The Complainant is Montar A/S of Bjert, Denmark, represented by Andersen Partners, Denmark.
The Respondent is Domain Administrator, NameFind LLC of Cambridge, United States of America (“United States”), represented by Gerald M. Levine, Esq., United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2018. On August 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2018, 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 and contact information for the disputed domain name.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2018. After a request from the Respondent, the Center extended the due date for the Response to September 22, 2018. The Response was filed with the Center on September 20, 2018.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 26, 2018. 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. 4. Factual Background
According to the Complaint the Complainant is a Danish registered company registered and trading under the name Montar A/S. Its object as shown by Annex 1 to the Complaint is “to carry on wholesale trade and other activities thereto”.
In particular it trades, dealing in clothing, footwear, headgear and accessories for use in horse riding activity. Its products are sold in 30 countries and it is therefore widely known within the horse back rider community.
Evidence of the Complainant’s trade mark rights is set out in Annexes 11 and 12 to the Complaint. It is the owner of Danish trade mark VR 2003 01353 registered on April 14, 2003 for inter alia clothing, headgear and footwear in classes 9 and 25. The mark consists of the word MONTAR but with the second letter “O” consisting of a horse device.
It is also the owner of a second Danish application for the same mark MONTAR incorporating a device for clothing, footwear, headgear and related sales activities in classes 9, 25 and 32. This was preliminarily registered on September 7, 2017.
In addition the Complainant is the registrant of the domain name registered on August 20, 2002.
The Panel accepts the truth of the above evidence adduced by the Complainant.
According to the Respondent, as set out in a Declaration sworn on September 18, 2018 by Paul Nicks, Vice-President of Aftermarket Sales of the Respondent, NameFind LLC, and exhibited to the Response, the Respondent is a major presence in the secondary market for the reselling of domain names and is the registrant for the disputed domain name . Its inventory consists of domain names composed of dictionary words, generic and descriptive terms and common phrases that have been acquired for their semantic values and thought to be attractive to industries, trades and individuals as appropriate names for their business and personal use. The Respondent acquired the disputed domain name from Marchex Sales Inc another reseller of Domain Names on April 1, 2015.
Mr. Nicks asserts that the Respondent had no reason to believe that the disputed domain name corresponded to a trade mark because “montar“ is a common Spanish dictionary word (no detailed evidence is given of this) and there are over 36 trade mark owners worldwide which incorporate “montar” in their trade marks. A list of these is annexed to the Declaration.
The Panel accepts the truth of the above evidence as set out in Mr. Nick’s Declaration. 5. Parties’ Contentions A. Complainant
In summary the Complainant asserts:
1. That it is the owner of trade mark rights in the mark MONTAR incorporating the horse device and that “there is identity” which the Panel takes to mean confusing similarity with the disputed domain name.
2. There is no evidence that the Respondent has “shown any rights or legitimate interest” in the disputed domain name.
3. The disputed domain name was registered and maintained in bad faith since the Respondent is holding it passively and is not and has never used it. The Respondent holds the domain name for the sole purpose of selling it and is doing so, on the evidence, for a price which “exceeds in high factors “ the “out of pocket expenses “ required in a sale. B. Respondent
In summary the Respondent submits:
1. The Respondent admits that the Complainant owns a registered figurative trademark for MONTAR. The Respondent does not dispute that the Complainant has standing to maintain this administrative proceeding. The disputed domain name consists of a common Spanish dictionary word and there are a large number of registered marks worldwide incorporating the word “montar”.
2. The Respondent is in the business of acquiring and reselling domain names legitimately. The disputed domain name was acquired for its “intrinsic not its trade mark value”. The Respondent acquired lawfully without knowledge of the Complainant’s mark with no intention of using the mark in any infringing way.
3. The Respondent had no knowledge of the Complainant’s mark. There are a large number of businesses worldwide using “montar“ as part of a trading name or trade mark. The selling price of USD 8,500 merely matches supply and demand and in the absence of any other indicia of bad faith should not lead to a finding of bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
On the basis of the evidence of the Complainant’s Danish trade mark registrations referred to above the Panel finds that it has rights in the trade mark MONTAR incorporating the horse device.
In the Panel’s view the essence of the trade mark remains MONTAR. The horse device only elaborates the second letter “o” within the word “montar”. The disputed domain name consists of “montar“ together with the generic Top-Level Domain (“gTLD”) “ .com “.
The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark MONTAR incorporating the horse device in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has not shown any rights or legitimate interest in the disputed domain name and submits that no evidence can be provided regarding the Respondent’s identity or its previous and actual use of the domain name.
In a comprehensive Response supported by Mr. Nick’s Declaration the Respondent discloses its identity and confirms that it is “a major presence” in the secondary market for reselling domain names. It submits that its acquisition and use of the disputed domain name is lawful and consistent with the UDRP for the reselling of domain names composed of generic and common terms.
It also relies on the fact that it had no knowledge of the Complainant’s trade marks which are in any event Danish and that the Complainant does not appear to have a United States presence where the Respondent is based. It points out that there are more than 36 trade mark owners worldwide using or incorporating “montar” in their trade marks and that “montar” is a generic Spanish word.
The Panel notes that the term “montar” appears to be a dictionary term at least in the Spanish and Portuguese languages and agrees with the Respondent that there is a difference between registration or acquisition of a domain name for resale in the secondary market when the Respondent has no knowledge of the Complainant’s rights as opposed to circumstances when on the evidence such knowledge exists. The Respondent relies upon paragraph 4(c)(i) of the Policy which provides a defense in circumstances whereby;
“ …..before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name...… in connection with a bona fide offering of goods or services …..”
The Respondent cites Compania Logistica de Hidrocarburos CLH SA v. Dropcatcher Info /Bdminton, Inc,WIPO Case No. D2018-0973 in support of the general proposition that dealing in dictionary words can constitute a legitimate interest even if a third party has trade mark rights which are similar or identical to the domain name.
A similar view was expressed by the panel in Deep Focus Inc v. Domain Admin, Abstract Holdings International LTD,WIPO Case No. D2018-0518 where it was accepted that “where a party legitimately registers a domain name comprising commonplace or dictionary elements for sale, without intent to target the trade mark of an existing trade mark owner, then that offer for sale can give rise to rights or legitimate interests in the domain name as a bona fide offering of goods or services for the purposes of paragraph 4 (c) (i) of the Policy …..”.
In this case there is no evidence that the Respondent intended to target the Complainant.
The Respondent’s evidence given in a Declaration and which is not contradicted is that it did not know about the Complainant. It has a right and legitimate interest in the disputed domain name and acquired it lawfully without knowledge of the Complainant’s mark with no intention of using it in an infringing way.
In these circumstances the Panel finds for the Respondent in respect of this element. C. Registered and Used in Bad Faith
The Panel’s finding in 6.B above is sufficient to determine the Complaint. However on grounds of completeness the Panel proceeds to set out its findings in respect of this element.
The Complainant submits that this is a case of “passive holding” of a domain name and the Respondent is not using nor ever has used the domain name. It relies upon the fact that the Respondent has previously been involved in the sale of domain names and is asking a sale price considerably greater than out of pocket costs. This is in breach of paragraph 4(b)(i) of the Policy.
The Respondent asserts on the evidence that because the Complainant was unknown to the Respondent, it could not have acquired the domain name primarily for transferring it to the Complainant or a competitor within paragraph 4(b)(i) of the Policy. In support of this proposition it cites, inter alia, Hopscotch v. Perfect Privacy LLC /Joseph William Lee,WIPO Case No. D2015-1844 where the panel held trading in domain names will not per se constitute bad faith unless the registrant knew of and was intentionally targeting a complainant’s trade mark rights at the time.
The Panel therefore finds for the Respondent in respect of this element. 7. Decision
For the foregoing reasons the Complaint is denied.
Clive Duncan Thorne
Sole Panelist
Date: October 10, 2018
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