WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mount Snow, Ltd. v. Green Mountain Investment Corporation dba Palmiter Realty Group
Case No. D2011-0651
1. The Parties
The Complainant is Mount Snow, Ltd. of West Dover, Vermont, United States of America, represented by an internal counsel.
The Respondent is Green Mountain Investment Corporation dba Palmiter Realty Group of West Dover, Vermont, United States of America, represented by Ellis Boxer & Blake, United States of America.
2. The Domain Names and Registrar
The disputed domain names <mountsnowvermontrental.com> and <mountsnowvermontrentals.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2011. On April 13, 2011, the Center transmitted by email to GoDaddy.com, Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant submitted amendments to the Complaint on April 29 and May 3, 2011.
The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2011. The Response was filed with the Center on May 23, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on June 7, 2011. 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.
On June 20, 2011, the Panel issued a Procedural Order seeking further information regarding the history of the Complainant’s registration and use of the MOUNT SNOW mark, due in part to a lack of support in the record for the assertion in the Complaint that the mark had been registered in 1977 and that this registration remained valid and subsisting. In light of this, the date for the Panel to submit its decision to the Center was revised to July 1, 2011.
4. Factual Background
The Complainant owns and operates a ski resort, the Mount Snow Grand Summit Resort Hotel and Conference Center, located in southern Vermont. The property for the ski resort was acquired by the initial developer of the resort, Mr. W. Schoenknecht, in 1953, and sits at the base of Mount Pisgah. “Mount Snow” was the name chosen for the resort, which opened in 1954, and the resort since has become a well-known ski destination in Vermont. Mount Pisgah has become known to many as Mount Snow, and there are indications in the record that Mount Pisgah was rechristened as Mount Snow to coincide with the opening of the Mount Snow ski resort in 1954.
The Complainant has registered MOUNT SNOW for use as a service mark with the United States Patent and Trademark Office (USPTO). There are currently two valid and subsisting registrations for MOUNT SNOW owned by the Complainant. The first of these registrations was obtained on March 11, 2003, under Section 2(f) of the Lanham Act, as a service mark in connection with the Complainant’s resort, recreational, lodging and restaurant services. Under Section 2(f), the USPTO will permit registration on its Principal Register of a mark that is primarily descriptive or geographically descriptive if it has become distinctive through substantially exclusive and continuous use for at least five years. The second of these registrations issued on February 27, 2007, for use with the Complainant’s real estate, brokerage, management, and development activities. This application was filed on July 15, 2005.
The Complainant or its predecessor in interest also had previously registered several marks comprised in part “Mount Snow” and a design mark that the Complainant has used in advertising in combination with the words “Mount Snow”. None of these registrations currently are valid and subsisting. In 1975, the Complainant registered its “Four Seasons” design mark for use with its ski resort operations, but subsequently allowed this registration to lapse in 1982. The Complainant next obtained a registration for the design plus words mark MOUNT SNOW VERMONT in 1984 under Section 2(f) of the Lanham Act, for resort, recreational, lodging and restaurant services, but this registration lapsed in 1990.
In 1992, the Complainant obtained a registration for a second design plus words MOUNT SNOW VERMONT mark, also under Section 2(f) of the Lanham Act, which lapsed in 1999. And in 1993 the Complainant registered the design plus words mark MOUNT SNOW SOUTHERN VERMONT NO ONE ELSE IS CLOSE for ski resort and other recreational services, which lapsed in 2000. The Complainant disclaimed any exclusive rights to use “Mount Snow Southern Vermont” apart from the mark as shown.
The Respondent operates a real estate business in the same region of southern Vermont. The Respondent’s overall business includes both sales and rentals of residential and vacation properties. The Respondent registered the disputed domain name <mountsnowvermontrentals.com> on September 6, 2004, and the disputed domain name <mountsnowvermontrental.com> on November 1, 2006. Both of the disputed domain names resolve to a website on which the Respondent offers home and vacation rentals under the name “Mount Snow Vermont Rentals.”
As noted above, the Complainant’s resort is a successful and well-known ski destination in Vermont. While there is no indication that Mount Pisgah or the surrounding area had been known as “Mount Snow” prior to the opening of the Complainant’s ski resort, the record nonetheless reflects the presence of local businesses other than the Respondent that include “Mount Snow” in their trade names. This includes the Inn at Mount Snow. There is also a Mount Snow Region Chamber of Commerce, incorporated in 1970, and the surrounding area is generally referred to as the “Mount Snow Area” or the “Mount Snow Valley”. A U.S. Department of the Interior geological survey map identifies the region as the “Mount Snow Quadrangle”. The local privately owned airport is named the Mount Snow Airport.
5. Parties’ Contentions
The Complainant maintains that the disputed domain names are confusingly similar to its MOUNT SNOW mark, which according to the Complainant was initially registered with the USPTO in 1977 for the Complainant’s ski resort services, following decades of advertising and promotion of the mark. According to the Complainant, the 1977 registration of the mark remains in force on the USPTO Principal Register. The Complainant further asserts that “Mount Snow” is a coined phrase, as the mountain associated with the Complainant’s ski resort is officially called “Mount Pisgah”, and there is no incorporated Mount Snow town or village in the Southern Vermont area.
While the Complainant did not register MOUNT SNOW for use with real estate services until 2007, the Complainant asserts that the mark has always been used with real estate services since the opening of the Mount Snow ski resort in 1954. The Complainant further notes it operates a commercial website at “www.mountsnowrealty.com”. According to the Complainant, the Respondent is a direct competitor with an office in West Dover, Vermont, where the Complainant’s business also is located. The Complainant asserts that the Respondent purports to rent or sell properties also offered by the Complainant, and that the Respondent’s website prominently displays pictures of the Complainant’s resort.
The Complainant sent cease and desist letters to the Respondent in September 2010 and again in March 2011, and disputes the Respondent’s contention that its use of the disputed domain names is a fair use of a geographic term. To the contrary, the Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain names, as the Respondent is known as “Palmiter Realty Group”, is not authorized by the Complainant to use the MOUNT SNOW mark, and has not registered the disputed domain names with the USPTO or the Vermont Secretary of State. The Complainant observes that the Respondent did not register the disputed domain names until the Complainant had used the MOUNT SNOW mark in association with its services for decades.
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. According to the Complainant, the Respondent has no relationship with the Complainant, and the Respondent’s use of confusingly similar domain names under such circumstances of itself is sufficient evidence of bad faith registration and use. According to the Complainant, the Respondent’s registration and use of the disputed domain names is a blatant attempt to profit from the Complainant’s established goodwill, by diverting Internet users seeking the Respondent’s website where real estate services competing directly with those of the Complainant are offered.
The Respondent asserts that it has operated a real estate business in the Mount Snow Valley of Vermont since 1988. The Respondent points out that it registered “Mount Snow Vermont Rentals at Palmiter Realty” as a trade name with the Vermont Secretary of State in November 2007. According to the Respondent, it registered the disputed domain names in 2004. The Respondent maintains that from 2003/2004 through the fall of 2009 it was a paying member of the Complainant’s Vacation Services, under which the Complainant utilized the Respondent’s rental department inventory to subsidize Complainant’s inventory. In addition, according to the Respondent, it sold discounted lift tickets to Complainant’s ski resort as part of its rental vacation packages.
The Respondent maintains that the Complainant never objected to the Respondent’s use of the disputed domain names prior to 2010, and had even posted links to the Respondent’s “www.mountsnowvermontrentals.com” website on the Complainant’s website. All of this stopped, according the Respondent, after the Complainant changes its policies for membership to the Complainant’s Vacation Services, including a requirement that the Respondent provide free use of its rental properties. According to the Respondent, this followed a change of the Complainant’s ownership.
The Respondent argues that “Mount Snow Vermont” is a common, generic geographical term describing a recognized and well-known area of southern Vermont, distinct and apart from the Complainant’s ski resort. According to the Respondent, Mount Snow is plotted on a U.S. Geological Map issued by the U.S. Department of the Interior. The Respondent also asserts that Mount Snow has its own ZIP code. The Respondent argues that the Complainant has admitted that “Mount Snow” is a geographic location, as the Complainant’s attorney in a letter to the Respondent stated that the Complainant “is not suggesting that neither Palmiter Realty Group nor other local businesses cannot use the name Mount Snow when using the phrase to describe a geographical location.”
The Respondent maintains that a number of other local businesses do in fact use “Mount Snow” in their names, including the Inn at Mount Snow. According to the Respondent, other current and past local businesses using “Mount Snow” include Mount Snow Powersports, Inc., Seasons on Mount Snow, LLC, Mount Snow Market Place, LLC, Mount Snow Rentals, and Mount Snow Valley Realty. The local Chamber of Commerce is known as the Mount Snow Region Chamber of Commerce, and the local private airport is the Mount Snow Airport.
The Respondent further argues that a number of real estate and tourist based businesses, including the Complainant, refer to the Mount Snow Area as describing a premiere vacation destination in southern Vermont. Several of these businesses other than the Complainant have registered domain names comprised in part of “Mount Snow”, including <mountsnowvalley.com>, <theinnatmountsnow.com>, and <mountsnowblog.com>. Further, according to the Respondent, the Complainant uses the terms “Mount Snow Valley” and “Mount Snow Area” extensively on the its own websites.
In light of the foregoing, the Respondent contends that the Complainant has failed to satisfy the requirements of the Policy. The Respondent asserts that the disputed domain names are not confusingly similar to the Complainant’s mark, that it is making a legitimate, fair and geographically descriptive use of the disputed domain names in connection with its long established real estate business, and that the disputed domain names were not registered and are not being used in bad faith.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain names are confusingly similar to the Complainant’s MOUNT SNOW mark. The first element of the Policy operates essentially as a standing requirement. The threshold inquiry under the first element is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
In this instance, the disputed domain names both incorporate the Complainant’s MOUNT SNOW mark in its entirety. The addition of geographic or descriptive words such as “Vermont” and “rental” or “rentals” does not serve to dispel Internet user confusion when the disputed domain names and the mark are compared under the standard identified above. Based on a comparison of the Complainant’s mark and the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain names are confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain names to attract Internet users to a website which offers real estate services in direct competition with the Complainant. It is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
The Respondent maintains that it registered the disputed domain names because they are descriptive of the geographic area where the Respondent’s real estate business if focused – namely, Mount Snow Vermont. The Respondent asserts that even the Complainant recognizes that the term “Mount Snow” is capable of being legitimately used in a geographically descriptive manner, and that this is all the Respondent is doing.
This Panel previously has held that where a respondent registers a domain name consisting of common or descriptive terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062.
In this case, there are substantial indications that “Mount Snow Vermont” has come to be geographically descriptive of an area of southern Vermont, notwithstanding that the name “Mount Snow” likely originated with the ski resort established by the Complainant’s predecessor in 1954, and that the Complainant uses “Mount Snow” as a business identifier and service mark. The Panel notes, however, that even the earliest of the Complainant’s federal registrations for MOUNT SNOW-formative marks – the MOUNT SNOW VERMONT registrations in 1984 and 1992 – were registered on the USPTO Principal Register pursuant to Section 2(f) of the Lanham Act. This is an indication that the USPTO considered the marks to be primarily geographically descriptive. The Complainant’s 2003 MOUNT SNOW registration also was obtained under Section 2(f), and the Complainant previously had disclaimed “Mount Snow Southern Vermont” when registering the mark MOUNT SNOW SOUTHERN VERMONT NO ONE ELSE IS CLOSE in 1993.
In view of the totality of the circumstances of this case, it is far from clear that the Respondent registered the disputed domain names seeking to capitalize on the goodwill associated with the Complainant’s mark. While the Respondent is using the disputed domain names to attract Internet users to a website offering real estate services in the same area of southern Vermont where the Complainant’s business activities are, this is not inconsistent with the use of the disputed domain names in a geographically descriptive sense, as the record indicates this area has come to be known as the “Mount Snow Area”, “Mount Snow Valley” or “Mount Snow Vermont”. Regardless, in view of the Panel’s findings under the following heading, it is unnecessary for the Panel to decide the issue regarding the Respondent’s rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Id. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.
After careful consideration of the totality of facts and circumstances in the record, the Panel finds that the Complainant has not satisfied its burden of demonstrating that the Respondent registered the disputed domain names in bad faith. For the reasons discussed under the preceding heading, the Panel is unable to conclude based on the record before it that the Respondent registered the disputed domain names seeking to profit from and exploit the Complainant’s trademark rights.
Accordingly, the Panel finds that the Complainant has failed to satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, the Complaint is denied.
William R. Towns
Dated: July 4, 2011