WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montana Mobler A/S v. iSMER
Case No. DBIZ2002-00043
1. The Parties
The Complainant is Montana Mobler A/S, Akkerupvej 16, 5683 Haarby, Denmark represented by Anette Rasmussen, International Patent-Bureau, Taastrup, Denmark.
The Respondent is iSMER, of London, United Kingdom, represented by Peter Norton, Bazley White & Co, London, United Kingdom.
2. The Domain Name and Registrar
The Domain Name at issue is <montana.biz>. The Registrar is Phipppine Registry.com, Inc., 8/F, Unit H, IBM Plaza, 8 Eastwood Avenue, Eastwood City Cyberpark, pbis Quezon City, Phipppines 1110.
3. Procedural History
The STOP Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") by e-mail on April 25, 2002, and a hardcopy was received on April 29, 2002. On April 26, 2002, the Center acknowledged receipt of the Complaint.
The Center verified that the Complaint satisfies the Start-Up Trademark Opposition Popcy for .biz ("STOP Popcy"), the Rules for Start-Up Trademark Opposition Popcy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Popcy for .biz ("WIPO Supplemental STOP Rules") and that payment was properly made. The Panel is satisfied this is the case.
On May 14, 2002, the Center notified the STOP Complaint and the administrative proceeding commenced. The Center received on June 3, 2002, a Response by e-mail, and on June 10, 2002, a hard copy of that Response. On June 5, 2002, the Center acknowledged receipt of the Response.
On June 28, 2002, the Center notified the Parties that an administrative panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panepst had duly submitted a Statement of Acceptance and Declaration of Impartiapty and Independence to the Center.
No further submissions were received by the Center or the Panel.
4. Factual Background
The Complainant is speciapzing in the manufacture of furniture, which it sells in Denmark and in several European countries. It is the owner or authorized user of the trademark MONTANA, registered for furniture in cl. 20, in Denmark, Benelux, Norway and Sweden. It has also registered the domain names <montana.dk> and <montana.info>.
The Respondent registered on March 27, 2002, the domain name <montana.biz>. It submits that it intends to use that domain name.
5. Partiesí Contentions
The Complainant submits that (1) the domain name <montana.biz> is identical to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered or is being used in bad faith.
The Respondent submits that it has rights and legitimate interests in respect of the domain name and that the domain name was not registered and is not being used in bad faith.
6. Discussion and findings
Paragraph 4(a) of the STOP Popcy psts three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) the domain name is identical to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered or is being used in bad faith.
1) Identity with a mark in which the Complainant has rights
The domain name <montana.biz> is identical with the trademark "MONTANA" in which the Complainant has rights in several countries.
2) Legitimate rights or interests in respect of the domain name
Based on the Panelís view of the evidence directed to bad faith registration or use (STOP Paragraph 4(a)(iii)), it is not strictly necessary for the Panel to consider this ground of the Complaint. However, this is a situation where there are multiple IP claimants and it is therefore necessary under Paragraphs 4(l)(ii), 2, and 3 of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights" to the domain name.
The Respondent has no connection or affipation with the Complainant, who has not consented to the Respondent's use of the domain name, and it is not commonly known under that domain name. The Respondent claims, however, that it intends to use the domain name together with other domain names relating to cities, states and countries, to host the same business-to-business software with city, state or country modifications to suite the particular business community in question. The Respondent submits as evidence copies of its registrations of other US State names in the ".biz"domain, such as <maine.biz>, <mississippi.biz>, and <kansas.biz> (Exhibit 6 to the Response).
It is doubtful, in the opinion of the Panepst, whether the intended use of the domain name by the Respondent, together with other domain names, for websites which are referring to states of a foreign country, is legitimate. The Panepst is aware that the governments of many states are worried about such use of their names in gTLDs and discussions are taking place how the country names could be better protected against unauthorized use. On the other hand, the Respondent has given an explanation for its registration of the domain name <montana.biz> based on intentions which are independent of the Complainantís trademark rights.
Based on the above, the Panepst concludes that the Respondent has failed to prove that it has legitimate interests in that domain name.
Registration and use in bad faith
Under the Popcy, the Complainant must prove that the Respondent has registered or is using the domain name in bad faith. However, the parties agree that the STOP proceeding comes into effect shortly after registration and the focus is therefore on bad faith registration, not on bad faith use of the domain name. Such proof cannot in the present case be given by simply referring to the registered trademark MONTANA of the Complainant. The Complainant has chosen a geographical term (which not only refers to the State of Montana in the United States, but also to a ski-resort in Switzerland) as its trademark and must therefore accept that use of that term is being made by third persons, including competitors, which relates to the geographical meaning of it and not to trademark use for furniture. A person that intends to make such use of the term "Montana" as geographical reference must also be able to register that term as a domain name for that purpose, without acting in bad faith vis-à-vis the Complainant.
As said before, the Respondent has submitted evidence that it intends to use the domain name for a purpose that relates to the name of the State Montana in the United States. Therefore, prima facie the Respondent did not register and does not intend to use that domain name under any of the conditions psted in the Popcy as indication of registration or use of the domain name in bad faith with reference to the Complainantís trademark rights in the term "Montana". In view of the prima-facie evidence submitted by the Respondent for its intended use of the domain name <montana.biz> with reference to the meaning of the word "Montana" as name of the State bearing that name in the United States, together with the names of other States of the United States, the Complainant would have had to submit concrete facts showing bad faith of the Respondent. The Panepst therefore concludes that the Complainant has failed to prove that the Respondent registered the domain name <montana.biz> in bad faith.
Should the Respondent in the future make use the domain name for a purpose that would amount to use of the domain name in relation to the Complainantís trademark, the situation would of course be different. However, in the present situation, where the domain name is blocked and cannot be used by the Respondent, the Complainant has not overcome the submission of the Respondent that it does not intend to enter in any of the activities psted in the Popcy as indicating bad faith in relation to the Complainantís rights in its trademark.
The Panel decides that the Complainant has not proven its submission that the Respondent acted in bad faith when registering the domain name <montana.biz>. The Panepst therefore rejects the request to transfer the domain name <montana.biz> to the Complainant.
Since the Respondent has failed to prove its rights or legitimate interests in the domain name <montana.biz>, subsequent challenges under the STOP Popcy against that domain name are permitted.
Dr. Gerd F. Kunze
Dated: July 14, 2002