WIPO Domain Name Decision D2003-0660 for meissen.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Staatliche Porzellan-Manufaktur Meissen GmbH v. Andi M. Eastman

Case No. D2003-0660

1. The Parties

The Complainant is Staatliche Porzellan-Manufaktur Meissen GmbH, of Meißen, Germany, represented by Meissner, Bolte & Partner, Munich, Germany.

The Respondent is Andi M. Eastman, of Kahului, Hawaii, United States of America.

2. The Domain Name and Registrar

According to the WhoIs database, the disputed domain name is registered with eNom, of Redmond, Washington, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2003. On August 22, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. The Center had not received Registrar�s response as of October 14, 2003. In light of the absence of Registrar confirmation, the Center made a formal compliance check using the publicly available WHOIS data, which was printed and made part of the case file by the Center. Echoing the words of the panelist in Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596, the Panel would like to "remind the Registrar of the importance of providing a Verification Response." See also Ash Temple Limited v. Media France & Web Design, WIPO Case No. D2003-0568.

The Center thus verified that the Complaint satisfied 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on September 19, 2003.

The Center appointed Daniel J. Gervais as the sole panelist in this matter on September 30, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant owns several trademarks, including MEISSEN, MEISSENER PORZELLAN, and GEKREUZTE SCHWERTER - MEISSEN in Germany, and many other countries related to the Staatliche Porzellan-Manufaktur Meissen GmbH, for porcelain products of all kinds, exclusively manufactured by the Complainant, which was established on June 6, 1710. The Complainant holds trademark registrations in several other countries, including the United States, for MEISSEN. The Complainant holds an active presence on the Internet, using the domain names , , , and at least 80 other domain names.

Prior to the filing of the Complainant, in January 2001, the Complainant initiated a civil action against the Respondent with the District Court in Munich. The Complainant was unable to effectuate service of the court proceedings to the Respondent. Through one of its employees, the Complainant also attempted to settle the matter out of the court.

5. Parties� Contentions

A. Complainant

The Respondent registered and is using a domain name that is confusingly similar to Complainant's marks. According to the information in WhoIs database, the Respondent registered domain name on December 16, 1998. According to the Complainant, the domain name was never actively in use by the Respondent. The domain name first led to an "Under Construction" page, while at present the domain name does not lead to any webpage at all.

The Respondent is fully aware that the Complainant has long-standing rights in its MEISSEN marks, and that the Complainant�s marks are famous marks worldwide.

The Complainant�s marks are well known marks, and have been used by the Complainant in connection with porcelain products continuously since the early eighteenth century. The well-known character of the Complainant�s mark was also confirmed by two public opinion polls conducted in 1992 and 2002, which showed that the expression MEISSEN was associated with the Complainant and porcelain products not only within trading circles, but also by a vast majority of consumers.

The Respondent could not have been unaware of the Complainant�s marks. The Respondent registered and is using the domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant�s contentions.

6. Discussion and Findings

In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and

3. The domain name has been registered and is being used in bad faith (see below, section 6.C).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

A. Is the Domain Name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant has used the mark MEISSEN since at least 1710, and that the Complainant succeeded in obtaining several registrations of the mark in Germany, the United States and other countries. The Panel finds that the Complainant has rights in registered trademark MEISSEN in connection with porcelain products. The fact that Meissen (Meißen) is also the name of the city of the Complainant�s seat, did not hinder registration of the Complainant�s mark and it is not this Panel�s job to question the trademark registration, especially in light of the absence of any evidence adduced by the Respondent.

As to the second question, the Panel finds that the domain name is identical to the Complainant�s mark. The only difference between the Complainant�s mark MEISSEN, and the disputed domain name is the addition of a suffix ".com", which is also a generic top-level domain reference. As a rule, addition of the generic top-level domain (gTLD) reference ".com", which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainant�s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.

B. Does the Respondent Have Rights or Legitimate Interests in the domain name?

The Complainants asserts that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the MEISSEN mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the 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."

There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C. Was the domain name Registered and Used in Bad Faith?

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website 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 Respondent's website or location or of a product.

There is evidence of the situation described in paragraph (iii) and some evidence of a pattern as contemplated in paragraph (i). The relevant facts are mentioned below.

The Respondent registered the domain name in bad faith. The Complainant�s mark MEISSEN is famous and the domain name is essentially the same as the mark. In the absence of any evidence to the contrary, it is reasonable to conclude that it is someone who was familiar with the Complainant�s mark(s) who registered the identical domain name. Moreover, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or the Complainant�s trademark(s).

A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and indicating good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. Zuccarini et al., WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461.

The Respondent did not respond to any communication from the Center, and did not indicate any intention to use the domain name in good faith.

As to paragraph 4(b)(i), although it is questionable whether the Respondent registered the domain name solely for the purpose of selling it to the Complainant, the Complainant provided ample evidence to show that the Respondent has registered in the past several domain names that correspond to well-known marks or geographical indications.

The Panel thus finds for the Complainant on this third element of the test.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.

Daniel J. Gervais
Sole Panelist

Dated: October 14, 2003

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