Costas Spiliadis v. Nicholas Androulidakis
Claim Number: FA0708001072907
Complainant is Costas Spiliadis (“Complainant”), represented by Michael
A. Cornman, of Schweitzer Cornman Gross & Bondell LLP,
292 Madison Avenue - 19th Fl., New York, NY 10017. Respondent is Nicholas Androulidakis (“Respondent”), represented by Ira
J. Levy, of Goodwin Procter LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <milos.com>, registered with Network Solutions, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On August 31, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <milos.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 26, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on September 26, 2007.
On October 4, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the domain name should be transferred to it because it can make out each of the three criteria prescribed under paragraph 4(a)(i)-(iii) of the Policy. Complainant maintains, first, that the domain name <milos.com> is identical and/or confusingly similar to Complainant’s trademarks, being a trademark for MILOS and a design registered with the United States Patent and Trademark Office (“USPTO”), another trademark registered with USPTO for ESTIATORIO MILOS, a trademark registered with the Canadian Intellectual Property Office for MILOS and a common law trademark for MILOS for restaurant services. Complainant contends that this is so because the domain name is identical to, or incorporates the primary or dominant portion of, Complainant’s marks.
Complainant then argues that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not authorized by Complainant to use the mark MILOS, that Respondent is not commonly known by the name MILOS and that it has not used the domain name in connection with any bona fide offering of goods or services, has not made demonstrable preparations to use the domain in a bona fide manner, or made any legitimate noncommercial or fair use of the domain name.
Thirdly, Complainant contends that the disputed domain name was registered and is being used in bad faith, which has been proven because Respondent had actual knowledge of Complainant’s trademarks before registering the domain name, passively held the domain name for over five years and used it to draw Internet users to its website which provided links to Complainant’s competitors.
Respondent contends first that
Complainant has not established any trademark rights to support its claim and
that none of the claims to a trademark have substance. With respect to the
Canadian trademark, Respondent says that it did not know that the Complainant
had registered it. With respect to the
With respect to the second element Respondent says that it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services and that it is making a legitimate noncommercial or fair use of the domain name by preparing to have a website dealing with the history and culture of Milos and its people. Respondent also says that it has a right or legitimate interest in the domain name because it is a generic and common term giving the right to use the name as a domain name.
Thirdly, Respondent says that it has neither registered nor used the domain name in bad faith. In support of this contention, Respondent says that Complainant has not proved its case, that there is no basis for inferring that Respondent had knowledge of Complainant at the time the domain name was registered, that Respondent did not intend to confuse or mislead internet users and that all of Respondent’s motives and actions have shown good faith rather than bad faith both in the registration of the domain name and its use.
Complainant is the registered owner of, or has trademark rights in, the following trademarks:
(a) Trademark number 3,241,021 registered by Complainant with the United States Patent and Trademark Office (“USPTO”) on May 15, 2007 for the stylized word “MILOS” and a fanciful representation of a fish (referred to hereinafter as “the first United States trademark”);
(b) Trademark number 3,241,022 registered by the Complainant with the USPTO on May 15, 2007 for ESTIATORIO MILOS (hereinafter referred to as “ the ESTIATORIO MILOS trademark”); and
number 98638, registered by the Complainant’s company with the Canadian
Intellectual Property Office on November 3, 1989 for
The Respondent registered the disputed domain name on January 20, 1997.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant contends that the disputed domain name is identical and/or confusingly similar to four trademarks on which Complainant relies.
The first trademark that Complainant relies
on is the first
Moreover, the registration certificate shows that the first use in commerce of the trademark was in August 1997 which was also after the domain name was registered.
It must therefore be doubted whether the Complainant, so far as this trademark is concerned, has substantial trademark rights to support its claim.
It is of course theoretically possible to bring a UDRP Complaint where the trademark relied on was registered after the domain name, but it makes it very difficult to establish that the domain name was registered in bad faith, which is an essential element that must be proved.
Accordingly, Complainant, in relying on the
In any event, even if the first
Although this trademark is described in the
records of the USPTO as a “Word” mark, it consists of far more than that. In
fact, it consists of a stylised representation of a fish with the word ‘Milos’
underneath, no doubt because the Complainant’s restaurant in
The Panel as presently constituted had occasion to express a view on this issue when presiding on a panel of three in Deutsche Post AG v. NJDomains, D2006-0001 (WIPO, March 1, 2006).
That was a case where the German Post Office claimed that it had a trademark over the word ‘post’ and relied in support of that contention on several trademarks, one of which consisted of the word ‘post’ itself, but also the representation of a post horn and two arrows. The panel said:
But, as the Respondent points out, it is important to see exactly what it is that has been registered. The Complainant asserts that the domain name is “identical to the Complainant’s trademarks. ‘Post’ trademark 39540404, however, is not solely for a word, but for a device which is set out in the Response. The device consists of a horn and two arrows as well as the word ‘Post’.
Thus, the trademark is not for the word ‘Post’ at all, but for a logo or, as it is called on the register, a word/figurative mark.”
The question then is whether the domain name is identical or confusingly similar to this word/figurative mark.
That type of question is not always easy to resolve, for the figurative or graphic part of a trademark cannot be translated into a domain name and a true comparison is therefore difficult to make.
There are some obvious similarities between the two expressions, for they both contain the words “Post.” However, that is where the similarities end. Thereafter, it is necessary to make the comparison having regard to how a reasonable bystander would view the domain name and the trademark. The Panel is of the opinion that a reasonable bystander would not regard the domain name as confusingly similar to the trademark because the trademark is figurative and is an entirely different representation from the domain name.
That is so because the trademark is dominated by the very prominent illustration of a horn. It is true that some UDRP panelists have taken the view that in making the comparison presently under discussion, devices and similar figurative depictions should be ignored so that a straight comparison can be made between the words. Thus, the panelist in Sweeps Vacuums & Repair Ctr. v. Nett Corp., WIPO Case No. D2001-0031 (sic) said that “graphic elements … not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity.” On the other hand, the panelist in Curvon Corp. v. Lauren Kallareou, WIPO Case No. D2001- 0565 (sic), said that “The Mark . . . is the whole of the composite of design matter and word matter [that] is shown in the registration document,” which is the same view taken by other panelists.
The better view, however, is to look at the overall impression or idea created respectively by the mark and the domain name, the approach that was taken recently in Yell Ltd. v. Ultimate Search, WIPO Case No. D2005-0091 (sic). Applying that test, the overall impression of the trademark in the present case is entirely different from that conveyed by the domain name. The pictorial representation of the horn is such a prominent and dominating part of the trademark that the result is a logo of the horn as well as the word ‘Post’. It is highly artificial to contend that this is a trademark for the word ‘Post’ when it clearly is far more than that.
The German trademark authorities seem to have intended such a conclusion, as the present mark is specifically described as a “word/figurative mark” to distinguish it from other marks which are “word marks.” When seen it that light, it is clear that there is a substantial difference between the domain name and the trademark.
Nor in the opinion of the Panel could a reasonable bystander looking at the domain name, which evokes the common generic word “Post,” be confused into thinking that it was really referring to a coloured logo of a horn with the word Post added to it and the company whose logo it was.
Accordingly, the Panel finds that the domain name is neither identical to nor confusingly similar to the German trademark registered number 39540404.
The view just expressed is a consistent one in UDRP decisions and has recently been re-iterated by a panelist faced with the same question in Province of Brabant Wallon v. Domain Purchase, NOLDC, Inc., D2006-0778 (WIPO Oct. 18, 2006), a case directly analogous to the present case, for it concerned the claim of a local authority that a domain name was identical to a trademark consisting of the name of a geographical region, a province of Belgium, but which also included a figurative design that was “a combination of triangles, squares and other shapes forming a design somewhat reminiscent for example of a silhouette of sails.” The panel noted that:
The Panel concludes in the present case that the figurative element is an essential element of the Complainant’s mark. It is the most distinctive element in the trademark sense and in the eye-catching sense … the domain name comprises one of two descriptive elements of the Complainant’s trademark and does not include (nor could it) the only distinctive element…. The Panel is not satisfied that the disputed domain name is identical to or confusingly similar to the Complainant’s registered mark.
The Panel believes that those remarks are
directly apposite to the present case. Here, the representation of the fish
dominates the trademark and is an essential element in both the trademark sense
and the eye-catching sense. Applying the usual test of comparison, a reasonable
bystander confronted by the domain name and the trademark as a whole could not
conclude that a domain name in the single word “milos” was identical to the
trademark, for they are simply not the same. A reasonable bystander would also
not conclude that they were confusingly similar, because they are in fact
dissimilar; that is so because no reasonable person could conclude that the
“milos” of the domain name was referring to a graphic representation of a fish
with the word “
The domain name in the present case is
therefore neither identical nor confusingly similar to the first
The second trademark that Complainant relies on is the ESTIATORIO MILOS trademark.
This trademark also suffers from the same
fundamental problems as the first
Even if this problem could be overcome, the
domain name is not identical to the ESTIATORIO MILOS trademark as it consists
of an additional word to the “milos” of the domain name and a word significant
enough for it to have been placed in the trademark before the word “
As to whether the domain name is confusingly similar to the trademark, the test to be applied again is how a reasonable bystander faced only with the two expressions would see them. In the opinion of the Panel, no reasonable bystander would conclude that the two expressions were similar, for the addition of ESTIATORIO to create ESTIATORIO MILOS, even in the eyes of a viewer who knows that the word means “restaurant,” which some people would not know, so changes the overall impression of the trademark that it is not similar to “milos” as in <milos.com>, but dissimilar to it.
Even if it were regarded as similar, a reasonable bystander would not be confused by the two expressions, as there is nothing in their composition to suggest that the “milos” of the domain name is necessarily invoking the ESTIATORIO MILOS of the trademark.
The domain name is therefore not confusingly similar to the ESTIATORIO MILOS trademark and Complainant may not therefore rely on this trademark for the purpose of the proceedings.
The Canadian trademark
The third trademark that Complainant relies
on is the Canadian trademark which is for the single word
The trademark is registered for use in connection with restaurants. It might therefore be thought that Complainant could not rely on the trademark, as of course there is nothing in the domain name to suggest that Respondent is using the domain name to promote a restaurant business. Such issues may become relevant later, but for the purpose of paragraph 4(a)(i) of the Policy, it is permissible only to make a strict comparison between the domain name and the trademark without having regard to extraneous material such as the Respondent’s website or the use that is being made of the domain name. See Province of Brabant Wallon v. Domain Purchase, NOLDC, Inc., supra.
As is also well established, the gTLD suffix “.com” is ignored for the purposes of the comparison. When the comparison is made, it is apparent that the domain name is identical to the Canadian trademark. The Complainant is therefore able to rely on this trademark to satisfy the first requirement of the Policy.
The common law trademark
The fourth trademark that Complainant relies
on is a common law or unregistered trademark that is said to arise from the
Complainant’s “long-standing use of the mark in the
It is apparent from the reference to “the above-stated services” that Complainant is claiming common law rights to the use of the word MILOS in connection with restaurant services and, in particular, gourmet meal preparations and service featuring authentic Mediterranean cuisine.
The Panel does not accept that Complainant has the common law trademark rights it has claimed.
Complainant argues that one of the grounds for concluding it has common law trademark rights is that it has made long-standing use of the first United States trademark, the ESTIATORIO MILOS trademark and the Canadian trademark.
It is, of course, true that the use of a registered trademark goes some way to establishing a common law trademark, but it is necessary to have regard to all of the facts and not just the registered trademark before reaching a conclusion on whether the common law trademark has been made out.
The issues are therefore, first, whether the name MILOS has acquired an identification with the services claimed and, secondly, whether it that it can be said that the public associate only Complainant with those services when the word Milos is used to describe them.
The Panel is not satisfied that Complainant has made out either element.
In the first place, there are
other restaurants that have adopted the name Milos or
Secondly, there is no evidence to
show what the public thinks on the essential question of whether MILOS is
synonymous with gourmet restaurant services. The impressive evidence of
restaurant reviews that has been tendered does not show that the public
associates the name
Complainant’s advisers have
provided some impressive evidence that the Estiatorio Milos in
What is more important, however and the main obstacle to the Complainant’s argument, is that members of the public would undoubtedly assume that when the word MILOS is being used in connection with restaurant services or anything else, it is the name of the island of Milos that is being given to the restaurant services, rather than that Milos is being used as the source of the goods or services concerned. That is so because the Complainant has not shown that the word MILOS is understood by readers to mean anything other than its actual meaning, namely the Greek island in the Aegean Sea between Athens and Crete and famous because of its place in history and the Venus de Milo.
In fact, it is extremely unlikely that trademark rights in the name could be acquired by anyone and it is beyond argument that such rights could only be established in light of very strong evidence that the universally accepted designation of a geographical place by its name has been displaced and that the place name has acquired some other and different meaning, such as the source of certain goods or services.
That difficulty has been
demonstrated in many UDRP proceedings, such as those cited by the Respondent, Glenwood Springs Chamber Resort Ass’n, Inc.
v. Coll. Transp., FA 98825
(Nat. Arb. Forum Oct. 31, 2001) and City of
However, the decisions on this issue go further and, although the argument has often been advanced that a geographical identifier has taken on a new meaning and become the intellectual property of an individual either generally or even with respect to specific services as is alleged in the present case, the argument has usually failed, as it did for example in the cases of:
(a) Mexico in Censejo de Promocion Turistica de Mexico, S.A. de C.V. v. Latin America Telecom Inc., D2004-02042 (WIPO July 19, 2004);
(b) New Zealand in HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, D2002-0754 (WIPO Nov. 27, 2002); and
It was also said to be extremely difficult to prove, as in the case of Brabant Wallon in Province of Brabant Wallon v. Domain Purchase, NOLDC, Inc, supra, and was not even argued in a case concerning Puerto Rico where it was held that no secondary meaning had been shown to give the place any meaning other than its geographical description. Puerto Rico Tourism Co. v. Virtual Countries, Inc., D2002-1129 (WIPO Apr. 14, 2003).
The Panel also draws attention to the decision in City of
[A] geographically descriptive
name is not eligible for trademark protection without proof that, through
usage, it has become a unique source identifier. This trademark principle has
deep historical roots. As early as 1872, the Supreme Court of the
[I]t is obvious that the same reasons which forbid the
exclusive appropriation of generic names or of those merely descriptive of the
article manufactured and which can be employed with truth by other
manufacturers, apply with equal force to the appropriation of geographical
names, designating districts of country. Their nature is such that they cannot
point to the origin [personal origin] or ownership of the articles of trade to
which they may be applied. They point only at the place of production, not to
the producer. Canal Co. v. Clark, 80
That sums up the essential problem facing the
Complainant, namely that its use of the word
The result is that Complainant does not have any of the wider rights it wishes to establish through a common law trademark.
As has been said, however, Complainant has satisfied the formal requirement of a trademark with respect to its Canadian trademark, for that trademark is for the same word as that appearing in the domain name.
The Complainant has therefore satisfied the first element to be proven under the Policy.
Under paragraph 4(a) (ii) of the Policy, the complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect to the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.
Thus, if a respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
basis of this material, the Panel concludes that Complainant has thus made out
a prima facie case against Respondent
and the burden therefore shifts to Respondent to provide evidence of its right
or legitimate interests under paragraph 4(c) of the Policy. See Cassava Enters. Ltd., Cassava Enters. (
The Panel therefore accepts the submission of Respondent that “Furthermore, utilizing a geographic domain name for a website constitutes a legitimate interest under the policy.” That conclusion is supported by a well-established principle in many UDRP decisions such as the recent decision in Junta de Andalucia Consejeria de Turismo, Commercio y Deporte, Turismo Andaluz, S.a. v. Andalucia.Com Ltd., D2006-0749 (WIPO Oct. 13, 2006) and the cases cited by the Respondent, namely Port of Helsinki v. Paragon Int’l Projects Ltd, D2001-0002 (WIPO Feb. 12, 2001) and Neuswiedler Aktiengesellschaft v. Vinayak Kulkarni, 2000-1769 (WIPO Feb. 5, 2001).
As the panel noted in the last case mentioned:
The Panel finds that the word “Neusiedler” is a geographic term. The identical trademark and company name of Complainant does not have an exclusive effect with regard to the use of the geographic term as such in domain names or otherwise by third parties. Thus, Complainant’s trademark or company name does not exclude the rights in the Domain Name of Respondent.
That principle was again stated very clearly in the more recent decision of Consejo de Promoción Turística de México, S.A. de C.V. v. Latin America Telecom Inc., supra, where the panel said:
On the material before the Panel, the Panel finds that
Respondent registered <mexico.com> based upon the sense of
Complainant has failed to establish this element of its case.
Likewise, in Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Ltd., D2003-0525 (WIPO Sept. 9, 2003) a ruling was made to the same effect on facts similar to those in the present case and where the respondent had registered <tenerife.net>. The panel said:
Respondent carries on an active Internet-based business
that provides information regarding
Although Respondent has not yet used the disputed domain name in connection with an active website, it alleges that it has been blocked from doing so by the Sunrise Registry (Afilias) and Registrar. Based on Respondent’s existing business activities, there is no reason to reject its assertion that, if the domain name is unblocked, it will use it for a purpose comparable to present use of its other "TENERIFE"-formative domain names. This sole panelist has in several contexts determined that the establishment of rights or legitimate interests in a domain name is not precluded by the absence of active use, when such absence is justified by the circumstances (emphasis added).
Respondent’s planned use of the disputed domain name constitutes a fair use of Complainant’s geographically descriptive service mark.
That is enough to dispose of these proceedings by itself, for as Respondent has made out a claim for a right or legitimate interest in the domain name by virtue of the fact that the domain name merely reflects the geographic place, Complainant has failed to show that Respondent does not have rights or legitimate interests in the domain name.
But the Panel will go further because the parties have joined on a number of factual issues and it would be artificial simply to ignore them.
On those factual matters the Panel finds that they establish that the Respondent has additional rights and legitimate interests in the domain name. That is so for the following reasons.
Applying those principles, the Panel has come to the conclusion that Respondent has made out a case for a right and legitimate interest in the domain name.
Respondent also argues that it is making a legitimate noncommercial 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 within the meaning of paragraph 4(c)(iii) of the Policy.
In support of these
two contentions, the Respondent’s affidavit deposes to the fact that in 1997 it
conceived the idea of registering the domain name and setting up a website
“with the sole purpose of promoting the
It is also apparent from the affidavit and submissions that Respondent has a personal connection with the island because its family was one of the families who settled the island and because it owns a house there.
Respondent clearly has an interest in the history and culture of the island and a desire to impart this to the wider world.
It is often difficult to make judgments about the veracity of evidence tended in proceedings which, like UDRP proceedings, are conducted on the papers and where the evidence is not tested by cross-examination. Nevertheless, the Panel finds that it is able to make judgments about these issues in the present case and it has no hesitation in saying that it accepts the evidence of the Respondent.
In particular, the evidence shows, in the opinion of the Panel, that Respondent before notice of the dispute, made demonstrable preparations to use the domain name for a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
In the opinion of the Panel, the evidence also shows that Respondent is making a legitimate noncommercial 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 within the meaning of paragraph 4(c)(iii) of the Policy.
Some criticism has been made of the fact that Respondent has taken so long to get its website up and running and that in particular, for some years the website contained third party links to competitors and that these criticisms negated the pleas that Respondent was using the site for a bona fide offering of goods and services or using it without intending to mislead consumers.
With respect to the first criticism, demonstrable preparations may well take time, although, as the learned panelist in NEUSIEDLER AKTIENGESELLSCHAFT v. VINAYAK KULKARN, supra, observed:
Complainant considers the fact, that Respondent did not use the Domain Name during ten months after the registration, as proof in itself for Respondent’s lack of a legitimate interest in the Domain Name. This is not correct. The registration of a Domain Name does not include the duty to use it. The non-use (or the period of time it takes to prepare a web-site in a particular case) by itself is neither evidence of illegitimacy of the registration nor an indication as to the purposes of the registration.
In any event, judgments of whether a respondent has made demonstrable preparations or not will depend on the findings of fact in any given case. This was noted by the present panelist in DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO Feb. 3, 2005), where it was said:
The Panel concludes that in the particular circumstances of the present case, as demonstrated by Respondent’s affidavit, which the Panel has no reason to reject, the Respondent has made demonstrable preparations within the meaning of paragraph 4(c)(i) of the Policy.
The Panel accepts Respondent’s explanation, as it is inherently unlikely that it was party to such counterproductive advertising on its website and the problem suffered by Respondent on this occasion is not at all unique. Respondent is responsible for what is presented on its website, but it is also entitled to give an explanation as to how inappropriate advertisements and links came to appear on its website. The Panel accepts the explanation given by Respondent in light of the facts of the case, such as Respondent’s familial association with the island, the fact that it owns a house there and the fact that it clearly intends to promote the island rather than businesses with the name Milos. Those facts make it more probable than not that Respondent was not interested in carrying misleading advertisements and links on its website but was, rather, interested solely in establishing a website, at a time when it was ready, on the cultural, tourist and commercial aspects of Milos.
Accordingly, the Panel finds that Respondent has rebutted Complainant’s prima facie case and has shown that it has a right or legitimate interest to the domain name under paragraphs 4(c)(i) and (iii) of the Policy, as well as on the more general ground that the Respondent has a right to register a domain name in the name of the island Milos, it being a geographical identifier.
In view of the findings already made, it is not necessary to make findings under this heading. It must however be apparent that the view of the Panel is that as Respondent’s conduct is wholly legitimate, there cannot be any findings of bad faith made against Respondent. On the totality of the evidence, the Panel finds that Respondent did not, within the meaning of paragraph 4(b) or otherwise, register the domain name primarily for the purpose of selling it at a profit, to prevent Complainant from reflecting its trademark in a corresponding domain name, to disrupt anyone’s business or with the intention of misleading anyone as to the source of material appearing on Respondent’s website. Nor can a finding of bad faith be made against Respondent on any other basis.
REVERSE DOMAIN NAME HIJACKING
Although the result of this Complaint is now very clear, it would not have been so clear when the Complaint was filed. At that time, Complainant believed that it had a trademark, which it did, namely the Canadian trademark. Complainant was also faced with the facts that on the surface the Respondent had used the domain name for a website that was apparently promoting competitors of Complainant. Bringing the Complaint was optimistic but it was not an abuse of the process and, accordingly, the Panel will not make a finding of Reverse Domain Name Hijacking.
For all of the forgoing reasons, the Panel concludes that relief shall be DENIED.
The Honourable Neil Anthony Brown QC
Dated: October 17, 2007
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