent.

Since the Respondent was not an official MOMO distributor, the Complainant then asked its Canadian distributor, Grand-Prix Import, Inc, for further information about the Respondent. It was at that time that it was informed of the prior relationship between Grand-Prix Import, Inc and the Respondent.

The Complainant contests the Respondentís allegations that it contacted the Complainant in mid-February 2001, and was referred to Grand-Prix Import, Inc. It states that it has no written record of this, and such behavior would have been contrary to the Complainantís usual practice not to allow distributors control over the use and defense of the MOMO trademark in their respective markets.

However, the Complainant also contends that it refused to negotiate with the Respondent as a result of its unauthorised use of the MOMO trademark and its "unfair competition behavior" and because it was seeking advice from a local law firm in order to decide how to proceed against the Respondent. As pointed out by the Respondent, this does appear to suggest that the Respondent did attempt to contact the Complainant at some stage.

The Complainant does acknowledge that a meeting took place between Grand-Prix Import, Inc and Mr Andreoni and his partner during which they stated their wish to establish a website featuring MOMO original products to sell online. The Complainant states that while Grand-Prix Import, Inc agreed to this idea, its agreement was conditional upon the following:

(a) Grand-Prix Import, Inc would regulate the pricing according to the USA market, since the web was on an international level and it did not wish to disrupt the market in any way;

(b) The Respondent was not permitted to advertise the site in any way or form in any traditional media (e.g. magazines, newspapers, radio, other Internet sites);

(c) In the event that the site conflicted with the Canadian market established by Grand-Prix Import, Inc, Grand-Prix Import, Inc would cease its relationship with the Respondent immediately.

There was no written record of that agreement, but the Complainant alleges that the agreement did not relate to the use of the disputed domain name. It alleges that it was only after this meeting that Mr. Iovannoni became aware that the Respondent had registered the domain name <momoracing.com>.

The Complainant states that when Grand-Prix Import, Inc was informed about the registration of the disputed domain name, it expressed doubts about the explanations given by the Respondent for the registration. The Complainant states that the Respondentís explanations were:

<momoracing.com> was never registered in English by Momo Italy or Momo USA. Anyone on the net could have registered this domain name, so we did not do anything illegal or unjust since we will be promoting the Momo name on the web."

It is not clear when this statement was made, nor in what form.

The Complainant contends that since the time that statement was made, it was made clear to the Respondent that Grand-Prix Import, Inc was only the Canadian distributor of the Complainant and therefore had no power to authorize the use of the MOMO trademark by third parties.

The Complainant contends that problems between the Respondent and Grand-Prix Import, Inc arose when Momo USA complained about the Respondentís prices in February 2001. It alleges that at that point, Grand-Prix Import, Inc noted that the <momoracing.com> website looked like an official Momo site to visitors, and pictures of Michael Schumacher and of the Complainantís F1 and Ferrari steering wheels were displayed on the site without the prior consent of the Complainant. The Complainant also states that by chance Grand-Prix Import, Inc became aware that the Respondent was intending to sell t-shirts with <momoracing.com> printed on them.

It should be noted that the Complainant objects only to the registration and use of the disputed domain name; it does not wish to canvass in this proceeding the issue of the sale of original MOMO goods via the website. It acknowledges that:

"It is clear that GPI have authorized the resale of MOMO original goods; the invoices produced in Annex R-1 of the Response show it."

As evidence of the bad faith of the Respondent, the Complainant brought to the attention of the Panel the fact that on March 2001, the Respondent also registered the domain name <momo.ca>. It contends that this behavior is a clear indication of the Respondentís attitude and intention to exploit the MOMO trademark.

The Complainant also contends that if the Respondent had been acting in good faith, it would have voluntarily transferred the disputed domain name and not registered a further, similar domain name. At the very least, the Respondent would have answered the cease and desist letter sent by the Complainant before the filing of this Complaint.

D. Respondentís Rebuttal

The Respondent contests the Complainantís allegation that the Complainant only became aware of the disputed domain name in February 2001, and claims that the Complainant was aware of the relationship between the Respondent and Grand-Prix Import, Inc previously.

The Respondent acknowledges that no written correspondence was exchanged between the Respondent and the Complainant, but it contends that the Respondent called the Complainant on several occasions prior to the commencement of the present proceedings. It submits that this contact occurred prior to May 2001, when the Complainant sent a cease and desist letter via its Canadian trademark agents.

The Respondent submits that Grand-Prix Import, Inc always represented and confirmed to the Respondent, throughout their business dealings, that it was acting within its power and with the support of the Complainant. The Respondent claims that it had no reason to doubt Grand-Prix Import, Incís representations.

The Respondent strongly denies that the agreement (the existence of which was acknowledged by the Complainant) did not extend to the domain name <momoracing.com>. The Respondent registered the domain name contemporaneously with its agreement with Grand-Prix Import, Inc (mid October 2000). The Respondent emphasizes the following submissions:

(a) Grand-Prix Import, Inc was aware of the development of the website, including its name, prior to the launch of the website in December 2000;

(b) Grand-Prix Import, Inc visited the website (and hence was aware of the domain name) on at least two occasions in December 2000, and February 2001. The Respondent notes that at that stage, only the pricing of the MOMO products on the site was discussed and registration of the domain name was not questioned;

(c) Grand-Prix Import, Inc sold products to the Respondent from January 2001, to February 2001, and invoiced those sales to <momoracing.com>.

The Respondent disputes the Complainantís allegation that Grand-Prix Import, Inc became aware of the Respondentís intention to sell t-shirts bearing the <momoracing.com> domain name "by chance". It contends that it openly asked permission from Grand-Prix Import, Inc to sell the t-shirts. When Grand-Prix Import, Inc refused permission, the Respondent complied with this and did not sell any t-shirts.

The Respondent admits that it erred in registering the <momo.ca> domain name, and says that it did so as result of its aggravation with the Complainant and Grand-Prix Import, Inc. The Respondent has since offered to transfer the <momo.ca> domain name to the Complainant in exchange for its out-of-pocket disbursements.

 

5. Partiesí Contentions

A. The Complainant

The Complainant claims that the disputed domain name is identical to the Complainantís MOMO trademark, except for the additional word "racing". It says that the use of the additional word "racing" does not remove the likelihood of confusion with the Complainantís trademark MOMO, being a word merely descriptive of the field in which both the Respondent and the Complainant do their business.

It claims that the MOMO trademark is famous in the racing and automotive field worldwide and that it is an internationally acknowledged principle of trademark law that the more famous a trademark, the higher the risk of confusion with similar/identical signs.

The Complainant further states that the Respondent has no right or legitimate interest in the domain name because:

(i) The Respondent has no rights to the trademark MOMO either in Canada or elsewhere;

(ii) There is no evidence that the Respondent was known by the disputed domain name before registration of the disputed domain name Ė it is not its business and/or trade name;

(iii) The Respondentís business is not related to the Complainant Ė it is not a licensee or authorized distributor of the Complainant.

The Complainant also contends that the Respondent registered, used, and is still using the contested name in bad faith. It bases these contentions on the grounds that:

(i) The MOMO trademark is so famous internationally the Respondent must have been aware of it. It claims that the Respondent was clearly familiar with the mark as:

- The Respondentís website displayed the disclaimer that the MOMO trademark belonged to the Complainant.

- The Respondent resold original MOMO products.

- The Respondent used graphic patterns on its website which were identical to those used in the Complainantís registered trademarks.

(ii) The use of the Complainantís trademarks and the choice of a domain name incorporating the mark MOMO demonstrates that the Respondent wished to exploit the fame of this mark.

(iii) Some Internet users browsing for the Complainantís website may come across the Respondentís website. The Complainantís official website is <momo.it>, which it submits could be confused with the disputed domain name, <momoracing.com>.

The Complainant also contends that the real purpose of the Respondentís site was not in fact to operate as a "fan site" but was mainly dedicated to the re-sale of original MOMO products.

B. The Respondent

The Respondent submits that MOMORACING is not a registered trademark of the Complainant and that of all the trademarks supplied by the Complainant, only two (MOMO and MOMO R3) are registered in Canada.

It submits that the disputed domain name is not identical or confusingly similar to any of the Complainantís trademarks because:

(i) The contested domain name is strictly descriptive of the nature of its activities and cannot therefore be confusing of any trademark.

(ii) The MOMOCORSE trademark (which translates to MOMORACES) is registered only in Japan, Brazil and Argentina.

(iii) The MOMOCORSE trademark is in Italian and the disputed domain name is in English.

The Respondent disputes the Complainantís allegation that it was untruthful as to its intentions by promoting the website as a racing fan club instead of an online store. The Respondent maintains that the website was always advertised and designed to provide general racing information as well as the sale of goods.

The Respondent maintains that it was authorized to use the disputed domain name by the Complainantís Canadian distributor and that it has a right or legitimate interest in the domain name. The Complainantís Canadian distributor represented that he was in constant communication with the Complainant for the purpose of obtaining written confirmation of the agreement to use the domain name.

The Respondent claims that it has always made a legitimate use of the disputed domain name with a bona fide intent to offer goods, and had actually used the disputed domain name prior to receiving any notice of the present dispute.

The Respondent contends that the website was fully operational as at January 2001, and that it started trading in genuine MOMO products at that time, with the full knowledge of both the Complainant and its Canadian distributor.

The Respondent states that it first received notification of the Complainantís position on or about June 3, 2001, which is when it received a copy of the Complainantís Canadian trademark agentsí cease and desist letter.

The Respondent also asserts that it was making a fair use of the domain name without an intention to misleadingly divert consumers or tarnish the trademark of the Complainant. It submits that the Complainant does not offer goods for sale online, nor does it direct consumers to any similar online sites. The Respondent submits that in the absence of such a service offered by the Complainant, no consumers could be misled.

The Respondent submits that it acted in good faith at all times. It claims that it ensured that all products sold or advertised on the website were genuine MOMO products, and that it made sure to include a statement on the website that the MOMO trademark belonged to the Complainant.

The Respondent states that it did not (and nor was this suggested) try to sell, rent or otherwise transfer the domain name to the Complainant or anybody else for consideration.

The Respondent also contends that it did not register the contested domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name nor for the purpose of disrupting the Complainantís business.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

As set out above, the Complainant is the registered proprietor of the trademarks MOMO, MOMO R3, the MOMO device and the MOMOCORSE device. The evidence before the Panel demonstrates that the Complainant has used its trademarks extensively in the context of goods connected with the motor racing industry.

MOMO is an unusual and distinctive mark and the domain name which incorporates this mark is sufficiently similar to the registered marks to be confusingly similar. The Panel therefore finds that the domain name <momoracing.com> is confusingly similar to the Complainantís registered trademarks MOMO, MOMO R3 and MOMOCORSE.

No rights or legitimate interest in <momoracing.com>

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Of the above, only paragraph (i) is relevant.

The Respondent claims that it approached the Complainantís Canadian distributor, Grand-Prix Import, Inc for its co-operation in supplying original MOMO products, and that it also sought and obtained permission from Grand-Prix Import, Inc to use the disputed domain name.

By contrast, the Complainant and Grand-Prix Import, Inc contend that while there was clearly an agreement between the Respondent and Grand-Prix Import, Inc as to the supply of original MOMO product, the agreement did not involve Grand-Prix Import, Inc authorizing the Respondent to use the disputed domain name.

The Panel is clearly not in a position, in the absence of cross-examination, to determine this issue, which is essentially one of credibility.

What is apparent, however, and is common ground, is that there was an agreement between Grand-Prix Import, Inc and the Respondent regarding the supply of original MOMO product.

This case bears some similarity to WIPO Case No. D2001-0160, DaimlerChrysler AG v Donald Drummonds. That case concerned the site <mercedesshop.com>, which contained a discussion forum where mechanics and owners of the complainantís product could discuss the care, maintenance and performance of those products. The respondent also offered genuine Mercedes parts and accessories for sale, which were obtained through fully authorized channels of distribution. The respondent also sold re-built and used Mercedes parts via the site.

The majority of the Panel in that case found that although it was undeniable that the respondent was aware of the complainantís famous trademark prior to the registration of the domain name at issue, the complainant failed to prove that the respondent had no rights or legitimate interest in the domain name. The respondent had operated the website for more than two years without receiving any notice of dispute from the complainant, despite the fact that the siteís 3,000 members included employees of authorized Mercedes-Benz dealerships.

One difference between that case and the present situation is that the site <mercedesshop.com> contained a clear disclaimer stating that the site displayed trademarks belonging to the complainant and the respondent was in no way affiliated with the complainant. While the Respondentís site in this case contained the statement:

"MOMO© is a registered trademark of Momo Italy S.r.l."

it did not disclaim any relation to or authorization from the Complainant to use the domain name.

However, that omission is perhaps explicable if the Respondentís evidence that the website was developed with the co-operation of the Complainantís authorized Canadian distributor were to be accepted.

Notwithstanding the conflict in the evidence, it is clear that the activities of the Respondent fall within the terms of paragraph 4(c)(i) of the Policy. Before any notice of the dispute, the Respondent made demonstrable preparations to use, and did in fact use, the disputed domain name in connection with the bona fide offering of genuine MOMO branded products.

The Respondent began developing the site in October 2000, with the intention of using it in connection with the bona fide offering of MOMO goods, and the site went "live" in January 2001. The Respondent did not receive notice of this dispute until it received the cease and desist letter from the Complainantís Canadian trademark agents dated May 28, 2001.

The Panel therefore finds that the Complainant has failed to prove that the Respondent had no right or legitimate interest in the domain name <momoracing.com>.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

Of the above, only paragraph 4(b)(iv) is relevant.

Plainly, the reason for the Respondent registering the domain name was precisely because it would attract, for commercial gain, Internet users to its website by creating a likelihood of association with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of the products/services on the website. The Respondentís actions in October 2000, in contacting the Complainantís Canadian distributor, Grand-Prix Import, Inc for permission to use the domain name <momoracing.com> in the first place involve an acknowledgement on the part of the Respondent that it needed consent before it could use the disputed domain name.

As noted above, there is a direct conflict on the evidence as to whether or not such consent was in fact forthcoming. On the evidence before the Panel, this conflict is impossible to resolve, and the Panel is not able to find that the Complainant has discharged the onus of demonstrating that the disputed domain name was registered and is being used in bad faith.

The Panel has also considered the Respondentís actions as whole, and whether these are sufficient to indicate bad faith on the part of the Respondent.

As noted above, the Respondent did not reply to the cease and desist letter from the Complainant, and no explanation was given for this. The Respondent also registered the further, similar domain name "momo.ca" after receiving notification of this dispute. Both these actions were well after the original registration of <momoracing.com> in October 2000, and the Panel cannot properly infer bad faith in October 2000, from them.

On all the facts and, given the credibility issues raised on the evidence, the Panel is not able to find that the domain name was registered and initially used in bad faith.

The Panel believes it is important to emphasize, as did the majority in the DaimlerChrysler decision, that the Policy is designed to deal only with the limited problem of cybersquatting. In this regard, the Panel notes that the evidence provided by the Complainant demonstrates that Grand-Prix Import, Inc had no authority to grant the consent, in any event. The Respondent is now indisputably on notice of the Complainantís rights in the MOMO trademark and the fact that the Complainantís Canadian distributor had no authority to permit a third party to register a domain name incorporating the Complainantís MOMO trademark. In these circumstances any ongoing use of the domain name <momoracing.com> may well infringe the trademark and other rights of the Complainant under relevant national laws. This, however, is beyond the scope of the Policy and the authority of the Panel.

 

7. Decision

For the foregoing reasons, the Panel decides the disputed domain name is confusingly similar to trademarks in which the Complainant has rights, but that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the domain name. The Panel also finds that on the evidence before it the Complainant has not demonstrated that the Respondent registered or initially used the disputed domain name in bad faith.

The relief requested by the Complainant is denied.

 


 

Andrew Brown
Sole Panelist

Dated: October 29, 2001