Quality Craft Industries, Inc. v. Domain Admin / Ashantiplc Limited
Claim Number: FA1607001684372
Complainant is Quality Craft Industries, Inc. (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is Domain Admin / Ashantiplc Limited (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <montezuma.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., Chairperson;
Houston Putnam Lowry, Esq., Chartered Arbitrator as Panelist; and
The Honourable Neil Anthony Brown QC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2016; the Forum received payment on July 21, 2016.
On July 26, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <montezuma.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@montezuma.com. Also on July 27, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 22, 2016.
Complainant’s Additional Submission was received on August 27, 2016 and was determined by the Forum to be compliant with Supplemental Rule 7 on August 29, 2016.
Respondent’s Additional Submission was received on September 1, 2016, and was determined by the Forum to be compliant with Supplemental Rule 7 on September 2, 2016.
On August 30, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Carol Stoner, Esq., Chairperson; Houston Putnam Lowry, Esq., Chartered Arbitrator as Panelist; and The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name <montezuma.com> be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant’s company, Montezuma Mfg., Inc., was established over 35 years ago for the business purpose of selling toolboxes. In furtherance of its business purpose, Complainant has registered the MONTEZUMA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,349,952, first use, Mar. 1, 2006), filed Oct. 17, 2012, registered June 11, 2013. Respondent’s <montezuma.com> domain name is identical to the MONTEZUMA mark and only adds the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain. Respondent is not commonly known by the disputed domain per Policy ¶ 4(c)(ii). Respondent has not offered any bona fide offering of goods or services or any legitimate noncommercial or fair use through the <montezuma.com> domain name. Rather, Respondent has used the website to feature links to third-party websites from which Respondent presumably profits through click-through fees. See Compl., at Attached Ex. 2H. Further, Respondent has solicited the sale of the <montezuma.com> domain name. See Compl., at Attached Ex. 2I (“This Domain Name is Possibly For Sale * All Offers Below $10,000 USD will be discarded”). See also Attached Exhibit 2F, demonstrating email contact with Respondent’s agent offering the disputed domain for $150,000USD to $200,000USD.
Respondent registered and used the disputed domain in bad faith as evidenced by its offering the domain for exorbitant costs, the exploitation of Internet user confusion for profit through the use of click-through links, as well as its opportunistic registration when Complainant inadvertently allowed registration to lapse in 1999.
B. Respondent‘s Contentions
Respondent registered the disputed domain in 2003.
Respondent has senior rights per the registration of the domain prior to Complainant’s demonstration of trademark rights in the MONTEZUMA mark.
Complainant makes material misstatements of fact. Complainant’s predecessor was not established in 1980; rather, it was formed in 1988 as “Montezuma Welding and Manufacturing Inc.” Resp. at Attached Ex. B. The mere use of this name does not confer a trademark right in MONTEZUMA, which is a geographic or otherwise widely used generic/descriptive word. See generally Resp., at Attached Exs. B–D.
Because Respondent has priority in the disputed domain, Respondent has rights and legitimate interests. Respondent has historically used the disputed domain in manners which do not compete with Complainant’s purported business. Respondent has sought to sell its domain because of the declining revenue it has encountered as well as the “hazards presented by automated keyword-matching systems used by domain parking platforms.” Because of the widely-used nature of the MONTEZUMA mark, Complainant would not be the only interested purchaser, so Respondent cannot be said to have targeted Complainant.
While the disputed domain represents a business asset for Respondent, there were dealings over price engaged in by both parties. Complainant has now taken to the Forum because the negotiations did not result in a favorable outcome. Further, Respondent has never competed with Complainant by selling tool boxes or other such goods. Lastly, Respondent could not have registered in bad faith because Complainant did not have rights in the mark until much later.
C. Additional Submissions
1. Complainant’s Additional Submission
Complainant alleges as follows:
Complainant submits a patent for a toolbox to prove its common law rights date back to 1979–80 (Reg. No. 3,930,484, first use 1-1-1980, filed 12-22-2009, registered Mar. 15, 2011). See Compl. Add. Sub., at Attached Ex. 4E. MONTEZUMA is noted on the patent application in the address line of LaVern Schmidt: “Montezuma, Kans.” Compl. Add. Sub., at Attached Ex. 4A. Complainant has used the MONTEZUMA mark on its websites to advertise toolboxes from 1997 to present day. See Compl., at Attached Ex. 2g (“About Montezuma”). In addition, Exhibit 4C shows an advertisement from the June/July 2000 publication of Construction Distribution magazine. The distinctive sloping angle of the toolbox cover makes the toolbox identifiable as a MONTEZUMA toolbox.
Respondent’s use of the domain to acquire pay-per-click profit does not confer rights or legitimate interests. Respondent has used a privacy service and has done nothing to associate itself with the domain. Respondent purchased the domain for $6.50 (see Resp., at Attached Ex. A), and now seeks to profit in excess of $25,000.
Respondent has been involved in past UDRP proceedings, indicating a bad faith pattern under Policy ¶ 4(b)(ii). See Compl. Add. Sub., at p.9. Respondent registered the domain using a privacy service, indicating bad faith. Respondent also registered the domain with actual and/or constructive notice, also indicating bad faith.
B. Respondent’s Additional Submission
Respondent alleges as follows:
Complainant’s predecessor-in-interest abandoned the domain name some 16 years ago when there was no public record of a claim of rights in “MONTEZUMA’ as a mark.
The term “Montezuma” is a common word in geography and history, and has
no famous or unique association with the Complainant.
At no time in more than a decade and a half of registration and use of the domain name has the Respondent ever used the domain name for any purpose having to do with the Complainant’s specialized toolboxes. While the Respondent’s use of the domain name has varied from time to time, it has been used for geographic and historical connotations.
The Complainant has not shown any fact of which the Respondent had actual notice or a duty of notice, in relation to the Complainant’s claimed trade or service mark claim in the domain name, which the Complainant’s predecessor in interest abandoned many years ago.
The Respondent’s registration and use of the domain name was not motivated by, nor has it been related to, the Claimant’s claimed trade or service marks.
The Respondent does not dispute that the Complainant and or its predecessors manufactured toolboxes, and began to brand them as Montezuma toolboxes in 2006, and has acquired trademark rights in “Montezuma” for toolboxes sold to professional mechanics.
While the Complainant claimed the “first use” of “Montezuma” as a trade or service mark at the earliest date of March 1, 2006, neither the Complainant nor its predecessor in interest who had been doing business in Montezuma, Kansas, under the trade name of “Montezuma Welding and Manufacturing Company”, had apparently been using “Montezuma” as a trademark on toolboxes.
The Complainant’s Exhibits ( Annex 3 Exhibits 3A-3D) clearly illustrates that its trademark for toolboxes at that time was “CPL” and that the Complainant was merely identified by its trade name “Montezuma”, as the manufacturer of that brand of tool box.
Complainant has not produced a single piece of evidence showing use of “MONTEZUMA” as a trade or service mark as of the time the Respondent acquired the domain name in 2003. Nowhere does the Complainant show any evidence of a “Montezuma” toolbox” pre-dating its claimed 2006 first use.
As the Complainant’s Supplement is completely silent and devoid of any evidence of secondary meaning through consumer recognition, such as number of customers, volume of sales, advertising budget, etc., Complainant has not proven that it has acquired any common law rights under UDRP.
The Complainant’s evidence shows that its predecessor operated as “Montezuma Welding and Manufacturing,” and that it marketed “CPL” brand tool boxes to an unknown market of specialist mechanics in small advertisements in specialty magazines.
Complainant’s predecessor used the domain name for three years, and the Respondent for 13 years. Respondent alleges that there has never been one day that the domain name was used to advertise anything to do with tool boxes. Rather, Respondent has advertised Central American travel and linked historical references, but never toolboxes.
The Respondent understands that the Complainant would like to have the domain name and has offered $25,000.00 for it.
Respondent alleges that the Complainant cannot seriously claim that its business has been disrupted while the Complainant claims to have been vigilantly watching the Respondent’s registration and use of the domain name.
Respondent states that Complainant’s citation of seven prior UDRP proceedings against the Respondent, as evidence of a pattern of bad faith, is misrepresentation, because the Complainant did not bother to mention that the Respondent prevailed in six of them.
Respondent asserts in its Supplemental Submission that Respondent has withdrawn from PPC monetization to selling off its inventory rather than having to police whether primarily automated PPC systems have gone off the rails.
Respondent uses a privacy service to avoid inviting online harassment, such as in the twelve of fourteen cases in which accusations against the Respondent were found to be unsupported by UDRP Panels.
Respondent sums up its assertions by saying that the Complainant has not shown registration and use of the domain name in bad faith in relation to any trade or service mark claim of record in this Proceeding.
(1) The domain name <montezuma.com> registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has junior rights; and
(2) Respondent has rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and is not being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
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(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
According to Respondent’s Exhibit B, the Complainant’s predecessor company, Montezuma Welding and Manufacturing Inc., was incorporated in 1988 in the town of Montezuma, Kansas. This exhibit also lists many other companies in Montezuma, Kansas, which includes the geographic term of Montezuma in the corporate name. The primary business purpose of Montezuma Welding and Manufacturing Inc., was the manufacturing and selling of toolboxes. The corporate name was later changed to Montezuma Mfg., Inc.
Respondent’s Exhibit A to Supplemental Submission, contains the Complainant’s predecessor’s now cancelled US TM Reg. No. 15886550, filed in 1989 for word mark CPL for use on metal tool boxes.
Respondent’s Exhibit A to its Response, evidences that Respondent registered the domain name <montezuma.com> domain name in 2003. Complainant, per its Annex 3, has registered the MONTEZUMA mark with the USPTO (e.g., Reg. No. 4,349,952, first use Mar. 1, 2006), filed Oct. 17, 2012, registered June 11, 2013). Therefore, Complainant’s trademark is junior to Respondent’s registration of the disputed domain name.
The Policy does not require a Complainant to possess senior rights in a trade or service mark in relation to a domain registrant’s acquisition and use of a domain name under a Policy ¶4(a)(i) analysis. Rather the junior rights may be fatal to a ¶ 4(a)(iii) bad faith claim.
Here however, Complainant has established rights sufficient to establish the first element of a UDRP claim under ¶ 4(a)(i) of the Policy at the time of filing of the Complaint. Panels agree that USPTO registrations confer rights. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Panels also agree that where a registration exists, rights date back to the filing date of a mark. See Adorama, Inc. v. Moniker Privacy Services, FA 1610020 (Forum May 1, 2015) (“Trademark protection extends back to the application filing date of a registered mark.”). The Panel concludes that Complainant has established rights that satisfy Policy ¶ 4(a)(i), but also continues to analyze the sufficiency of Complainant’s assertions under the common law, because the issue of senior rights in a mark arises under Policy ¶ 4(a)(iii).
Complainant (as of 2011, Quality Craft Industries, Inc., who purchased all of the intellectual property of Montezuma Mfg., Inc.,) alleges that it has common law rights in the Montezuma mark which predates Respondent’s purchasing and
registering of the disputed domain name. However, Panel has been convinced otherwise, due to a lack of evidence showing use of the Montezuma name on its toolboxes, or on any other product, prior to the time when the domain name was abandoned by its predecessor and registered by the Respondent in 2003. Complainant’s first acknowledged use of the mark as a trademark was in its applications in 2006. Panel has not viewed any evidence of use of Montezuma
mark as a trademark, that is, as an adjective, not a noun, where the mark is used to indicate a brand of the product in question. Rather the Panel has viewed use of the Montezuma mark as a tradename for the company, such as in Complainant’s Additional Submission Exhibit 4C, showing an advertisement from the June/July 2000 publication of Construction Distribution magazine, or in the address line of a design patent. See Compl. Add. Sub., at Attached Ex. 4E.
(Reg. No. 3,930,484, first use 1-1-1980, filed 12-22-2009, registered Mar. 15, 2011).
In establishing common law rights, Complainant claims it has used the
“Montezuma” mark on its websites to advertise toolboxes from 1997 to present
day. See Compl., at Attached Ex. 2g (“About Montezuma”). Panel concludes that
this usage is merely as a tradename, rather than as a trademark. Therefore, no
common law mark was proven.
Complainant’s Additional Submission Exhibit 4C shows an advertisement from the June/July 2000 publication of Construction Distribution magazine. Here again, the Montezuma mark is merely used as a tradename, rather than as a trademark. This corporate name in 2000 is a geographically descriptive tradename, for which no trademark had been filed at that time. This single advertisement, in which the mark was not even used as a trademark, referring to the toolboxes, was clearly insufficient to create a famous and distinctive mark in the minds of the general public, so as to acquire secondary meaning.
Complainant argues that Respondent’s <montezuma.com> domain name is identical to the MONTEZUMA mark and only adds the “.com” gTLD. A TLD (whether a gTLD, a sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLD’s. This Panel agrees that such an addition does not distinguish the domain name of <montezuma.com> from the trademark of Montezuma. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
While Respondent contends that the <montezuma.com> domain name is comprised of a common and geographic or otherwise generic/descriptive term and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights
in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
For the foregoing reasons, Panel concludes that Complainant has sufficient rights in the mark and that the domain name <montezuma.com> is identical or confusingly similar to Complainant’s mark and thus is sufficient to establish rights under ¶ 4(a)(i) of the Policy.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily
meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Panel is convinced through Respondent’s Exhibit A, that Respondent has priority in the disputed domain, in that it registered the domain name in 2003, while Complainant shows no actual proof of trademark rights until its USPTO trademark filings, asserting date of first use of the Montezuma mark in 2006, in Complainant’s Exhibit 4E. This priority gives Respondent rights and legitimate interests. See generally Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the complainant had not met its burden of proof to show respondent lacked rights or legitimate interests in a domain name when respondent’s registration of that domain name occurred before the complainant had established rights in its alleged mark).
Complainant has offered no proof to rebut Respondent’s assertions that Respondent has never used the Montezuma mark in conjunction with the toolbox business. Rather, Respondent, through its Internet Archive (See Respondent’s Exhibit F) has merely used the mark in a travel or a historical context, thereby not competing with Complainant’s toolbox business. Such evidence has successfully triggered the provisions of Policy ¶ 4(a)(ii). See Invicta Watch Co. of Am., Inc. v. Santana, FA 727672 (Forum Aug. 3, 2006) (“Moreover, Respondent used the domain name <invicta.com> for a significant period of time for business purposes, thus further highlighting his rights and legitimate interests in the title.
Respondent alleges that at all times his business was entirely unrelated to that carried on by Complainant.”). Because Respondent has not been proven to have competed with Complainant during its extensive thirteen year use of the domain, the Panel finds that the substantial nature of this evidence weighs in favor of Respondent’s having established a prima facie case of rights in the domain.
Respondent claims it has sought to sell its domain because of the declining revenue it has encountered as well as the “hazards presented by automated keyword-matching systems used by domain parking platforms.” Because of the widely-used nature of the MONTEZUMA mark, Complainant would not be the only interested purchaser, so Respondent cannot be said to have targeted
Complainant.
Panels have recognized the inherent value of domains and that the business of acquiring lapsed domains may in fact be legitimate (and lucrative). See Alphalogix Inc. v. DNS Servs., FA 491557 (Forum. July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”). In addition, panels have considered persuasive arguments where respondents utilized domains in connection with their value as generic words. See Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
Panel has viewed no credible evidence that Respondent has infringed any trademark rights that Complainant may have had in the “Montezuma” name. Rather, Respondent has used the domain in connection with its value as a geographic/generic term, and not necessarily as it relates to any rights Complainant may have in the “Montezuma” mark. In these regards, Panel has been influenced by Respondent’s Exhibit E, showing Concurrent US Trademark
Registrations Comprising “Montezuma” and by Respondent’s Exhibit F, showing Historical Screenshots Showing Respondent’s Use of the Domain Name.
For the foregoing reasons, the Panel finds for Respondent under Policy ¶ 4(a)(ii).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are
insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA
Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Forum Jan. 16, 2003) (finding
that general allegations of bad faith without supporting facts or specific examples
do not supply a sufficient basis upon which the panel may conclude that the
respondent acted in bad faith).
Because the Panel has concluded that Respondent has rights or legitimate interests in the <montezuma.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent convincingly argues that the disputed domain represents a business asset for Respondent, and there were dealings over price, engaged in by both parties, in good faith. This Panel concludes that Respondent was engaged in a good faith business negotiation, and that offers for sale of a domain do not necessarily indicate bad faith registration and use. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (finding that “when a Complainant indicates a willingness to engage in a market transaction for the name, it does not violate the policy for a [the respondent] to offer to sell for a market price, rather than out-of-pocket expenses”); see also
Aftermarket Auto Parts Alliance, Inc. v. This Domain for Sale, Toll Free: 866-822-
9073 Worldwide: 339-222-5132 a/k/a BuyDomains.com, FA1202001428939
(Forum Mar. 16, 2012) (finding that the respondent did not register the domain
name primarily for the purpose of selling the disputed domain name to the
complainant or its competitors under Policy ¶ 4(b)(i), where the respondent
stated that it buys domain names considered to be generic so that it may resell
them at a later date).
Complainant has offered no supporting evidence, beyond mere assertions, that
Respondent has ever competed with Complainant by selling tool boxes or other
related goods. Panels have agreed that where there is no purported
competition, no bad faith exists. See Chestnutt v. Tumminelli, D2000-1758
(WIPO Feb. 2, 2001) (finding that the respondent did not register and use the
<racegirl.com> domain name in bad faith because the complainant provided no
evidence that the respondent intended to disrupt or divert business from the complainant). The Panel agrees that Respondent did not demonstrate bad faith as per the language of Policy ¶¶ 4(b)(iii) or (iv).
Panel has been persuaded through Respondent’s Exhibit A, evidencing Respondent’s domain name registration in 2003, and through Complainant’s Annex 3 Exhibit 3B, evidencing date of first use of trademark rights of 2006, that Respondent had priority in registration. The Panel has also viewed the evidence Complainant has submitted to establish common law rights, to determine whether there is sufficient basis to say Complainant has rights which predate Respondent’s registration of the disputed domain. Panel has concluded that Complainant has acquired no secondary meaning in the disputed mark, sufficient to establish any common law rights, to shift the priority date to a prior period.
Therefore, Respondent could not have registered in bad faith because Complainant did not have rights in the mark until much later. Panels have agreed that where a respondent’s registration predates, bad faith registration would be impossible. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the
mark).
Panel is convinced, through Respondent’s Exhibit E (Concurrent US Trademark Registrations Comprising “Montezuma”) that the <montezuma.com> domain name is comprised entirely of a common term that has many meanings apart
from use in Complainant’s “Montezuma” mark. Because a Respondent is free to register a domain name consisting of common terms, such as geographically descriptive terms, the Panel also finds that Respondent did not register or use the <montezuma.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
For the foregoing reasons, the Panel concludes that Complainant has not satisfied its burden of proof, to allow for a finding of bad faith registration or bad faith use, under Policy ¶4(a)(iii).
Doctrine of Laches
Respondent has raised the defense of laches, in that Complainant has waited over a decade to file a Complaint, and then, only after failed negotiations, in an attempt to purchase the disputed domain name.
Panel does not consider laches necessarily to be a bar to a successful Complaint. However, Panel has considered that Complainant has admitted that it has “watched” the registration and use of the name since its inadvertent lapse, approximately 13 years ago, and has neither provided proof of business disruption, nor has filed a Complaint during these years. Complainant’s mere “watch and wait” stance, perhaps to catch a lapse in Respondent’s renewal of name, was relevant to Panel’s determination of Respondent’s legitimate acquisition of rights during this lag period. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
DISSENT
Houston Putnam Lowry, Esq. Chartered Arbitrator and Panelist in this matter, dissents as to the findings of Policy issues of “Rights or Legitimate Interests” and dissents in part as to “Registration and Use in Bad Faith” in the instant case, as follows:
Respondent registered the domain name using a privacy service. The domain name was being registered in a commercial context (Respondent claims to be in the business of buying and selling domain names). This means the domain name was owned by a legal owner that has no rights to the domain name.
All rights to the domain name were held by the undisclosed beneficial owner. Since Respondent has done nothing publicly to associate itself with the domain name, Respondent has acquired no rights or legitimate interests with respect to the domain name. This domain name does not represent Respondent’s business, but Respondent’s inventory.
Bad faith is measured at two different times: at the time of registration and then the period of use. Since Complainant did not have rights to the mark at the time of registration (March 3, 2000), clearly Policy ¶4(b)(ii), ¶4(b)(iii) and ¶4(b)(iv) are not applicable because neither Complainant nor its predecessors had rights to the mark at that time. The main remaining question is Policy ¶4(b)(i).
This Panel member is persuaded there is bad faith registration and use because of several factors. The first factor is using a privacy service in a commercial context raises a rebuttable presumption of bad faith. Respondent has done nothing to rebut that presumption. Respondent does not need to conceal its identity from the marketplace to be a domain name reseller. Respondent offers no explanation as to why Respondent concealed its identity (and conceals it to this very day). Only people with an intent to deceive conceal their identity, which is the very definition of bad faith. Since Respondent did this at the time of registration and through the present day, there was bad faith registration and use of the domain name.
Second, Respondent went looking for a large quantity of recently expired domain names to register. Clearly, this was not done for an eleemosynary purpose. Respondent intended to resell those domain names. Respondent advertised this domain name for sale (as it presumably did for others). Clearly, Respondent expected to sell this domain name at a profit (meaning it must expect to resell the domain name for an amount in excess of it’s out of pocket costs in order to stay in business). The primary market was the old owners of the domain names. While Complainant may not have been specifically targeted, a class to which Complainant belonged was specifically targeted. While Respondent could have sent an email to all of the former owners, it did not do that.
Third and finally, Respondent was not using this domain name. It was just parked. The fact Respondent parked a lot of domain names instead of just one domain name should not change the analysis. To purchase a confusingly similar domain name just to park it constitutes bad faith registration and use. END DISSENT.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes, by a majority vote, that relief shall be DENIED.
Accordingly, it is Ordered that the <montezuma.com> domain name REMAIN WITH Respondent.
Carol Stoner, Esq., Chairperson
The Honourable Neil Anthony Brown QC as Panelist
Houston Putnam Lowry, Esq., Chartered Arbitrator as Panelist
Dated: September 13, 2016
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