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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Monticello Group, Ltd. v. Teletravel, Inc.

Case No. D2002-1157

 

1. The Parties

The Complainant is The Monticello Group, Ltd., of Canberra ACT 2601, Australia, represented by Dr. Richard Jefferson of Australia ("the Complainant").

The Respondent is Teletravel, Inc., Dennis Toeppen, of Champaign, Illinois, United States of America, represented by Mark W. Good of Davis & Schroeder, P.C. of Monterey, California, United States of America ("the Respondent").

 

2. The Domain Name and Registrar

The disputed domain name <monticello.com> ("the Domain Name") is registered with TierraNet d/b/a DomainDiscover ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2002. On December 20, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 17, 2003, 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 for the administrative, billing, and technical contact. The Center, having obtained the Complaint and an amendment to the Complaint to correct a formal deficiency, verified that the Complaint in its amended form satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 February 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response February 23, 2003. The Response was filed with the Center February 22, 2003.

The Center appointed Tony Willoughby, Arne Ringnes and Neil A. Smith as panelists in this matter and notified the appointment on March 27, 2003. 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.

On April 4, 2003, the Complainant submitted a response to the Response, the primary purpose of which was said to be to correct typographical errors in the Complaint. On April 7, 2003, the Respondent submitted a further filing commenting on one aspect of the Complainant’s further filing.

On April 8, 2003, the Panel issued the following direction:

"The Panel is prepared to accept the Complainant’s supplementary filing to the extent that it corrects mistakes in the Complaint, but will not accept it to any greater degree unless the Complainant can show exceptional circumstances meriting departure from the normal procedure. In particular, the Panel will not admit the supplementary filing to the extent that it seeks to supplement the Complaint with material which was available to the Complainant at the time of filing of the Complaint."

The Panel has read both supplemental filings.

To the extent relevant the Complainant corrects two typographical errors and explains why the Complainant is the owner of various patents which appear to be in the names of others. In providing that explanation the Complainant produces a change of name certificate demonstrating that the Complainant only acquired its ‘Monticello’ name in December 2000. The Respondent’s supplemental filing draws attention to the fact that the Complainant only adopted its ‘Monticello’ name four years after the Respondent registered the Domain Name.

 

4. Factual Background

The Complainant was incorporated under the laws of the State of Washington on September 26, 1996, under the name of Cambiosys, Inc and acquired its present name, The Monticello Group Limited in December 2000. The Respondent, a business based in Illinois, registered the Domain Name on November 14, 1996.

In October 2001, the Complainant learned of the existence of the Domain Name in the hands of the Respondent and found that it was for sale to the highest bidder at a site at www.inert.com. The Complainant bid for the Domain Name on two occasions on October 31, 2001, and in September 2002. The bids were for $1,000 and $1,200 respectively, but the Complainant received no response. After further investigation on December 10, 2002, the Complainant found that the URL www.inert.com diverted to Premier Domains For Sale. At that site there was a notice indicating that offers for less than $5,000 would be discarded immediately.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

In support of this contention the Complainant claims that it is one of a group of companies sharing the Monticello name and that it owns and licenses intellectual property in biotechnology. It also claims to sponsor music festivals and to commission original works of art.

The Complainant states that the common link of these activities is "the umbrella of Monticello, the name so chosen to reflect the origins and philosophy of the company’s owner and founder, Dr Richard Jefferson."

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that to the best of its knowledge, there is no evidence of 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. The Complainant states that to the best of the Complainant’s knowledge the Respondent is not commonly known by the Domain Name.

The Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith. It refers to the fact that the Domain Name is offered for sale at www.inert.com and Premium Domains For Sale. It also refers to the offers that it has made for the Domain Name (see the Factual Background above).

The Complainant contends that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the Domain Name.

B. Respondent

The Respondent’s contentions, insofar as it is necessary to identify them for the purpose of coming to a decision in this case, are referred to under the next heading "Discussion and Findings". The Panel finds it unnecessary to particularize the Respondent’s contentions in any great detail given the failure of the Complainant to recite in the Complaint a sufficient basis for a complaint under the Policy.

However, significant points to emerge from the Response are:

1. from 1997 to July 2000, the Respondent used the Domain Name to provide vanity email addresses for people living in the community of Monticello, Illinois. The Respondent contends that this was the reason that the Domain Name was registered in the first place. It ceased to provide that service by reference to the Domain Name when it sold off its ISP arm, Net 66;

2. at the time of registration of the Domain Name the Respondent was unaware of the existence of the Complainant and its claimed rights to the name Monticello;

3. there has been widespread use of the Monticello name by a large number of different users in different contexts.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name comprises the name Monticello and the generic .com domain suffix. The Complainant points to its name Monticello Group. It provides no evidence of any kind to demonstrate that it is known by the name Monticello (per se). Indeed, beyond a bare assertion and a certificate of incorporation, it produces no evidence to support its contention that it has a significant business under and by reference to the name Monticello Group.

To establish trade mark rights a Complainant has to produce either a trade mark registration certificate or, failing that, sufficient information to support a claim that the name is an unregistered trade mark.

The Complainant produces no trade mark registration certificate and produces no details of the extent of its trade under the claimed mark. One would have expected to see sales figures, details of advertising and promotional expenditure, sample advertisements and promotional material to suggest that the Complainant has a reputation and goodwill associated with the name. None of that has been produced to the Panel, simply a few very general unsupported statements as to the nature of the Complainant’s business.

The Complainant has failed to establish to the satisfaction of the Panel that it has trade mark rights in the name Monticello.

B. Respondent’s Rights and/or Legitimate Interests

While paragraph 4(c) of the Policy identifies matters for the Respondent to prove to demonstrate rights or legitimate interests in respect of the Domain Name, the overall burden of proof is upon the Complainant. The Complainant is required to make out a prima facie case before the Respondent is under any pressure to demonstrate any of the matters set out under paragraph 4(c) of the Policy.

Under this head the Complainant recites by rote a denial of all matters that the Respondent might advance under paragraph 4(c) of the Policy but provides no details of the extent to which (if at all) it has investigated the Respondent’s use of the Domain Name.

Even if, which is doubtful, the Complainant has done enough to require the Respondent to answer the allegation, the Respondent has satisfied the Panel that in advance of any notice of the dispute, it offered a bona fide vanity email address service under and/or by reference to the Domain Name. One of the members of the Panel who is familiar with the law of the State of Washington, the state of incorporation of the Complainant, observes that Washington case law regards the provision of vanity email addresses as a legitimate business activity, not cybersquatting.

Accordingly, the Complainant has failed to satisfy the Panel that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Generally, to demonstrate bad faith registration and use of a domain name, a Complainant must at the very least show that in registering or using the domain name the Respondent had the Complainant in mind.

Here, the Complainant claims that the Respondent registered the Domain Name with a view to selling it to the Complainant or a competitor of the Complainant (paragraph 4(b)(i) of the Policy.

The Complainant makes a bare assertion to that effect but produces no supporting evidence of any kind. Offers to sell are not of themselves objectionable under the Policy. Were that the case, trade in domain names would of itself be objectionable, which it is not.

The Respondent denies that in November 1996 it was aware of the existence of the Complainant, a company which was incorporated some 2 months earlier (albeit, as now emerges from the Complainant’s supplemental filing, under the name Cambiosys, Inc.).

Even without the Complainant’s supplemental filing, the Panel would have accepted the Respondent’s denial of any knowledge of the Complainant’s claims to rights in the name Monticello. Bare, unsupported allegations of bad faith are ordinarily insufficient.

In this case, the Complainant’s supplemental filing, disclosing as it appears to disclose, that the Complainant only adopted its ‘Monticello’ name some four years after registration of the Domain Name, means that the bad faith claim was flawed from the outset.

In the result, the Complainant has failed to prove that the Domain Name was registered and is being used in bad faith.

 

7. Decision

The Complaint is dismissed.

 

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Tony Willoughby
Presiding Panelist

Arne Ringnes
Panelist

Neil A. Smith
Panelist

Dated: April 16, 2003