WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Perfetti Van Melle Benelux BV v. Richard Fox Case No. D2010-0435 1. The Parties
The Complainant is Perfetti Van Melle Benelux BV of Breda, the Netherlands, represented by Perfetti Van Melle Benelux S.p.A., Italy.
The Respondent is Richard Fox of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2010. On March 23, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 23, 2010, GoD, Inc. 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 March 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 14, 2010.
The Center appointed David Taylor as the sole panelist in this matter on April 22, 2010. 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 factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto, given that there was no formal Response filed.
The Complainant has been using the trade mark MENTOS in commerce since the 1950s in the Netherlands and in the 1960s in the United States in particular in connection with confectionary, candies and chewing gum. Nowadays MENTOS products are widely advertised and sold all around the world.
The Complainant owns several trade mark registrations and applications for MENTOS word and / or device, covering mainly products of international class 30 in particular candies and chewing gum, including the following:
- International Trade Mark MENTOS registered on November 5, 1949 with WIPO under number 143859;
- International Trade Mark MENTOS and device registered on February 2, 1966 with WIPO under number 308527;
- International Trade Mark MENTOS and device registered on March 2, 1993 with WIPO under number 598995;
- Community Trade Mark MENTOS registered on April 1, 1996 with the OHIM under number 117036;
- US Trade Mark MENTOS and device registered on January 26, 1999 with the USPTO under number 2220255;
- US Trade Mark MENTOS registered on August 3, 2004 with the USPTO under number 2870489.
The Respondent registered the Domain Name on November 12, 2009. The Domain Name resolves to a website containing sponsored links to third party websites which do not relate to the products offered by the Complainant. 5. Parties' Contentions A. Complainant
(i) The Complainant contends that the Domain Name is confusingly similar to the Complainant's trade marks in MENTOS
The Complainant asserts that the Domain Name reproduces its trade mark entirely and that the addition of the generic term “moments” is not sufficient to differentiate the Domain Name from the trade mark. In addition, the Complainant submits that the association of MENTOS with “moments” suggests to people searching the Internet that the related website could disclose information on the Complainant's products.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant contends that the Respondent has not been commonly known by the Domain Name and has no Common Law rights or legitimate prior use over the term MENTOS.
The Complainant submits that, although the webpage under the Domain Name is presently parked by the registrar, it fears that the Respondent may use it to illegitimately exploit the fame of MENTOS products.
Furthermore, the Complainant notes that the choice of terms used for the Domain Name is intriguing considering that MENTOS is an internationally famous brand, including in the United States.
(iii) The Complainant asserts that the Domain Name was registered and is being used in bad faith
The Complainant claims to have no knowledge of the existence of the Respondent and has never had any connection, affiliation or commercial relationship with the Respondent.
The Complainant contends that the Respondent never informed it of his intention or asked for its consent to register the Domain Name.
On December 2, 2009 the Complainant sent an email to the Respondent asking for the transfer of the Domain Name but received no response. According to the Complainant, the Respondent's bad faith is demonstrated by such failure to respond to an e-mail asking for the transfer of the Domain Name.
The Complainant submits that the similarity between the Domain Name and the trade mark may lead consumers to believe that the Complainant's products and the Domain Name are linked and that the Respondent could not have been unaware of this risk when choosing to register the Domain Name.
Finally, the Complainant asserts that the Respondent's bad faith is demonstrated by the fact that a basic trade mark search would reveal the existence of the Complainant's registrations for MENTOS. Given that the Respondent has registered a domain name, this demonstrates his familiarity with the Internet, and could thus have performed a search on an engine, which would have shown that the MENTOS brand is used and advertised for confectionery products.
For all the foregoing reasons, the Complainant seeks the transfer of the Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent
After having been notified of the Complaint, the Respondent wrote to the Complainant on March 23, 2010 and made the following four points:
(i) he intended to use the website at the Domain Name to warn the general public of the possible dangers from the Complainant's products;
(ii) there is no dilution of the Complainant's trade name;
(iii) he does not earn any income from the website at the Domain Name;
(iv) he has used his freedom of expression.
On March 24, 2010, the Respondent sent emails to WIPO indicating that they were “working on requests” and that they were positive that the registrar for the Domain Name could “handle the transfer of the URL in question”.
However, the Respondent's informal communications do not constitute a formal Response and thus the Panel finds that the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules states that the Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraphs 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support its contentions.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
Taking each of these issues in turn, the Panel decides as follows: A. Identical or Confusingly Similar
The first part of this element that needs to be established is whether the Complainant has rights in the term MENTOS.
The Complainant submits evidence that it has many registered trade marks in the term MENTOS including in the United States, the Respondent's country of residence according to the WhoIs record of the Domain Name.
Therefore, based on the evidence produced by the Complainant, the Panel is satisfied that the Complainant has rights in the term MENTOS.
The second part of this element that needs to be considered is whether the Domain Name is identical or confusingly similar to the term MENTOS in which the Complainant has rights.
The Domain Name reproduces the Complainant's trade mark in the term MENTOS with the mere addition of the word “moments” and the gTLD “.com”.
With regard to the addition of the gTLD “.com”, it is widely accepted that it is irrelevant in assessing the issue of confusing similarity between a trade mark and a domain name.
Concerning the addition of the word “moments”, the Panel finds that the dominant element of the Domain Name is the word “mentos” which is identical to the Complainant's trade mark. The Panel is of the view that, generally, confusing similarity may not be avoided where a domain name reproduces the entire mark of a third party with the mere addition of a generic term, especially when the trade mark reproduced is particularly distinctive and has received considerable media coverage worldwide. Numerous prior panelists have also held that if a domain name incorporates a complainant's trade mark in its entirety, this is enough to establish confusing similarity, despite the addition of additional characters, see for example PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696, where over seventy domain names all containing the trade mark PEPSI and a generic term were found to be confusingly similar to the Complainant's trade mark PEPSI.
The Panel therefore finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service trademark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service trademark at issue.”
There is nothing before the Panel to suggest that the Respondent could satisfy any of the requirements of paragraph 4(c) of the Policy.
There is no evidence that the Respondent obtained any license or authorisation to use the trade marks of the Complainant in the term MENTOS nor that the Respondent is commonly known by the Domain Name.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the Domain Name. As a result of its default in filing a Response, the Respondent has failed to rebut that evidence.
In addition, the Panel finds it highly unlikely that the Respondent created the website at the Domain Name for any reason other than generating advertising revenue from click-through traffic based on the derived trade mark value of the Domain Name. The Panel considers that such use does not qualify as a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name within the meaning of paragraph 4(c)(i) and (iii) of the Policy.
Finally, the Panel considers that the Respondent's failure to respond to this Complaint is a further element suggesting the lack of rights and legitimate interests in the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph (4)(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element that the Complainant must prove is that the Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets out various circumstances which may be treated by the Panel as evidence of registration and use of a domain name in bad faith, as follows:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In view of the fact that the term MENTOS was registered by the Complainant as International and Community Trade Marks as well as trade marks in the United States, and that the Complainant's trade marks have acquired significant goodwill and notoriety, it is inconceivable to the Panel that the Respondent would not have been aware of the Complainant's business and trade marks at the time of the Domain Name registration.
The Panel also believes that the Domain Name was registered and is being used to attract consumers and make commercial gain by providing links to third parties' websites through a pay-per-click scheme thereby taking advantage of the goodwill and the likelihood of confusion with the Complainant's trade mark.
The Panel is of the opinion that the Respondent would in all likeliness have been fully aware that the registration and use of the Domain Name would infringe the Complainant's rights in the MENTOS trade marks. In view of this and given the other circumstances highlighted above, the Respondent's conduct falls within paragraph 4(b) of the Policy.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to 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.
David Taylor
Sole Panelist
Dated: May 9, 2010
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