WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montane Ltd. v. Domain Hostmaster / Domain manager, Orion Global Assets
Case No. D2017-0309
1. The Parties
The Complainant is Montane Ltd. of Ashington, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Withers & Rogers LLP, United Kingdom.
The Respondent is Domain Hostmaster of Fortitude Valley, Australia / Domain manager, Orion Global Assets of East End, Anguilla, Overseas Territory of the United Kingdom, represented by John Berryhill, United States of America.
2. The Domain Name and Registrar
The disputed domain name <montane.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2017. On February 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 24, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2017. On March 20, 2017, the Respondent requested the automatic extension to file its Response under paragraph 5(b) of the Rules. The Response was filed with the Center on March 24, 2017.
The Center appointed Andrew D. S. Lothian, Adam Samuel and Alistair Payne as panelists in this matter on April 20, 2017. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The Complainant is the proprietor of a variety of registered trademarks for the word mark or stylized word mark MONTANE, such as for example European Union Trademark No. 913079 for the word mark MONTANE filed on August 24, 1998 and registered on July 7, 2003 in international class 25. The Complainant’s earliest trademark registration is United Kingdom registered trademark No. 1573082, filed on May 24, 1994 and registered on August 9, 1996 in international class 25. That mark is no longer in force. The Complainant furthermore changed its name from Chonos Limited to Montane Ltd on May 3, 2016 thereby reflecting its earlier mark. Its line of business is articles of clothing adapted for use in outdoor pursuits.
The disputed domain name was created on August 21, 1996. According to a screenshot obtained by the Respondent from “www.screenshots.com” dated April 9, 2016, the disputed domain name pointed to a domain name broking website at “www.ename.com” on which the disputed domain name was offered for sale alongside a photograph of a mountain landscape. As at the date of this Decision, the disputed domain name continues to point to that site.
5. Parties’ Contentions
The Complainant asserts that it is the proprietor of numerous registered trademarks containing or comprising the word MONTANE and that the disputed domain name is identical to such marks. The Complainant notes that its original mark, although no longer registered, pre-dates the registration date of the disputed domain name.
The Complainant submits that the use of the disputed domain name is intended to gain an unfair commercial advantage by diverting customers of the Complainant to the Respondent’s website, noting that due to the longstanding registered rights of the Complainant, consumers will access the Respondent’s website in the mistaken belief that it is the website of the Complainant leading to their being misled and confused. The Complainant contends that the Respondent has not been commonly known by the disputed domain name, that the Respondent has no connection with the Complainant and has not received consent to use the Complainant’s trademark in the disputed domain name.
The Complainant asserts that the disputed domain name was registered to prevent the Complainant from reflecting its mark in a corresponding domain name and that the disputed domain name has the primary purpose of disrupting the business of the Complainant. The Complainant notes that it has been making use of its trademarks since 1994 and that the disputed domain name was created on August 21, 1996. The Complainant submits that the registration of the disputed domain name after the Complainant had secured registered trademark rights creates a strong inference that the Respondent was aware of the Complainant’s earlier use and registration of its trademarks and suggests that the Respondent has acted and is acting with opportunistic bad faith in order to exploit the rights of the Complainant.
The Complainant notes that the Respondent has attempted to sell the disputed domain name to the Complainant for a six figure sum in response to the Complainant’s proposed price of USD 11,000 which it describes as “more reasonable, commercially accurate and justifiable”. The Complainant asserts that the email correspondence indicates that the Respondent has acquired the disputed domain name primarily for the purposes of selling it to the Complainant, noting that the proposed sale price was for valuable consideration well in excess of the Respondent’s out-of-pocket expenses directly related to the acquisition and management of the disputed domain name.
The Respondent submits that the disputed domain name corresponds to a generic term in several languages which is widely and non-exclusively used by a variety of third parties. The Respondent notes that the Complainant does not allege that the disputed domain name has ever been used to divert customers seeking to purchase outdoor clothing or for any other use relevant to the Complainant’s goods and services. The Respondent states that if it were seeking to sell the disputed domain name to the Complainant or one of its competitors it would not have replied to an offer from an apparent third party in the first place. The Respondent asserts that the circumstances of the present case are broadly typical of a “plan B” UDRP proceeding.
The Respondent notes that the Complainant does not present any exhibits showing the website corresponding to the disputed domain name. The Respondent asserts that the Complainant has presented no evidence or argument that the word “montane” is exclusively or even primarily associated with the Complainant’s brand of clothing. The Respondent notes that the primary meanings of “montane” include an adjective in English meaning “of or inhabiting mountainous country”, in Italian meaning “mountainous” or “mount it/him” or in German meaning “pertaining to mining or metallurgy”. The Respondent submits that it is seeking to attract offers for the disputed domain name through a web page depicting a “montane” landscape and that in so doing the Respondent does not derive commercial advantage over anyone at all, nor does it divert or mislead the Complainant’s customers.
The Respondent states that as a commercial indicator the word “montane” is not exclusively or notoriously associated with the Complainant. The Respondent identifies some eight trademarks registered by third parties for the mark MONTANE covering various goods and services. The Respondent argues in these circumstances that it is not tenable that a visitor to the website associated with the disputed domain name is seeking the Complainant and being diverted by the Respondent. The Respondent identifies four example domain names containing the word “montane” relating to different types of businesses including a shipping company, a candle designer, a real estate developer and a construction firm. The Respondent notes that none of these entities is selling clothing and adds that neither is the Respondent.
The Respondent argues that its use of the disputed domain name for an inquiry form about the domain name itself together with an illustrated depiction of the type of thing for which the domain name might find a descriptive, generic or suggestive use, cannot be said to be taking unfair advantage of a trademark for apparel. The Respondent notes that it deliberately declines to utilize the disputed domain name in association with automated parking advertising and submits that this demonstrates the care which the Respondent has taken to avoid associating the name with a secondary meaning belonging to another.
The Respondent points out that there is no allegation in the Complaint that the Respondent’s use of the domain name violates any cognizable right of the Complainant in connection with apparel but rather the sole allegation that the disputed domain name is for sale. The Respondent notes that when it first received a communication regarding the disputed domain name, Mr. Doxat, the Complainant’s representative, did not identify himself as acting on behalf of any trademark claimant. The Respondent states that typically a “plan B” complainant will solicit a negotiation without identifying a trademark claim and then will assert that the respondent was attempting to sell the domain name concerned primarily for the purpose predicated on that unknown claim.
The Respondent notes that in their negotiations both of the Parties were placing a value upon the disputed domain name considerably in excess of the registration fee. The Respondent submits that the sale of domain names comprised of common terms, without some indicia of bad faith, is not evidence of cybersquatting. The Respondent adds that the only allegation of bad faith in the present case is that the Respondent replied to the Complainant’s offer, submitting that there is nothing suggesting that the Respondent has done anything other than to have registered a dictionary word as a domain name and then offered it for general sale. The Respondent asserts that the Complainant’s sole allegation of bad faith does not demonstrate that the disputed domain name was registered primarily for sale to the Complainant or for any purpose relating to the Complainant’s trademark claim for apparel.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under this element of the Policy, the Complainant must demonstrate that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to such trademark. It is not necessary for the purposes of the assessment under this element that the trademark concerned pre-date the creation of the domain name at issue.
In the present case, the Complainant relies upon its various MONTANE registered trademarks. These are identical to the second level of the disputed domain name. This is sufficient for the Panel to find confusing similarity between the disputed domain name and the Complainant’s trademark as the applicable top-level suffix in a domain name, in the present case “.com” is typically disregarded under this test (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
A failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding on the question of registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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 your web site or location or of a product or service on your web site or location.”
Under this element of the Policy, the Panel must determine whether the Respondent registered, or acquired, the disputed domain name in bad faith. Assuming such a finding, the Panel must determine whether the disputed domain name is being used in bad faith.
In the present case there is no evidence before the Panel as to when the Respondent acquired an interest in the disputed domain name. In the absence of such, the Panel is left to assume that the Respondent was the original registrant of the disputed domain name in 1996, this being the point at which bad faith registration should be assessed.
The Complainant in this case has not demonstrated to the Panel’s satisfaction that the Respondent sought to target the Complainant or had knowledge of it or its trademark. For example, there is no evidence provided by the Complainant as to the extent of its use of the MONTANE mark or the reputation attaching to it at the point when the disputed domain name was created. The disputed domain name consists of a dictionary term in some languages and there is no evidence that this term is or was exclusively or predominantly associated with the Complainant such that any degree of targeting might reasonably be inferred.
Similarly, there is no evidence before the Panel that the Respondent’s use of the disputed domain name sets out to target the Complainant or its MONTANE mark. The Respondent is making a general offer of sale of a domain name consisting of a term which might be of interest to a variety of entities. This is not an activity that is condemned by the Policy unless it is accompanied by some indicia of bad faith and in the Panel’s view there is no such indicia to be found on the present record. Insofar as the Respondent makes any reference to the term “montane” on the website associated with the disputed domain name, it uses the generic sense by displaying a picture of a mountain landscape. There is no use of the term in the manner of the Complainant’s trademark, nor does there appear to the Panel to be any other way, in the circumstances of this case, by which the Complainant’s argument regarding the alleged intentional diversion of its customers or confusion with its mark could be made out.
With regard to the Complainant’s submissions on the negotiations for the sale of the disputed domain name, the Panel notes that the Respondent sought to sell the disputed domain name to a person who did not initially identify themselves as an agent of the Complainant or any other owner of rights in the term “montane”. In any event, there is no evidence on the present record that the Respondent’s primary intent was to sell the disputed domain name to the Complainant in particular or to a competitor of the Complainant. On the contrary, the evidence points to the proposed sale to any interested parties of a domain name consisting of a generic or dictionary word. The Panel accepts the Respondent’s submission that both of the Parties were placing a value on the disputed domain name in excess of typical out-of-pocket costs and that there is nothing unusual in this, in the context of generic or dictionary word domain names, which might lead to an inference of bad faith registration or use on the part of the Respondent.
In all of these circumstances, the Panel concludes that the Complaint fails on the third element and that the requirements of paragraph 4(a)(iii) of the Policy have not been satisfied.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: April 26, 2017