ST MORITZ mark owner fails in second bid for 'stmoritz.com'
In Kur- und Verkehrsverein St Moritz v Domain Finance Ltd, a split World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'stmoritz.com' to the complainant - the owner of a ST MORITZ mark. The case is a refiling of an earlier complaint and is the second time that the complainant has failed to gain control of the domain name under the Uniform Domain Name Dispute Resolution Policy (UDRP).
In the first proceeding, Kur- und Verkehrsverein St Moritz (KVSM) was found to own the trademark ST MORITZ, which is used by KVSM and its licensees in connection with a wide range of goods and services in respect of the Swiss village of the same name. However, the panellist denied the complaint finding that the respondent in that case may have had a right or legitimate interest in the domain name as it had built up a network of websites providing information about subjects, such as cities, countries and general news, which qualified as a bona fide activity. The panellist held that the original respondent had neither registered nor used the domain name in bad faith. Accordingly, the request to transfer its registration to KVSM was denied.
KVSM subsequently filed a new complaint in relation to the same domain name, arguing that new evidence had come to light in the intervening period. It stated that the website hosted at the domain name at issue had not been used for a period of one and a half years and that the respondent, Domain Finance Ltd, started to use the website only after receiving KVSM's request to transfer the domain name. It also argued that the use of the website by Domain Finance was different from the use found in the original proceeding.
As a preliminary issue, the panel considered whether the subsequent complaint was an "unjustified refiling" subject to refusal by the panel. It first noted that the complainant, the disputed domain name and the owner of the domain name were the same as in the original proceeding. It next found that the website was "materially different" from that in the original proceeding as it was more news-related, thus giving rise to a "truly new action" under the UDRP.
Following an examination on the merits, the new complaint was rejected by the majority of the panel. The panel accepted that the disputed domain name incorporated the complainant's trademark in its entirety thereby satisfying the first requirement in Paragraph 4(a) of the UDRP. However, the panel found that the hiatus in use of the domain name was not determinative and agreed with the panellist in the original proceeding in finding that Domain Finance may have relevant rights or legitimate interests in 'stmoritz.com'. It held that the change in content of the website had no material effect on the decision in the original proceeding concerning bona fide use. Thus, KVSM had failed to meet the second requirement in Paragraph 4(a). Although the panel did not need to consider the issue of bad faith registration or use, it stated that there was no evidence that Domain Finance had acted in bad faith.
Finally, the panel upheld Domain Finance's claim that KVSM had engaged in reverse domain name hijacking. It found that KVSM (i) should have known that it did not have sufficient justification regarding bad faith, and (ii) had put Domain Finance to unnecessary expense.
Gordon Zimmerman, Jason Hannibal and Kelly Zalec, Borden Ladner Gervais LLP, Toronto
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