WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rosemount, Inc. v. Southcorp Limited
Case No. DBIZ2002-00098
1. The Parties
The Complainant in this administrative proceeding is Rosemount, Inc., Corporation Minnesota, 12001 Technology Drive, Eden Prairie, MN 55344, USA. The Respondent in this administrative proceeding is Southcorp Limited, 6/469 La Trobe St., Melbourne, VIC, 3000, Australia.
2. The Domain Name and Registrar
The disputed domain name is <rosemount.biz>. The Registrar of the domain name is Melbourne It D/B/A Internet Names World Wide, Melbourne, Australia.
The Registry operator has confirmed the ticket number.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP"), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, ("the STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> ("the WIPO Supplemental STOP Rules").
Complainant filed its STOP Complaint with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on April 26, 2002, by email and on April 30, 2002, by hardcopy. On May 5, 2002, having verified that the STOP Complaint satisfied the formal requirements of the STOP and the Rules, the Center formally commenced this proceeding. The Respondent filed its Response with the Center on May 6, 2002, by email and on May 13, 2002, by hardcopy. On May 7, 2002, the Center received the Complainantís additional submission by email. The Respondent filed a Reply to Complainantís additional submission on May 15, 2002.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
The Administrative Panel consisting of one member was appointed on May 29, 2002, by the Center.
The Administrative Panel decided to take into consideration all material filed by the parties and has done so.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the STOP and Rules.
4. Factual Background
The following information is derived from the Complaint.
It its Complaint, the Complainant appears to assert that its business is the provision of "Öa web site of information in the field of industrial process control; engineering services; providing industrial process control information to others in response to inquiries; providing technical consultation in the field of industrial process control; and providing product development consultation in the field of industrial process control; and providing product configuration consultation in the field of industrial process control".
It also appears to state that it has done so since July 7, 1996.
The Complainant registered the trademark Rosemount in the United States on September 14, 2000.
On September 21, 2001, the Respondent filed in the United States for a trademark of Rosemount.
In its Complaint the Complainant provided no other information relevant to the dispute.
The following information is derived from the Response.
The Respondent concedes that the subject domain name is identical to the Complainantís mark, but asserts that no information was provided to address the other criteria that must be established by the Complainant.
"ROSEMOUNT" is a trade mark of Rosemount Estates Pty Ltd, a wholly-owned subsidiary of the Respondent, which is a company listed on the Australian Stock Exchange, with a market capitalization of approximately A$4.3 billion.
The Respondent acquired Rosemount Estates Pty Ltd in February 2001.
The first use by the Respondent of the trade mark "ROSEMOUNT" (as part of "ROSEMOUNT ESTATE") in Australia was in 1975. The first use in the United States was December 1983.
The Respondentís Australian trade mark registrations include "ROSEMOUNT", registration no. 297364 (June 1, 1976)
In the United States, the Respondent has registered the trade marks "ROSEMOUNT ALEXANDRINA" (registration no. 2110256 filed June 20, 1995, and "ROSEMOUNT ESTATE" (registration no. 1337079 filed March 12, 1985.
The Respondent intends to use the subject domain name to lead to its web site which is currently at the URL <www.rosemountestates.com>.
The following information is derived from the Complainantís Additional Submission.
The complainant is an internationally known division of Emerson, a leading provider of technology and engineering products and services. It has over 600 locations in more than 85 countries. Sales in fiscal 2001 were $15.5 billion.
The Complainant is the registered owner of the trademark Rosemount in almost every developed country. It has three registered trademarks for Rosemount in the United States, #2404458 registered in 2000, #1179166 registered in 1981 and #0903838 registered in 1970.
The Complainant also has the registered trademark Rosemount in Australia, #293326 registered in 1976.
The Respondent has filed for a trademark of Rosemount in the United States, but does not yet have the registration.
The relevant company name is Rosemount Estates Pty Ltd. and the Respondent previously registered <rosemountestates.biz> and <rosemountwines.biz>. The web sites to which these domain names resolve are in working order and can be looked at.
The Respondent has registered the domain names <rosemount.com> and <rosemount.info>. It is not using the web site to which the subject domain resolves.
The following information is derived from the Respondentís reply to the Complainantís Additional Submission.
The classes of goods which relate to the trademarks Rosemount are not the same.
Although the company name associated with "Rosemount" is Rosemount Estates Pty Ltd, its products are more commonly know as Rosemount wines.
The word, "Rosemount" is in common use. A computer search produced approximately 126,000 hits.
The registry key required to activate the subject domain name was received only on May 14, 2002, at 4:21:44 p.m.
5. Partiesí Contentions
The Respondent concedes that the subject domain name is identical to the Complainantís mark.
The Complainant asserts that the Respondent does not have a legitimate interest in the subject domain name because it has two other .biz names. It states that use of the subject domain name will create confusion and that the Respondent cannot use it without infringing on the Complainantís trademark rights.
The passive use of the subject domain is said to be evidence of bad faith.
The Respondent asserts that it does have a legitimate interest in the subject domain name and denies bad faith.
The Respondent says that it can use the subject domain name and not infringe on the trademark rights of the Complainant because the rights of the parties relate to difference classes of goods. It notes that the parties both have used the trademark Rosemount in many of the same territories for several years and that the Complainant has never initiated proceeding for infringement.
The Respondent states that its product is known by the word "Rosemount".
The Respondent states that the effect of the Complainantís position is to claim a monopoly on the word "Rosemount", which is not a coined word, but the name of towns and business around the world.
It denies passive use and notes that its right to activate the subject domain name was granted only on May 14, 2002.
6. Discussion and Findings
Paragraph 4(a) of the STOP requires the Complainant to prove that:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the STOP.
The Respondent concedes that the requirements of paragraph 4(a)(i) have been met.
B.Respondentís Legitimate Interest
In the absence of the Complainantís Additional Submission, the Complaint in this proceeding would have been dismissed summarily, because it addressed neither the Respondentís legitimate interest nor bad faith. A Complainant is obliged to deal with all three requirements. The Administrative Panel in this case received and considered the additional submission from the Complainant that addresses these issues.
The Complainant has established that it has legitimate interest in the subject domain name, but has not established that the Respondent does not have a legitimate interest.
In this case, the Complainant says that the Respondent cannot use the subject domain name without infringing the Complainantís trademark rights. The Respondent denies this. It is not the function of a STOP proceeding to resolve contested trademark issues.
The parties are in different businesses, selling different products. Although not directly relevant to the issue, it is unlikely that customers will be confused by the subject domain name. The Respondent sells products that use the word "Rosemount". It intends to use the subject domain name to resolve to an active web site to promote its products.
On the information presented in this proceeding, it cannot be said that the Respondent does not have a legitimate interest in the subject domain name.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
While passive use can be evidence of bad faith, in this case the information provided to the Administrative Panel does not establish passive use. The Complainant provides no other information.
The Respondent says that it intends to use the subject domain name and received the authority to do so only after this proceeding was initiated.
The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has not established its case and it is dismissed.
The Respondent does appear to have a legitimate interest in the subject domain name and appears not to have acted in bad faith. In accordance with STOP paragraph 4(l)(ii) and STOP Rules paragraph 15(e), the Administrative Panel does not permit a subsequent challenge to the domain name.
Edward C. Chiasson, Q.C.
Dated: June 24, 2002