Monty Program Ab v. Tong
Claim Number: FA0912001299742
Complainant is Henrik Ingo Monty Program Ab (“Complainant”), represented by James S. Talbot, of Skadden Arps Slate
Meagher & Flom LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <montyprogram.com>, registered with GoDaddy.com, 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.
Li Hu and Sandra J. Franklin as Panelists, and Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 30, 2009.
On December 30, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <montyprogram.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 January 11, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 1, 2010 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 1, 2010.
On February 16, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Li Hu and Sandra J. Franklin as Panelists and Richard Hill as presiding Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that it is a Finnish corporation in the business of developing open source database management systems and software. The company’s founder, Mr. Michael “Monty” Widenius, is an internationally-known and famous individual who is recognized in the computing industry as one of the premier developers of open source software.
According to the Complainant, it or its predecessors in business, as well as Mr. Widenius, have been using the mark Monty Program for commercial activities since at least 1992.
The Complainant states that on February 5, 2009, it was publicly announced that Mr. Widenius was resigning from a major company and would form his own new company, which would be called Monty Program AB.
According to the Complainant, the Respondent registered the disputed domain name on February 6, 2009.
The Complainant alleges that, in June 2009, one of his associates sent an E-Mail to the Respondent, requesting transfer of the disputed domain name, and offering to cover the Respondent’s out-of-pocket costs. The Respondent replied to the effect that he would not sell the name for less than US $ 7800.
Throughout this time, according to the Complainant, the disputed domain name resolved to a web site containing an offer to sell the domain name. Subsequently, as of July 2009, the domain name resolved to a web site containing a picture of the “Monty Python” comedy team and an announcement that it would soon contain material related to that comedy team. But, as of December 2009, the domain name again resolves to a web site offering it for sale.
According to the Complainant, it has established common law trademark rights in mark MONTY PROGRAM. The disputed domain name is identical to that mark.
Further, says the Complainant, the Respondent does not have any rights or legitimate interests in the disputed domain name. He has never been know as, operated as, or associated with a business known as MONTY PROGRAM or any variation thereof. The disputed domain name is not being used in connection with a bona fide offering of good or services. It is being used to resolve to a web site where the name is offered for sale.
According to the Complainant, the Respondent’s offer to sell the disputed domain name to the Complainant for a sum well over out-of-pocket costs is indicative of bad faith registration and use, in the sense of the Policy. Indeed, the timing of the Respondent’s registration (one day after public announcements regarding the Complainant’s business activities) should not be viewed as mere coincidence and is instead indicative of opportunistic bad faith.
The Respondent states that the Complaint registered its business in Finland in October 2007, but it was not generally known in the appropriate business and consumer circles, because he could not find any proof to support the allegation that the Complaint had carried out business since it was established. From a Google history search one cannot find any words for Monty Program through the years from 2000 to February 5, 2009. The one can conclude that nobody know of the mark MONTY PROGRAM before that time.
According to the Respondent, he refused to transfer the disputed domain name when he was requested to do so by the Complainant’s associate. But the associate persisted, so the Respondent gave him a high price in order to discourage further solicitations.
The Respondent alleges that, as a child, he had been an avid fan of the well-known comedy group Monty Python. When cleaning out his room in January 2009, he came across some old programs and was motivated to create a web site to let more people know about the group. Since the domain name <montypythonprogram.com> was taken, he chose the disputed domain name, which was available.
The Respondent states that he is in the process of creating that web site. In the meantime, he has changed the hosting server and redirected the disputed domain name to other sites that he operates.
The Respondent states, verbatim:
“Domain name forwarded to another websites that was not meaning to sell this domain name, domain name was only forwarding but not binding, it had no business with forwarding domain names. And it was precisely that meaning its in use.”
The Complainant is a company founded by a famous individual known as “Monty”. That individual is famous for developing computer programs. He and various companies that he founded have used the name MONTY PROGRAM in commerce for many years.
The individual in question announced publicly on February 5, 2009, that he was leaving a well-known company and would be starting his own software business.
The Respondent registered the disputed domain name one day after that public announcement.
The Respondent was not previously known as, or associated with, the terms MONTY or PROGRAM.
The Respondent used the disputed domain name to resolve to a web site that offered to sell the disputed domain name. Further, he offered to sell the disputed domain name to the Complainant for a sum well in excess of out-of-pocket costs.
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.
A majority of the Panel finds that the Complainant has established common law rights in the MONTY PROGRAM mark through continuous and extensive commercial use predating the Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i). See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)). This is sufficient to establish rights under the Policy. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
The disputed domain name is obviously identical to the Complainant’s mark.
Having analyzed the evidence, the Panel concludes that the Respondent’s allegations concerning plans to develop a web site dedicated to the comedy group Monty Python are not credible. Thus the Respondent cannot claim rights or legitimate interests on those grounds.
Further, the Panel finds that the Respondent’s offer to sell the disputed domain name for more than Respondent’s out-of-pocket costs is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel holds that the Complainant has met its burden of proof for this element of the Policy.
On the basis of the evidence, the Panel concludes that the Respondent registered the disputed domain name for the purpose of offering to sell the disputed domain name for more than Respondent’s out-of-pocket costs. This constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Further, the Panel finds that the Respondent’s registration of the disputed domain name was opportunistic, which constitutes further evidence that he registered and used the disputed domain name in bad faith. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”).
The Panel holds that the Complainant has met its burden of proof for this element of the Policy.
A majority of the Panel having found that Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <montyprogram.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Presiding Panelist
Dated: March 2, 2010
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