LeitsätzlichesAuch wenn sich der Respondent (=Beklagte) in einem WIPO-Verfahren nicht meldet, kann das Verfahren zu seinen Gunsten entschieden werden. Im Streit um die Domain "momo.com" verneint der Panelist (=Schiedsrichter) den "bad faith" (=die Bösgläubigkeit bei der Domainregistrierung) des Respondent, weil diese mit Vornamen "Maureen", üblicherweise abgekürzt mit "Mo" heißt, die E-Mail-Adresse "Mo_white@.." nutzt und zudem die zwei Marken des Complainents (Klägers) über keine überragende Bekanntheit verfügen
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-0838
Entscheidung vom 6. November 2002
1. The Parties
The Complainant in this proceeding is Breed Technologies ...("U.S.A.").
The Respondent in this proceeding is Maureen W. (the "Respondent"), an individual ..., U.S.A.
2. The Domain Name and Registrar
The domain name at issue is <momo.com>. The Registrar is Network Solutions, Inc. ("the Registrar").
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, (the "Rules") and the Supplemental Rules for the Policy (the "Supplemental Rules") of the WIPO Arbitration and Mediation Center (the "Center").
The Center received the Complainantâ€™s Complaint by email on September 6, 2002, and in hardcopy on September 9, 2002.
On September 9, 2002, the Center requested registration verification details from the Registrar via email. On September 10, 2002, the Registrar confirmed by return email that the Domain Name is registered to the Respondent, that the Domain Name is subject to the Policy, and that the Domain Name currently is active.
On September 11, 2002, the Center notified the Respondent that a Complaint had been filed against it and set the date for response as October 1, 2002. The notification was sent to the Respondentâ€™s email address and postal address provided by the Registrar, as well as to two other postal addresses provided by Complainant in the Complaint. Tracking details obtained from Federal Express indicate that delivery was completed to only one of the three mailing addresses. No Response was received from the Respondent.
On October 9, 2002, the Center transmitted the complete file to Mr. Arif Ali (the "Panelist"), setting the date for decision as October 23, 2002.
4. Factual Background
The Complainant has provided evidence that Momo S.p.A., an Italian corporation, registered two trademarks in the United States: the design of the word "momo" in a single arrow, which was registered on December 29, 1992, and the word MOMO, which was registered on May 3, 1988. On February 28, 1997, Momo S.p.A. assigned its entire interest and goodwill in the two United States trademarks to the Complainant.
The Panelist has verified that Momo S.r.l. operates a website at "www.momo.it", which it lists after-market car accessory products, including shift knobs, steering wheels, and alloy wheels.
According to Verisignâ€™s Whois database, the Respondent obtained the Domain Name from Network Solutions on March 8, 1995, and the Domain Name will not expire until March 9, 2004.
On or about June 13, 2000, David R. Ellis, Esq., mailed a letter to the Respondent indicating that he represented the Complainant and demanding that the Respondent agree to execute a Registrant Name Change Agreement to transfer all rights in the Domain Name to the Complainant.
On or about July 5, 2000, David R. Ellis, Esq., mailed a letter to the Respondent referring to their telephone discussion on June 30, 2000, and enclosing an NSI domain name transfer form for execution by the Respondent.
On or about August 28, 2001, Jarett Rieger, legal representative for the Complainant, mailed a certified letter to Respondent referring to the previous correspondence from David R. Ellis and requesting execution of an enclosed Registrant Name Change Agreement. The returned certified mail receipt indicates that the Respondent signed for the letter on September 8, 2001.
To date, the Panelist has determined that the Domain Name does not resolve to an active website.
5. Partiesâ€™ Contentions
A. The Complainant
According to the Complainant, Momo S.p.A. began business in the 1960s. The Complainant acquired Momo S.p.A. in April 1995, and recently, Momo S.p.A. changed its name to Momo S.r.l., a wholly-owned subsidiary of the Complainant. Momo S.r.l. is a world leader in developing high quality, innovative car accessory products. Currently, MOMO products are sold in more than 50 countries throughout the world. During the 2001-2002 fiscal year, Momo S.r.l.â€™s total outside trade sales were US$52.6 million, of which US$15 million were for after-market products. As of June 2002, Momo S.r.l.â€™s total assets were US$79.6 million.
In addition to the United States, the Complainantâ€™s two trademarks are registered in numerous countries throughout the world.
Subsequent to receiving the demand letter mailed by David R. Ellis on June 13, 2000, the Respondent engaged in a telephone conversation with Mr. Ellis in which the Respondent agreed to transfer the Domain Name to the Complainant or, in the alternative, not renew the Domain Name. To date, the Complainant has not received an executed Domain Name Transfer Form from the Respondent. The Respondent also has renewed her registration of the Domain Name.
The Complainant asserts that the Domain Name is identical to the Complainantâ€™s registered trademark MOMO, because the adjunction of the letters "www" and the suffix ".com" to the name MOMO does not distinguish the Domain Name from the trademark.
The Complainant contends that the Respondent has no rights and/or legitimate interests with respect to the Domain Name, because the Respondent does not have any trademark rights in the Domain Name and has never been authorized or otherwise permitted by the Complainant to use any of its trademarks or to apply for or use any domain name incorporating the Complainantâ€™s trademarks. Further, because the Complainant registered its trademark for MOMO in the United States on May 3, 1988, and the Respondent obtained the Domain Name on March 8, 1995, the Complainantâ€™s trademark rights predate the Respondentâ€™s registration of the Domain Name.
The Complainant asserts that the Respondent registered and is using the Domain Name in bad faith.
To establish bad faith registration, the Complainant relies on the fact that the Respondentâ€™s registration of the Domain Name postdated the Complainantâ€™s registration of the trademark MOMO. Thus, the Complainant argues, because the Respondent had constructive notice of the trademark, the Respondent registered the Domain Name in bad faith. The Complainant further asserts that the Respondent was placed on actual notice of the trademark, MOMO, because MOMO has a strong reputation and is widely known as is evidenced by its substantial use worldwide. The Complainant relies on its statements that MOMO products are sold in more than 50 countries worldwide and Momo S.r.lâ€™s total sales for the 2001-2002 fiscal year were US$52.6 million as the evidence to support substantial use worldwide.
The Complainant further argues that bad faith use is evidenced by the Respondentâ€™s inaction or passive holding of the Domain Name for over seven years.
Finally, the Complainant requests the Panel to issue a decision transferring the Domain Name to the Complainant.
B. The Respondent
The Respondent did not submit a Response.
6. Discussions and Findings
As a preliminary matter, the Panelist finds that the Centerâ€™s formalities compliance review was performed correctly and that the Respondent had proper notice of this administrative proceeding.
Paragraph 15(a) of the Rules provides the following instructions: "A Panel shall 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." As the Respondent did not submit a Response, the Panelist will render its decision based wholly on the Complaint and those sources listed under Paragraph 15(a).
The Panelist further notes the guidance provided in paragraph 14(b) of the Rules: "If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these rules or any request from the Panel, the Panel should draw such inferences therefrom as it considers appropriate."
Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:
(i) That the Respondentâ€™s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) That Respondent has no rights or legitimate interest in respect to the Domain Name; and
(iii) That Respondentâ€™s Domain Name has been registered and used in bad faith.
Each of these elements is discussed below.
A. Identity or Confusing Similarity of Complainantâ€™s Trademarks and Respondentâ€™s Domain Name
The Panelist finds that the Complainant has established that it has rights in the registered Trademark, MOMO. The Domain Name and the Complainantâ€™s marks are identical.
B. Respondentâ€™s Rights or Legitimate Interests in the Domain Name
Prior registration of a trademark and the assertions that the Respondent has neither trademark rights in the Domain Name nor authorization to use the Complainantâ€™s trademark are the only evidence offered by the Complainant in support of its position on this element of the analysis. The Panelist notes, however, that the burden placed on the Complainant to provide evidence that Respondent has no interests in the Domain Name is a relatively difficult task, given that such information generally is uniquely known by or in control of the Respondent only. Thus, the Panelist is inclined to follow previous panel decisions taking the position that once "a complainant has asserted that the Respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the Respondent to come forward with concrete evidence rebutting this assertion. . . . Failure of a Respondent to come forward with such evidence is tantamount to admitting the truth of complainantâ€™s assertion in this regard." Do The Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624.
In the present case, the Panelist notes that the Domain Name, <momo.com>, does not obviously relate to a well-known trademark and can be used for other legitimate purposes without infringing the Complainantâ€™s mark. The Respondentâ€™s name is "Maureen", and it is not uncommon for individuals named "Maureen" to be referred to by the nickname "Mo". In support of this latter observation, the Panelist points to Respondentâ€™s email address provided in the Whois database: "firstname.lastname@example.org". These observations, despite Respondentâ€™s failure to respond and provide any evidence of a legitimate interest in the Domain Name, render difficult a decision on this element of the analysis. However, the Panelistâ€™s analysis of the "bad faith" element below renders such a decision unnecessary.
C. Bad Faith Registration and Use
The Panelist notes that registration of a trademark does provide constructive notice to the public as a matter of law. However, the decision relied upon by Complainant (i.e., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028) in support of finding constructive or actual notice as evidence of bad faith registration is distinguishable. In Cellular One, the complainantâ€™s trademark was CELLULARONE, and the domain name at issue was <cellularonechina.com>. The Cellular One Panel noted that the trademark was a unique, well-known and coined mark, the Respondent was not commonly known by that name, and the trademark registration predated the domain name registration. Based on this combination of facts, the Cellular One Panel found that the domain name had been registered in bad faith.
Having analyzed the facts in this case, the Panelist finds that the trademark MOMO is not similarly well-known. Further, the Panelist finds that the trademark MOMO is not relatively strong based on the fact that Momo S.r.l.â€™s total sales for after-market products in the 2001-2002 fiscal year were only US$15 million and Complainant has not provided any specific explanation why Ms. Maureen White would or should have had any knowledge of an Italian after-market car accessory products company when she registered the Domain Name. Accordingly, the Panelist finds that constructive or actual notice, alone, particularly where the trademark is not well-known or strong is not sufficient to establish bad faith registration.
The Complainant has pointed to Respondentâ€™s inaction or passive use of the Domain Name for seven years as evidence of use in bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was established that inaction indeed could constitute bad faith registration and use. However, in Telstra, it also was established that such a finding could only be reached by analyzing the particular facts of a given case.
Having analyzed the particular circumstances in this case, the Panelist finds that where (1) the Complainantâ€™s trademark is not well-known and does not have a particularly strong reputation, (2) the Domain Name is not an obvious trademark but can be used for other legitimate purposes without infringing the Complainantâ€™s mark, and (3) the Complainant has not alleged that the Respondent offered for sale the Domain Name, but instead only allegedly agreed to a transfer the Domain Name after she was approached by the Complainant, the Complainant has failed to establish that inaction constitutes use in bad faith.
Because the Panelist finds that the Complainant has not established registration and use of the Domain Name in bad faith, the Complainantâ€™s request for transfer of the Domain Name is denied.