WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC. Case No. D2008-1300 1. The Parties
The Complainant is Villeroy & Boch AG, Mettlach, Germany, represented by Taylor Wessing Partnerschaftsgesellschaft, Germany.
The Respondent is Whois Data Shield/Hong Kong Names LLC., Jupiter, United States of America / Hong Kong, SAR of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, INC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2008. On August 27, 2008, the Center transmitted by email to Moniker Online Services, INC. the request for registrar verification in connection with the domain name at issue. On August 29, 2008, Moniker Online Services, INC. transmitted by email to the Center its verification response providing a different registrant of the disputed domain name. In response to a notification by the Center that the registrant information differed, the Complainant filed an Amendment to the Complaint on September 5, 2008. The Center verified that the Complaint together with the Amendment to 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 September 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2008.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on October 8, 2008. 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 Villeroy & Boch AG, is a Germany company and a worldwide manufacturer of ceramic products, including bathroom accessories, tiles and other products such as tableware. The term “Villeroy & Boch” is extensively used by the Complainant as a company name, business designator and as a trademark.
The Complainant's VILLEROY & BOCH mark is registered as a trademark in numerous jurisdictions worldwide including the United States of America, and it has provided the following details of its trademark registrations as a basis for this dispute:
SR NO
TRADEMARK
Registration Number
CLASSES
APPLICATION DATE
1.
VILLEROY & BOCH
German word mark registration 946093
10, 11, 19, 20, 21, 34
August 22, 1975
2.
VILLEROY & BOCH
International Registration No. 586592
6, 8, 11, 14, 19, 20, 21, 24, 34
March 2, 1992
3.
VILLEROY & BOCH
Community Trademark registration
1840362
11, 20, 21
September 6, 2000
4.
VILLEROY & BOCH
US word mark 1,339,086
11, 19, 21
August 24, 1983
The Respondent of the domain name was mentioned in the initial Complaint as “Whois Data Shield”, a privacy service. In the Registrar's verification response to the Center on August 29, 2008, the registrant of the domain name was identified as “Hong Kong Names LLC.” by the Registrar. Consequently, the Complainant filed an Amendment to the Complaint on September 5, 2008 naming the newly identified registrant as a second Respondent to the present dispute. Accordingly, the Respondents in this dispute are: Whois Data Shield and Hong Kong Names LLC. Both Respondents are referred to in these proceedings as “the Respondent”.
The disputed domain name was registered on March 27, 2000. 5. Parties' Contentions A. Complainant
The Complainant states it's company was founded in the year 1748, and has used the business name “Villeroy and Boch” for over 170 years, from the year 1836. It was converted to a public limited company in 1987 and has been listed on the German stock exchange since 1990. The name “Villeroy & Boch”, according to the Complainant, represents the last names of its founders, Nicolas Villeroy and Jean-Francois Boch, and therefore its trademark is strongly linked to the Complainant.
The Complainant alleges that it has evolved from being a manufacturer and marketer of quality products to a lifestyle specialist of worldwide repute. The Complainant mentions its annual sales figure was Euro 848,600,000 in 2007. Its products are sold in 125 countries through its own network of marketing companies and importer with a considerable presence in the United States of America.
The Complainant states it is the owner of the domain names and . The websites linked to the domain names are being used by the Complainant to disseminate information and for its business promotion. The details of its extensive promotional measures and its advertising are made available on its websites. The Complainant has also furnished a copy of a press release showing that it is a recipient of the prestigious Red Dot Design Award, which is allegedly one of the largest design competitions in the world. Identical or Confusingly Similar
The Complainant asserts that the disputed domain name is identical to its trademark. Although its trademark is a combination of two personal names, it is distinctive of the Complainant. Referring to Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, the Complainant claims that through long and extensive use its trademark has acquired the status of a highly distinctive mark and as such, it enjoys worldwide protection.
The disputed domain name is phonetically and visually identical to its trademark, alleges the Complainant, as it incorporates the mark in entirety. The Complainant argues that the ampersand symbol “&” cannot be used in domain name registrations. The disputed domain name therefore consists of only the “register-able” elements of the mark, namely “VILLEROY” and “BOCH”. Citing Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728 the Complainant argues that the “.com” designator does not distinguish the domain name from its mark, and neither does the use of the word “and” instead of the ampersand symbol “&”.
The Complainant refers to several cases that have found confusing similarity between a domain name and a trademark, where the dominant part of the domain name was a trademark. The Complainant refers to Reuters Limited v. Global Net 2000 Inc.,WIPO Case No. D2000-0441, and argues that domain names which differ from the trademark by only minor variations, have a greater propensity to be confusingly similar to the trademark, particularly if the trademark is distinctive. Rights and Legitimate Interests
The Complainant states that the Respondent has no rights or legitimate interests in the domain name for the reasons: Firstly, that the Complainant's adoption of the trademark precedes the Respondent's registration of the domain name by several years.
Secondly, the Complainant has not authorized the Respondent to use its trademark in any manner.
Thirdly, there is no evidence of the Respondent's use of the domain name in connection with a bona fide offering of goods or services, but rather the Respondent uses the Complainant's trademark in an unauthorized manner. The Respondent's website provides links to the Complainant's competitors such as “WMF”, “Wedgewood,” KST Ceramics” and “Perrin and Rowe”. This, according to the Complainant, shows the Respondent's knowledge of the Complainant's mark and its area of business.
Fourthly, the Complainant argues that legitimate interests may be found on the fulfillment of certain requirements as described in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903. These requirements, which include the disclosure of the relationship with the trademark owner, are not fulfilled in the present case and therefore the Respondent has no legitimate rights.
Fifthly, the Complainant alleges that it has conducted searches on the SAEGIS databases to verify if the Respondent has acquired any trademark rights in a name similar to disputed domain name. The searches have revealed that Respondent has no trademark rights nor is commonly known by the names “Villeroy” or “Boch”.
Finally, the Complainant argues that the Respondent does not use the domain name for any fair use purposes without intent for commercial gain, but uses it to mislead and divert consumers, tarnish the trademark and to create a false impression of association with the Complainant. Bad Faith
The Complainant contends that the Respondent has registered and uses the domain name in bad faith. The primary reason being, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or affiliation of the website.
The Complainant further argues that the Respondent is aware of the Complainant's mark and area of business, as the Complainant's mark is well known worldwide. Further, the second Respondent has been involved in several previous domain name cases and uses the disputed domain name to divert consumers searching for the Complainant's website to competitor's sites which shows the Respondent's knowledge of the mark. Use of the domain name for selling competing products by the Respondent would mislead unwary customers to believe it is sponsored or associated with the Complainant.
The choice of the name is therefore not a mere coincidence, according to the Complainant, but it is an intentional use of a name that is identical or confusingly similar to the Complainant's mark. The Complainant refers to LN-möbelhandels GmbH v. Edin Bektovic,WIPO Case No. D2007-0298 and Ferarri S.p.A v. Berthold Buehler,WIPO Case No. D2003-0981 and states that: a person using a domain name and aware of opposing rights, impedes the use of the domain name by the owner of the rights and prevents legitimate use of the domain name for a long period of time, acts in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy under Paragraph 15(a), instructs the Panel to decide the case on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any Rules and applicable substantive law or principles of law which the Panel deems applicable to the dispute. The Panel considers further below whether the doctrine of latches apply to the facts of the present case.
The disputed domain name was registered on March 27, 2000. A period of nearly eight and half years has elapsed since the registration of the domain name and the filing of the present Complaint. The Panel finds this is an inordinate delay on the part of the Complainant in bringing the action. Further, the Complainant has provided no explanation for the delay.
In previous UDRP decisions panels have found that delay and laches are not applicable to UDRP complaints. The rationale being, firstly that the relief offered under the Policy is primarily in public interest, which seeks to avoid future confusion as to the source of the mark and secondly the remedy under the Policy is similar to trademark injunctive remedy. See Tax Analysts v. eCorp,WIPO Case No. D2007-0040 citing The E.W Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447. (Delay of bringing action after seven years of the domain name registration was found not fatal to the Complaint, although the Complaint was dismissed on other grounds.)
The Panel while agreeing with the above reasoning nonetheless believes that complainants mindful of their rights should take timely action. Some previous panels have not been favorably disposed towards tardy or delayed complaints. They have held that a belated claim could be interpreted as tacit acquiescence by the trademark owner who chooses to let the respondent use the trademark and has kept quiet while the respondent continued to use the mark and alter its position. In Chivas USA Enterprises, LLC et al. v. Cesar Carbajal,WIPO Case No. D2006-0551 a delay of fifteen months was inter alia found to be a reason for denying the Complaint. The respondent in that case, who had been developing the website over a period of time had invested time and efforts in developing the website and altered his position and was allowed to raise the defense of delay on the part of the complainant.
The Panel has highlighted the above case to illustrate that unexplained delay in some instances could be a factor to deny the complaint, particularly if the mark is not a strong one. In the present case, the Panel finds that given the prior adoption and use of the mark by the Complainant and its well established reputation over a number of years entitles the Complainant to remedies offered under the Policy for similar reasons discussed in cases such as in Tax Analysts v. eCorp,WIPO Case No. D2007-0040. The Panel holds that despite the delay the merits of the Complaint can be taken up.
Turning to the merits of the case the Panel finds:
The Policy requires the Complainant in a domain name dispute has to establish three aspects given in paragraph 4(a).
(a) The domain name which is registered by the Respondent is identical or confusingly similar to a mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The Policy paragraph 4(a)(i) requires the Complainant to establish that the domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights.
The Complainant has shown that it has well established rights in the mark VILLEROY & BOCH. It has provided details of the adoption and use of its mark which dates back to over one hundred and seventy year. The Complainant has also provided details of its trademark registrations, its turnover using the mark and its marketing and promotional activities.
The Panel finds the domain name incorporates the mark of the Complainant and it is the most striking aspect of the domain name. The use of the word “and” between the names “villeroy” and “boch”, as argued by the Complainant, does not distinguish the domain name from the mark. The Panel finds the word “and” is a mere substitution for the ampersand symbol used in the mark.
The Panel finds, for the reasons stated above, that the domain name is confusingly similar to the Complainant's trademark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has to make a prima facie case that the Respondent lacks rights and legitimate interests in the domain name, under paragraph 4 (a)(ii) of the Policy.
Under the Policy rights and legitimate interests in the domain name can be found in favor of the Respondent, if the Respondent can demonstrate any of the factors enumerated under paragraph 4 (C). The Panel finds there is no such evidence on record favoring the Respondent, such as for example the Respondent's preparations to use of the name in connection with a bona fide offering of good. Instead, it appears that the Respondent is trying to derive commercial gain by placing links on its website to direct users to the competitors of the Complainant. It is well established that such use is not a legitimate use as it merely seeks to benefit from a mark by misleading Internet users.
The Panel also notes that the searches conducted by the Complainant have not yielded any results to show that that the Respondent is known by the domain name or operates any business entity that corresponds to the domain name. The Complainant has not authorized use of the mark by the Respondent. Finally, a discernible reason to find that the Respondent lacks rights or legitimate interests, is the fact that trademarks of the Complainant were registered long before the domain name registration.
The Panel finds, for the reasons mentioned above that the Respondent has no rights or legitimate interests in the domain name and the Complainant has fulfilled the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has to establish under paragraph 4(a)(iii), that the domain name was registered and is being used in bad faith by the Respondent.
The Panel finds from the facts and circumstances discussed above, that the Respondent's use of the domain name is to provide links to the Complainant's competitors. This is a strong indication of the Respondent's probable knowledge of the mark. It is likely that a potential customer looking for the website of the Complainant could come across the Respondent's site or wrongly type the word “and” rather than the hyphen and would be mislead. Such use is a classic case of bad faith registration and use.
The Panel finds that Hong Kong Names LLC has been named as respondent in previous domain name disputes for abusive registrations and use of domain names. The use of a privacy services does not necessarily imply bad faith as there can be many legitimate reasons to use privacy services such as prevention of identity theft, protection against spam or other legitimate account management issues. See Divex Limited v. ZJ, Sam Chang and Tim NG,WIPO Case No. D2007-0861. However, in the light of all the factors discussed here, the Panel finds, the use of privacy shield by the Respondent may not be for entirely legitimate reasons, and this is yet another reason in the present case to find bad faith registration and use of the domain name.
The Panels holds that the Complainant has successfully established the requirements under paragraph 4(a)(iii) of the Policy. 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.
Harini Narayanswamy
Sole Panelist
Dated: October 22, 2008
Full & Egal Universal Law Academy