WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Perfetti Van Melle Benelux BV v. Anne Schmieg Case No. D2009-0834 1. The Parties
The Complainant is Perfetti Van Melle Benelux BV of Breda, Netherlands, represented by Perfetti Van Melle S.p.A., Italy.
The Respondent is Anne Schmieg of Minnesota, United States of America. 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 June 23, 2009. On June 23, 2009, the Center transmitted by email to eNom a request for Registrar verification in connection with the disputed domain name. On June 23, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2009. The Respondent did not submit any formal response. An email was received on July 13, 2009 from Anne Schmieg. The Center responded to the email on July 13, and July 21, 2009.
The Center appointed Linda Chang as the sole panelist in this matter on August 5, 2009. 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.
The Identity of the Respondent
The Respondent of this administrative proceeding, Ms. Schmieg, wrote to the Center on July 7, 2009, claiming that she had not registered the domain name and the email address as indicated in the WhoIs info was incorrect and requesting that her name be removed from the proceeding. Upon receipt of Ms. Schmieg's email, the Center noted to the Parties on July 13, 2009 that a suspension of the proceeding (up to 30 days allowed) is possible if the parties wish to explore settlement, and that the Center would require a signed request for suspension from the Complainant specifying the period of suspension being requested and the reason for such requests. As no signed request for suspension was received, the Center notified the Parties on July 21, 2009 that the case would be proceed.
According to the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), the Respondent means the holder of a domain-name registration against which a complaint is initiated. Although the holder of the disputed domain name in the present case claimed it did not register nor authorize others to register the domain in its name, there has been no persuasive evidence to support this. The Panel decides the holder of the disputed domain name to be the Respondent of this administrative proceeding. 4. Factual Background
The Complainant is the owner of many trademark registrations and applications for MENTOS word and/or device, covering mainly products of international class 30 in particular candies and chewing gum. The first international trademark registration for MENTOS dates back to 1949 while in the United States, home country of the Respondent, MENTOS is a registered trademark since 1972. MENTOS has been used on candies in the Netherlands since the 1950s and nowadays MENTOS products are widely advertised and sold all round the world.
The disputed domain name was registered in March 2009 but the Respondent claimed that it did not have knowledge of the trademark nor did it register the domain name. 5. Parties' Contentions A. Complainant Identical or Confusingly similar
The Complainant contends that the disputed domain name is identical to the Complainant's registered trademark MENTOS as the English article “the” does not create any distinction between the domain name and the trademark. Moreover, the Complainant owns the domain name since 2006. Therefore the possible confusion between the Respondent's domain name and the Complainant's trademark is obvious. Rights or legitimate interests
The Complainant contends that the Respondent has not been commonly known by the disputed domain name. On the contrary, the Complainant states, bearing in mind that MENTOS is not only a fancy word but also a brand famous all over the world, choice of the same name for the domain name does not seem to be credible coincidence. The Complainant states that registering the domain name with only an addition of the English article “th” is obviously to trade on the reputation of the Complainant's trademark name, which is unlawful. Registered and used in bad faith
The Complainant contends that it has never had any connection, affiliation or commercial relationship with the Respondent, and the Respondent has never approached the Complainant to inform of its intention to register the alleged domain name or to ask for consent to its registration, which it should have done if its intention were to use the domain name in good faith.
The Complainant further contends that due to the confusing similarities between the words THE MENTOS and MENTOS, consumers may think there is a link between the Complainant's products and the Respondent's domain name. The Respondent has therefore created a likelihood of confusion between the Complainant's trademark and the Respondent's domain name, which will lead consumers looking for information of the Complainant's products to the site under instead.
The Complainant states that the Respondent is unlikely to be unaware of this risk when it chose to register the domain name. As a matter of fact, being a resident of the United States, she should be aware of the existence of the Complainant's products under the name of MENTOS given the extensive sales and advertisement of the product bearing MENTOS.
The Complainant further states that the bad faith of the Respondent is demonstrated also by the fact that a very simple search of the International trademarks would easily reveal the existence of the Complainant's registrations for MENTOS. In addition, an inexperienced pair of eyes would notice, from the number of trademark registrations displayed by the search, that MENTOS is a used trademark. Even if the Respondent had not performed a trademark search, a simpler and easier search with a search engine would have shown that MENTOS is a brand used on confectionery products and that it has been widely advertised and used. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
For the Complainant to succeed they must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant have rights;
(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 Panel is convinced that the Complainant has established that the disputed domain name is confusingly similar to the Complainant's earlier registered trademark MENTOS. The reasons are as follows:
First, the Complainant has rights in the registered trademark MENTOS. These rights date back as 1949 and well precede the registration of the disputed domain name.
Secondly, the disputed domain name is similar to the MENTOS trademark as it wholly encompasses the trademark, save for the additional word “the” which does not have a fixed meaning hence does not alter the meaning of “MENTOS”.
Finally, the addition of the top-level domain name “.mobi” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.
In the circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark MENTOS. B. Rights or Legitimate Interests
The Complainant has presented a prima facie case consequently, that the Respondent has no rights or legitimate interests in the disputed domain name. It is the Respondent's responsibility to prove otherwise. The email communication of July 13, 2009 from the Respondent explicitly indicates that it did not have knowledge of the domain name registration nor did it make the registration.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The figures provided in the files show that the Complainant has spent heavily advertising its trademark MENTOS all around the world. Sales of the MENTOS products in the USA also show the brand name is considerably well-known in the market that country where the Respondent is a resident. Given the trademark is a made-up word, and the products it is used upon are daily foodstuff, it is unlikely that the Respondent was not aware of the trade mark name at the time of its registration of the domain name in March 2009.
In cases under circumstances as these, registration of a domain name identical with or confusingly similar to another party's well established trademark of which the disputed domain name holder has knowledge at the time of its registration is a bad faith act.
In the circumstances, the Panel finds that the disputed domain name was registered and used in bad faith. 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.
Linda Chang
Sole Panelist
Dated: August 25, 2009
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