Generic Top Level Domain Name (gTLD) Decisions

The Complainant is George Schmidt Montgomery Mall Associates Limited Partnership, Columbus, OH, USA ("Complainant") represented by Randolph W. Alden, of Alden, Taylor & Durkin, LLC. The Respondent is Chip Franklin Smirk, Inc., Kensington, MD, USA ("Respondent") represented by Ari Goldberger, of ESQwire.com Law Firm.

The domain name at issue is "montgomerymall.com" registered with eNom, Inc.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 9, 2001; the Forum received a hard copy of the Complaint on April 10, 2001.

On April 10, 2001, eNom, Inc. confirmed by e-mail to the Forum that the domain name "montgomerymall.com" is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 2, 2001 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 postmaster@montgomerymall.com by e-mail.

A timely response was received and determined to be complete on May 2, 2001.

On May 10, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Roger P. Kerans as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

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.

The Complainant conducts business in Montgomery, Alabama, under the name Montgomery Mall. Customers of that business who discover the domain name "MONTGOMERYMALL.COM" could reasonably conclude it was a website of the Complainant. The names are confusingly similar.

I accept that a business that uses a geographic name cannot claim its exclusive use, even if competing use may cause confusion. See Travel Berkeley Springs, Inc. v. Glens Country Estate, FA 96347 (Nat. Arb. Forum Feb. 16, 2001) (finding that Complainant could not have superior right to use of "Berkeley Springs" to the exclusion of other entities, particularly where there were many other businesses that used geographic names as part of their business name); see also John Rush & Annette Witzel v. Oregon City Link, FA 95318 (Nat. Arb. Forum, Sept. 7, 2000) (finding that geographic location was incapable of serving as a trademark); Port of Helsinki v. Paragon Int’l Projects, Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding that ICANN Policy does not provide protection for geographic names).

And I accept that it is possible that the name of a store or shopping mall may fall into public domain because it comes to be applied by the public to a geographical district, and no longer identifies just the commercial enterprise.

But that is not made out here to my satisfaction. The Respondent contends that the term "Montgomery Mall" in Bethesda, Maryland, now is understood by the public to refer to a geographical district, and not just the shopping mall now called Westfield Shoppingtown Montgomery. The Respondent refers to a bus map, but the label on the bus map does not support Respondent’s position. Indeed, it proves nothing that a transit authority uses a commercial name to describe a bus station. I note the map also refers to a station at American University. I doubt this alone establishes that the University can no longer claim a proprietary interest in its name. On the other hand, the Respondent conspicuously does not offer evidence that the Westfield Shoppingtown Montgomery no longer claims any proprietary rights in the name in Bethesda, nor any evidence about name use by members of the public or from any cartographic authority. The Respondent has failed to persuade me that the term "Montgomery Mall" has fallen into the public domain in and around Bethesda.

The Respondent refers to another Montgomery Mall - in Pennsylvania. This fact is irrelevant to any issues before this tribunal. In the pre-Internet age, localized businesses could, in different communities, safely employ similar names. The point is that, if the local name is put on the World Wide Web, the use is no longer local. The Respondent may have had in mind only the Montgomery Mall in Bethesda, but the domain name it chose conflicts with Montgomery Malls everywhere in the world. Similarly, the Complainant cannot assert an exclusive right to that name everywhere, and it merely asserts the right to exclusive use of the name in Montgomery, Alabama.

The "geographic name" exception does not apply in this case.

The Complainant obviously has a legitimate interest in the name Montgomery Mall in Montgomery Alabama by reason of its connections through several decades with its local business.

The Respondent has not operated any business using the name "montgomerymall", nor has it asserted any other proprietary right. On the contrary, it claims the term is in the public domain. In any event, even if the Respondent is right in fact that the term is now in the public domain in Maryland, it does not follow that the Respondent can use that name in Alabama, where it may have a very different meaning.

I conclude that the Respondent has no legitimate interest in attempting to use "montgomerymall" on a universal basis. Whether it has that right in Bethesda is a matter between it and Westfield Shoppingtown Montgomery. That issue is not before me.

The Respondent contends that it has the ambition to have a business website referenced by a string of names of malls around USA that have allegedly fallen into the public domain. See also IG Index PLC v Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that Respondent has rights in the domain name because Respondent’s claimed use of the domain name is a "plausible explanation" to which the Panel must give weight). But is this explanation plausible? The Respondent does not specify exactly what would be the nature of this business. It does rather sound like a plan that would lead to conflict with those other malls - as well as similarly named malls. As a result, it is not persuasive. I do not accept that a suggestion of a dubious business plan establishes good faith.

It is evidence of bad faith if the only activity of the Respondent is to offer the domain name for sale. . See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale); see also American Anti-Vivisection Soc’y v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith"). In reply, the Respondent claims that a standing offer to investors to finance the development of an undeveloped site is a good faith plan to use the site. See for example SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). But here no preparations are demonstrated. I am left with the distinction between an offer to sell and an offer to develop. In my view, in these circumstances, this is a distinction without a difference. See DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

The Respondent contends it has no intention to compete with the Complainant, and did not know of its existence when it registered the name. I have, in a previous decision, rejected a similar argument. See Netfolio Inc. v Tantalus Investments FA 96684 (Nat. Arb. Forum Mar. 27, 2001), where I said:

In these circumstances, I infer bad faith.

Because of my concern that nobody may have the exclusive universal right to the domain name "montgomerymall.com" without some qualification, I hereby cancel that domain name.