WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Perfetti Van Melle Benelux BV v. Whois Privacy Protection Service, Inc. / Domain Manager Case No. D2008-1424 1. The Parties
The Complainant is Perfetti Van Melle Benelux BV, Breda, The Netherlands, internally represented.
The Respondent is Domain Manager, Bristol, United Kingdom of Great Britain and Northern Ireland, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2008. On September 19, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 19, 2008, eNom transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2008, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amendments to the Complaint on September 25, 2008. The Center verified that the Complaint together with the amendments 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint by sending a copy of the Complaint and a Notification of the Commencement of Administrative Proceeding to the Respondent on September 26, 2008, using the contact details (fax, email, and post) made known to the Center by the Complainant and by the Registrar of the disputed domain name and also to the email address The proceedings commenced on September 26, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response originally was October 16, 2008. Upon the Respondent's communication that it did not receive the Complaint and asked for the relevant documents to be re-sent, the Center re-forwarded by email copies of the Complaint and the Notification of Commencement on September 30, 2008. The Center did not receive any indication that those documents did not reach the Respondent. The Center also extended the due date for filing of Response until October 22, 2008 to ensure that the Respondent was given an opportunity to present its case. The Respondent sent an informal communication (“interim response”) to the Center on October 23, 2008. The Center appointed Brigitte Joppich as the sole panelist in this matter on November 7, 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 paragraph 7 of the Rules. 4. Factual Background The Complainant is the owner of many trademark registrations and applications for MENTOS word and/or device, covering mainly products in international class 30 and used in particular on candies and chewing gum. The first international trademark registration for MENTOS dates back to 1966 while in Great Britain, home country of the Respondent, MENTOS is a registered trademark since 1971. Amongst others, the Complainant owns the following trademark registrations of MENTOS: IR No. 308527 dated February 2, 1966, CTM No. 117036 dated April 1, 1996 and CTM No. 554337 dated May 13, 1997 (the “MENTOS Marks”). “Mentos” has been used on candies in The Netherlands since the 1950s and nowadays “Mentos” products are widely advertised and sold successfully all round the world. The total net sales of “Mentos” products in 2007 amounted to USD 519,670,000 and advertising expenses to USD 53,701,000. In Great Britain “Mentos” net sales for 2007 amounted to USD 8,792,000 and advertising expenses to USD 1,324,000. 5. Parties' Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case: (1) The disputed domain name is not only confusingly similar but almost phonetically and graphically identical to the Complainant's duly registered MENTOS Marks. (2) The Complainant further contends that the Respondent has not been commonly known by the disputed domain name and has no rights based upon tradition or legitimate prior use of the name chosen for the disputed domain name, nor has there been any connection, affiliation, or commercial relationship between the Complainant and the Respondent. (3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. The Complainant claims that - bearing in mind that “Mentos” is a famous brand all over the world – it seems quite strange that the choice for the Respondent's domain name fell on a word so strictly similar to “Mentos”. Moreover, the Respondent has never approached the Complainant to inform the Complainant of its intention to register the disputed domain name or to ask for consent to its registration, which he should have done if his intention was to use the disputed domain name in good faith. The Complainant contends that, due to the similarity between the words “mentoz” and “mentos”, consumers may think there is a link between the Complainant's products and the Respondent's domain name, and, searching the Internet for a website for “Mentos” products, they also run the risk of misspelling or mistyping the word “mentos”, ending up at the website at the disputed domain name, which resolves to a parking web-page offering several links to different websites. Therefore, the Respondent intentionally attempts to attract Internet users expecting to reach the website corresponding to the Complainant's products to a variety of other services by creating a likelihood of confusion with the Complainant's trademark. Furthermore, the Complainant contends that the Respondent's bad faith is also revealed by the fact that, contacted by a third party under the instructions of the Complainant's mother, the Respondent offered the disputed domain name at a price of EUR 1,500 plus VAT because “the domain is short and very pronounceable also since parking the domain we have recorded traffic in the thousands each month . . . . It is already listed in all the major search engines”, thus trying to sell it for valuable consideration in excess of the out-of-pocket expenses directly related to the registration of the domain name. B. Respondent In its “interim response” the Respondent contends that the disputed domain name was first registered in 2001, that the Respondent registered the domain name five years ago, without the Complainant in mind, and that the domain name was not used in a manner that would cause harm or confusion to the Complainant. The Respondent further claims that its “gaming/forum avatar (moniker)” (nickname) was “Mentoz” from 2002 until March 2008 when it changed it to “Incipience”. The Respondent continues to argue that EUR 1,500 is a fair price for a domain name with over 50,000 Google results generating high traffic and that the parked webpage offered by the disputed domain sponsor does not show any content relating to the Complainant. Finally, the Respondent asks the Panel and the Center to allow it its “day in court” and to look at the whole picture - while it has addressed issues based on the information at hand, it cannot submit a complete response addressing all issues raised by the Complainant without all the disclosed information, which it contends was still incomplete at the time the Respondent's statements were filed with the Center. 6. Discussion and Findings The Response due date was October 22, 2008. The “interim response” was filed on October 23, 2008. Due to the time difference in the location of the Respondent and the Center, the Panel finds that the Response was filed on time (see Atlas Copco Aktiebolag v. Texas International Property Associates NA NA,WIPO Case No. D2008-0986). Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant's trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The disputed domain name includes the MENTOS Marks with the only exception that the last letter “s” is changed into a “z”. The Panel believes that – even with the letter “z” at the end – the average person will readily identify the designation “mentos” in this domain name, which corresponds to the Complainant's MENTOS Marks. Furthermore, the domain name is phonetically identical to the MENTOS Marks and appears to be an erroneous variation of the latter. It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.: (i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name, it is consensus view among panelists that the complainant has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. The burden of proving that the respondent has rights or legitimate interests in respect of the disputed domain name will then lie with the respondent. The Complainant has asserted that the Respondent has no rights in the disputed domain name, is not commonly known by the domain name, and has no commercial relationship with the Complainant. The Complainant has, therefore, fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent contends that the disputed domain name was registered to reflect its nickname used for forums and gaming. However, the Respondent has not provided any kind of evidence for this assertion and has, therefore, not met its burden of proof. The alleged failure by the Center to transmit the complete case file to the Respondent is not related in any way to the absence of evidence in this regard. As a result, the Respondent failed to establish rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, amongst others: (i) circumstances indicating that a 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 (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location. The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the disputed domain name was registered in bad faith and is being used in bad faith. Given the fact that candies sold under the MENTOS Marks have been widely known if not famous in Europe for several decades, it is unconceivable that the Respondent did not know of the Complainant's trademark rights when registering the disputed domain name. Moreover, it is well-settled that the practice of typo-squatting, of itself, is evidence of the bad faith registration of a domain name (see Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069; Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816). The Respondent, therefore, registered the domain name in bad faith. Furthermore, the purpose of the website maintained by the Respondent at the disputed domain name is to divert traffic intended for the Complainant's site to its own, and thus to capitalize on the Complainant's MENTOS Marks. This qualifies as bad faith use under paragraph 4(b)(iv) of the Policy, in that the Respondent's use of the domain name attempts to attract for apparent commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website (see Expedia, Inc. v. Alvaro Collazo,WIPO Case No. D2003-0716; ESPN, Inc. v. XC2,WIPO Case No. D2005-0444). This inference of bad faith use is further supported by the fact that the Respondent offered to transfer the disputed domain name to an affiliate of the Complainant at a price of EUR 1,500 which is more than any out-of-pocket costs directly related to the disputed domain name that the Respondent likely incurred. Therefore, the Respondent has also acted in bad faith under paragraph 4(b)(i) of the Policy. As a result, the Panel finds that the Complainant has met the requirements of 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. Brigitte Joppich Dated: November 12, 2008
Sole Panelist
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