The Complaint was received by WIPO by email and in hardcopy form on October 29, 2001. WIPO has verified that the Complaint satisfies 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") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

Tucows, Inc. has confirmed that montagut.com ("the Domain Name") was registered through Tucows, Inc. and that Sanyouhuagong is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On November 12, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was December 2, 2001. A Response was received by WIPO by email on December 2, 2001, and in hard copy form on December 17, 2001.

The Panel was properly constituted. The undersigned Panellist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is January 25, 2002.

4. Factual Background

The Complainant is a well established French fashion company which is the proprietor of, inter alia, the Montagut trade mark in which the Complainant has both registered and unregistered rights.

The history of the Domain Name is unclear, but it is not in dispute that the Respondent registered the Domain Name under its own name on September 27, 2000.

It is further not in dispute that the Domain Name is connected to a website at www.montagut.com, which criticises and/or supports the Montagut brand of the Complainant. The Complainant sees the website as being disruptive of the Complainant’s business, whereas the Respondent describes it as "Montagut fans website".

5. Parties’ Contentions
A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which it has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant further contends that the Respondent registered the Domain Name in bad faith and is using it in bad faith.

As indicated above, the history of the Domain Name is complex. The Complainant relates it as follows:

"… When the Complainant was about use [sic] its own trade mark again to register the Domain Name "montagut.com" in 1997, the Complainant had found that the Domain Name was first registered by Full Link Consultancy Services Limited, without the authorisation of the Complainant. Legal action was then taken by the Complainant in 1999 against Full Link Consultancy Services Limited and Full Link Consultancy Services Limited then agreed to transfer this domain name back to the Complainant and agreed to sign a registrant name change agreement. However, the Complainant then found that the Respondent used the PAUL88 WU as its registrant name, had registered the domain name "montagut.com" without authorisation while the Complainant tried to process the transference."

The Complainant then refers to the fact that the Respondent registered the Domain Name under its own name on September 27, 2000.

The Complainant contends that on November 10, 2000, its attorneys contacted the Respondent by telephone and found that the individual to whom they were speaking was one Paul Wu. They assert that Mr. Wu insisted that he was not infringing the intellectual property rights of the Complainant and his website was "distinguishing authentic products from fake products". The Complainants go on to contend that in the course of that same telephone conversation the Complainant’s attorneys offered Mr. Wu his out of pocket expenses of approximately US$40 in exchange for the Domain Name, but that Mr. Wu refused to consider the offer and demanded more.

The attorneys followed that telephone conversation up with a letter requesting transfer of the Domain Name, but there does not appear to have been a reply.

The Complainant contends that it then made a further Whois search on September 7, 2001, and found that the Registrant for the Domain Name was listed as Guangzhouxinhefeng at an address in Guangdong.

The Complainant asserts that their attorneys wrote letters to both Paul Wu and the new administrative contact for the Domain Name, but no reply was received.

On October 8, 2001, a further Whois search was conducted, which concerned yet another name change, this time the details being as they are currently recorded with the Registrar.

The Complainant contends that while the Registrant’s details change from time to time, the website connected to the Domain Name has contained the same material since first registration.

The Complainant points out that the Respondent must be aware that Montagut is a well known mark in China and must have been aware of those rights when registering the Domain Name.

The Complainant contends that the Respondent has never been licensed or otherwise authorised to use the Complainant’s trade mark and the Complainant points out that it is not aware of any third party which has any legitimate right to use Montagut in a Domain Name.

The Complainant says that it is unaware of any connection between the Respondent and the Complainant’s trade mark, nor is it aware of any reason why the Respondent could be said to be entitled to be known or identified in any way by that trade mark.

The Complainant asserts that the Respondent is not a bona fide user of the Domain Name and has not made any other good faith use of the Domain Name, since the Domain Name was first registered by the Respondent on September 27, 2000.

The Complainant contends that the Domain Name has been registered and used by the Respondent in bad faith for two reasons, namely:

1. The Respondent has registered or acquired the Domain Name primarily for the purpose of selling the Domain Name to the Complainant for a valuable consideration in excess of the out of pocket costs directly related to the Domain Name (i.e. contrary to paragraph 4(b)(i) of the Policy); and

2. The Respondent has used the Complainant’s well known trade mark as the Respondent’s own Domain Name. In so doing, the Respondent has disrupted the Complainant’s use of its trade mark. It has also created a likelihood of confusion in that it has misled the public into believing that the Respondent is either the owner of the Montagut trade mark or is in some way connected with the Complainant. The Complainant contends that visitors expecting to find more information about the Montagut brand will go to the website at www.montagut.com believing it to be the Complainant’s website. Accordingly, in using the Domain Name as it is, the Respondent is attracting visitors to the Respondent’s website when they would not otherwise be minded to visit the Respondent’s website. Finally, the Complainant asserts that this use of the Domain Name will have resulted in the browsing rate of the Respondent’s website being increased and therefore, for its own commercial benefit, it has taken advantage of the good business reputation attached to the Complainant’s trade mark.

B. Respondent

The Respondent objects to the fact that the Complainant did not translate into English the web pages of the Respondent exhibited to the Complainant. The Respondent alleges that the Complainant must have been seeking to hide the truth. The Respondent states that at the top of the website appears "Welcome to the website of the Montagut’s fans" and that the first line of the Respondent’s website reads "this is not the official website of Montagut, only for the fans of Montagut!". The website then contains a link to the Complainant’s official website at <www.montagut.net>.

The Respondent goes on to describe the website attached to the Domain Name. It contains a statement "this website is for public interest and not for profit. We do not do and not accept any kind of activity, offer or intention with business purpose!".

The site then goes on to make various comments about the brand and the Complainant. It asserts that the Complainant’s product is too expensive for most Chinese and that the Complainant’s service is not very good. It also says that there are too many fake Montagut products around and points out that consumers do not know how to distinguish the genuine from the fake.

Apparently the Respondent bought what he thought was a Montagut suit costing one month’s salary, but then found that the suit was fake and was laughed at by his friends.

The Respondent stresses that his website is for public interest and not for profit. He roundly denies the allegation relating to the telephone conversation with Mr. Wu and Mr. Wu’s alleged demand for a sum in excess of his out of pocket expenses for transfer of the Domain Name. The Respondent denies that the telephone conversation ever took place and points out that the Complainant has produced no supporting evidence.

The Respondent draws attention to the fact that if visitors to the Respondent’s site wish to visit the Complainant’s site they can do so, because there is a link there to the Complainant’s website. It points out that the Complainant already has two domain names reflecting its trade mark, namely montagut.net and montagutmode.com. The Respondent says that the Complainant’s purpose in this exercise is to reverse domain name hijack the Domain Name and is to preclude criticism of the Complainant.

The Respondent says that he is a consumer for the Montagut brand. The Respondent and the Complainant are not competitors. "One purpose for the Respondent setting up the Montagut fans website is to help Montagut improve its service and product."

The Respondent points out that his website contains no commercial advertisement or link other than the link the Complainant’s official website. The Respondent says that no normal or prudent Internet user would be confused as to the source or sponsorship of the website.

The Respondent says that he has no intention to provide any kinds of goods of services under the Domain Name.

The Respondent says that "many consumers of the fake product tell us their misery story and show their great support of the Respondent’s website. Some of them are not victim of fake Montagut product, but of other brand. In the end of last year, one official of the China Consumer Federation praised the Respondent that the website was good for the consumers."

The Respondent says that he is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain misleadingly to divert consumers or to tarnish the trade marks or the service marks at issue.

The Respondent repeats that he never posts any business advertisements or banners on the website.

The Respondent flatly denies the allegation that the details of the Registrant of the Domain Name have changed from time to time. In that regard he accuses the Complainant of giving false testimony.

The Respondent claims that the primary purpose of his registration of the Domain Name to date is the exercise of his free speech right to criticise the Complainant. He points to the many disclaimers on the website home page and flatly denies that he has registered and used the Domain Name in bad faith. He says that he is a bona fide user and has made good faith use of the Domain Name since registering it on September 27, 2000.

The Respondent says "the Complainant made too many false testaments in order to fulfil its reverse domain name hijacking".

The Respondent concludes by citing a long list of previous ICANN decisions purporting to uphold Respondent’s rights to use disputed domain names for "fair use and free speech".

6. Discussion and Findings
General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Identical or Confusingly Similar

There is no dispute between the parties that the Complainant has rights in the trade mark Montagut.

The Domain Name comprises the Complainant’s trade mark and the generic .com suffix.

The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.

Respondent’s Rights or Legitimate Interests

The history of the Domain Name is murky and to the extent that the Complainant seeks to rely on the telephone conversation with Paul Wu, the Panel is not impressed. The evidence is anecdotal, not supported by attendance notes or any other form of documentation and is flatly denied by the Respondent. This procedure is inappropriate for resolving conflicts of fact of this kind where the Panel has neither the advantage of full disclosure nor the opportunity of seeing the demeanour of the witnesses in a witness box.

Accordingly, the Panel approaches this Complaint on the basis that the Respondent was as he claims to be, a disappointed purchaser of Montagut product who registered the Domain Name with a view to connecting it to a website criticising the performance of the Complainant.

The Panel is well aware that a number of distinguished Panelists take the view that a bona fide non-commercial criticism site connected to a domain name featuring the trade mark of a subject of the criticism is fair use of the domain name for the purposes of the Policy.

This is an area where there is scope for intelligent minds to diverge and this Panelist takes a different view.

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate a Respondent’s rights or legitimate interests to the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. The list is as follows:

"(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 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."

Neither of (i) or (ii) apply. The Respondent candidly admits that it has not and never has had any intention to use the Domain Name "in connection with a bona fide offering of goods or services". Furthermore, there is no suggestion that the Respondent has been commonly known by the Domain Name.

As to (iii), the Panel accepts that the Respondent’s use is a non-commercial use, but that begs the question as to whether it is legitimate or fair.

In the view of the Panel, the selection of a trade mark owner’s trade mark (without adornment) for a domain name and with the intent that that domain name should be connected to a website criticising the trade mark owner or its brand is manifestly not fair. Visitors to the site will not be expecting to visit a criticism site. They will be expecting to visit a site of the Complainant. The fact that when they reach the site there is a disclaimer is not enough. It is too late. By then, the damage has been done and/or the benefit to the Respondent has been achieved.

The Respondent claims a right to free speech. That right can perfectly happily be exercised in a variety of ways without using the Domain Name. The Domain Name comprises the Complainant’s trade mark and nothing else. There are well known and accepted alternative ways of identifying criticism sites, which do not risk confusion and deception of Internet users.

The list in paragraph 4(c) of the Policy is a non-exhaustive list. However, the Panel is unable to think of any basis upon which the Respondent could reasonably be said to have rights or legitimate interests in respect of the Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Bad Faith

Guidance as to what constitutes bad faith registration and use of a Domain Name is to be found in paragraph 4(b) of the Policy, which reads as follows:

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

None of those circumstances apply here. The Panel has rejected the evidence relating to the telephone conversation with Mr. Wu, the Panel has already found that the Respondent’s objective was to use the Domain Name for a criticism site, not to block the Complainant and in any event there is no question of there having been any pattern of the kind referred to in sub-paragraph (ii). So far as (iii) is concerned, the Complainant and the Respondent are not competitors and sub-paragraph (iv) does not apply, because there is no evidence to suggest that what the Respondent has done has been "for commercial gain". However, paragraph 4(b) of the Policy is not an exhaustive list.

The Panel is not persuaded that the Respondent’s objectives are purely altruistic. The Respondent has a complaint about the behaviour of the Complainant. He purchased a fake Montagut suit and holds the Complainant responsible on the basis the Complainant has taken insufficient action to deal with fakes. The Respondent registered the Domain Name in order to connect it to a website publishing that complaint. The content is manifestly (and perhaps rightly) critical of the Complainant. The content of the website is intended to belittle the Complainant in the eyes of the visitors to the site. In that respect, it is intended to damage the Complainant’s reputation.

As indicated, the Panel accepts that the Respondent is or may be entitled to voice that criticism, but to do so under and by reference to a domain name which features the Complainant’s trade mark (without adornment) is not a fair use, it is an abusive use. Registering a domain name with that intent and then using it for that purpose is in the view of the Panel, bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing findings namely that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith, the Complaint succeeds.

The Panel directs that the Domain Name <montagut.com> be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: January 21, 2002