WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Banca Monte dei Paschi di Siena S.p.A v. Charles Kirkpatrick

Case No. D2008-0260

 

1. The Parties

The Complainant is Banca Monte dei Paschi di Siena S.p.A, of Italy, represented by Studio Legale Rapisardi, Italy.

The Respondent is Charles Kirkpatrick, of United States of America, represented by Brett E. Lewis, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <mps.mobi> is registered with WhiteCowDomains.com Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2008. On February 20, 2008, the Center transmitted by email to WhiteCowDomains.com Inc. a request for registrar verification in connection with the domain name at issue. On February 20, 2008, WhiteCowDomains.com Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint 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 on February 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2008. The Response was filed with the Center on March 14, 2008.

The Center appointed John Swinson as the sole panelist in this matter on March 31, 2008. 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

The Complainant is a bank primarily based in Italy, although it has branches, offices and subsidiaries in Europe and many other countries around the world including one office in the United States of America. The Complainant offers a range of banking, financing and investment services.

The Complainant has a number of registered trademarks incorporating the letters “MPS” (for example, United States trademark registration 1807937 and International Registration No. 824744). The Complainant operates a website at “www.mps.it” through which it offers online banking services.

The Respondent registered the disputed domain name on September 26, 2006. The disputed domain name is not currently linked to any site.

 

5. Parties’ Contentions

A. Complainant

In summary, the Complainant makes the following arguments:

- The MPS acronym (standing for Monte dei Paschi di Siena) has been used by the Complainant since it was established in 1472 and the Complainant owns several registered trademarks including and/or consisting of the trade name MPS.

- The disputed domain name is identical to the Complainant’s MPS trademark.

- There is no connection between the Respondent and the disputed domain name. The Respondent is not commonly known by the disputed domain name, and has not purchased any trade or service mark rights in relation to the disputed domain name.

- The Complainant has not authorized or licensed the Respondent to use its MPS mark.

- Since the disputed domain name was registered by the Respondent it has not been linked to any operational website.

- The Respondent lacks real interest in the disputed domain name as evidenced by him not answering the Complainant’s cease and desist letters.

- The Respondent registered the disputed domain name in bad faith because the Respondent was aware that he was registering a domain name identical to the trade name and famous trademark of the Complainant.

- The Respondent’s act of registering the Complainant’s trademark with gTld.mobi is not in good conscience because the most important banks over the world offer services of mobile baking and dotMobi domains are dedicated to delivering the Internet to mobile devices.

- The Respondent acquired the disputed domain name to either exploit the renown of the Complainant’s MPS trademark or resell the domain name to the Complainant at a price far in excess of the costs of registration.

B. Respondent

In summary, the Respondent makes the following arguments:

- MPS is not exclusively associated with the Complainant. There are a large number of businesses with MPS in their trade name. The United States Patents and Trademark Office has 53 live trademark registrations and applications incorporating “MPS” of which, other than the four marks claimed by the Complainant, 49 are owned by unrelated third parties.

- There are a number of domain names incorporating the term “MPS” which are owned by entities unrelated to the Complainant.

- The Complainant had the opportunity to secure the disputed domain name under the dotMobi allocation rules by relying on its validated trademark, for a period of 120 days before the disputed domain name was available for purchase and registration by the Respondent.

- The Respondent had no knowledge of the Complainant at the time of registering the disputed domain name. The Complainant only has one office in the United States which is in New York. The Respondent has never resided in New York, does not work in international banking or conduct business with Italy.

- The Respondent purchased a variety of dotMobi domain names based on generic and common use terms including several other three-letter combinations.

- The Respondent is in the process of finding the time and resources to build mobile-phone compatible content for all his dotMobi domain names. The Respondent has not developed a site relating to the disputed domain name because the dotMobi concept is new, it is hard to find good developers, advertising and users are not really using dotMobi yet, and the dotMobi sites that the Respondent has developed have not resulted in a return on financial investment.

- The Respondent did not register the disputed domain name with the intent to sell it to the Complainant. The Respondent does not intend to use the disputed domain name in a way that will harm or compete with the Complainant.

- The Respondent did not respond to the Complainant’s correspondence because he did not recognize the sender, and when he noticed the header of an unknown bank in Italian, he assumed the emails were SPAM.

- The Respondent has no prior history of registering domain names for a purpose that would contravene the Policy.

 

6. Discussion and Findings

To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i)- the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)- the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii)- the domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

The Complainant is the owner of a number of registered marks in respect of which the three-letter combination “MPS” is the dominant feature.

The Respondent does not dispute that the disputed domain name is confusingly similar to the Complainant’s MPS mark. However, the Respondent contends that the Complainant does not hold exclusive rights in the three-letter string which the Respondent maintains is widely used by various third parties. The Respondent relies on the existence of 53 trademark registrations and application in the United States alone which incorporate the term “MPS”, of which, other than the four marks owned by the Complainant, 49 are owned by unrelated third parties.

This is of no relevance under the first element of the Policy. For the purposes of paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based solely on a comparison of the Complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Based on such a comparison, the disputed domain name is identical to the Complainant’s mark.

Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

The Respondent is not known commonly known by the disputed domain name, the three-letter string “MPS” or anything similar. The Complainant, who is known by MPS, has not licensed or permitted the Respondent to use its MPS mark.

The Respondent is not currently using the disputed domain name and prior to receiving the notice of the dispute from the Complainant, the Respondent did not use, or demonstrate any preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The Panel finds that the Complainant has presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The Respondent does not dispute that he is not commonly known by the disputed domain name or that the disputed domain name is not being used for any purpose. However, the Respondent contends that non-use of the disputed domain name cannot be fairly claimed as evidence of a lack of rights or legitimate interests because dotMobi is a new and cutting edge top level domain, and the way the dotMobi domain space works is still largely unknown.

There are, as the Respondent has indicated, a number of larger organizations who have registered dotMobi domain names but are not yet using those domain names. Additionally, there is no evidence suggesting that the disputed domain name was chosen by the Respondent with the intent to profit from, or otherwise abuse, the Complainant’s trademark rights.

However, because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not necessary to the Panel’s decision in this case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

It is difficult for a complainant to succeed in showing bad faith registration where there is no evidence that the respondent was aware of a complainant or its mark. In Builder’s Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748, the Panel stated that in order to find bad faith under the Policy “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s mark’.”

For the following reasons, the Panel is not convinced that the Respondent “knew” or “ought to have known” of the Complainant’s trademark rights:

(a) Despite having offices all over the world, the Complainant is an Italian bank with a minimal presence in the United States of America where the Respondent resides.

(b) There is no evidence that the Respondent resides, or at any time resided, in New York where the Complainant’s one United States branch or office is located.

(c) There is no evidence that the Complainant advertised or extensively used its mark in the United States of America.

(d) There is no evidence that the Respondent is involved in international banking or otherwise engages in business in Italy.

(e) The Complainant’s website is not a dot com website and is in the Italian language, and such website does not have clear use of “MPS” branding.

(f) “MPS” is not well-known in the United States of America as referring to the Complainant.

(g) The Respondent did not offer to sell the disputed domain name to the Complainant when the Complainant sent cease and desist letters to the Respondent. The Respondent has provided a sworn statement that he ignored the letters because he thought the emails, from an unknown Italian bank, were spam.

There is no circumstantial evidence that suggests that the Respondent may have known of the Complainant.

The Panel notes, as did the panel in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, that paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy.

The Respondent has provided a sworn statement that he registered a few hundred dotMobi domain names that consisted of dictionary words, geographic places, common use terms and short-letter combinations. The Respondent registered these domain names after the expiration of the 120 day sunrise period during which companies with valid trademarks were able to secure their dotMobi domains in preference and prior to any person without trademark rights. The Complainant did not avail itself of the opportunity to obtain the disputed domain name, even though it claims mobile banking will be an important part of its business. The Respondent was at the time of registration, of the view that no one company could claim exclusive rights in MPS because it stood for so many things. From its own searches of the term “MPS”, the Panel finds the Respondent’s view reasonable.

The Panel is of the view that the Respondent has made some good faith effort to avoid registering and using a domain name corresponding to trademarks in violation of the policy.

The Panel acknowledges that MPS appears to be an extremely common 3-letter combination which can relate to a number of third parties other than the Complainant. MPS is also an acronym for a substantial number of things, including systems, societies, and syndromes.

Furthermore, the Respondent has provided a sworn statement that he has been involved in the registration of domain names for nine years. The Respondent has not been involved in other administrative proceedings relating to domain names. There is no evidence that he has a pattern of registering domain names which are identical or confusingly similar to third party trade or service marks, with the purpose of preventing those third parties from using their trademark in a domain name.

The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademarks of another. Match.com, LP v Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. There is, in the Panel’s view, no evidence that the Respondent sought to profit from, or exploit the trademarks of the Complainant. Accordingly, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist

Date: April 14, 2008