Complainant is Perfetti Van Melle Benelux BV of Breda, Netherlands, represented by Perfetti Van Melle S.p.A., Italy.
Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On September 30, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On September 30, 2010, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 28, 2010.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 3, 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
According to the Network Solutions WhoIs database, the disputed domain name was registered on November 24, 2006. Complainant alleges that the domain name was registered in 2006 on behalf of the Indian Subsidiary of Complainant’s Group and that at the moment of the 2009 due renewal, the domain name was not renewed in time due to a misunderstanding among Complainant’s subsidiary. Complainant further alleges that as soon as it was made aware of the situation, it attempted to restore and keep using the disputed domain name and relating web site. However, Complainant discovered that the domain name had since been registered by Respondent. The disputed domain name currently resolves to a parking page offering several links to different web sites.
Complainant is notably the holder of the following International trademark registrations, covering products of international classes 5 and 30 and used in particular on candies and chewing gum:
- MENTOS n° 143859, registered on November 5, 1949;
- MENTOS n° 308527, registered on February 2, 1966;
- MENTOS n° 598995, registered on March 2, 1993;
- MENTOS n° 681732, registered on September 30, 1997.
Respondent is Private Registrations Aktien Gesellschaft. It is localized in Kingstown, St. Vincent and the Grenadines. 5. Parties’ Contentions A. Complainant
First, Complainant asserts that the disputed domain name is confusingly similar to Complainant’s trademark MENTOS. Complainant further argues that addition or insertion of the common generic English words HELP and LINE does not prevent a finding of confusing similarity.
Second, Complainant alleges that Respondent has no right or legitimate interest in the disputed domain name. Complainant claims that Respondent has not been commonly known by the disputed domain name and that it has no rights based upon tradition or legitimate prior use of the name chosen for its domain name. Complainant adds that Respondent’s only aim in registering the disputed domain name was to attempt to exploit the reputation of Complainant’s MENTOS products and its previous successful use of the domain name without the need to bear any advertising or promotion costs.
Third, Complainant contends that the disputed domain name was registered and is used in bad faith due to the reputation of the trademark MENTOS. Among other things, Complainant claims that Respondent could not have ignored the trademark MENTOS when registering the domain name. Indeed, not only a simple search among International trademarks would have easily revealed the existence of Complainant’s registrations for MENTOS, but a simpler and easier search with a search engine would have shown to Respondent that MENTOS is a brand used for confectionary products that has been widely advertised and used. Furthermore, Complainant asserts that Respondent is not only preventing Complainant from further using the domain name, but that it is also intentionally attempting to attract Internet users by creating a likelihood of confusion with Complainant’s trademark and prior use of the domain name, which constitutes use in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel is required to 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 appropriate.
Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The Panel finds that Complainant has established its registered trademark rights in MENTOS as evidenced by the trademark registrations submitted with the Complaint.
The Panel accepts that the disputed domain name is confusingly similar to Complainant’s MENTOS trademark. The disputed domain name incorporates the term “mentos” in full, which provides the dominant element of the disputed domain name. Moreover, previous UDRP decisions have often held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark (Allianz SE v. Antonio Porchia,WIPO Case No. D2010-0694 and Alstom v. Value-Domain Com,WIPO Case No. D2009-1249).
The domain name further incorporates the common generic English words HELP and LINE. In light of previous UDRP decisions, the Panel considers that the mere addition of common English words such as “help” and “line” does not alleviate the likelihood of confusion (Allianz SE v. Antonio Porchia,WIPO Case No. D2010-0694 and Alstom v. Value-Domain Com,WIPO Case No. D2009-1249). Indeed, 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 (Perfetti Van Melle Benelux BV v. Richard Fox,WIPO Case No. D2010-0435). Moreover, confusion is all the more likely to occur since, first, the association of the trademark MENTOS with HELPLINE in the domain name suggests that the relating web site could disclose information, suggestions, or contacts relating to Complainant’s MENTOS products and since, second, the disputed domain belonged at some point in time to the Indian Subsidiary of Complainant’s Group and was actively and successfully used, as attested by Indian press reports provided by Complainant.
Furthermore, the adjunction of “.com”, due to the current technical requirements of the domain name system should not be taken into account when evaluating the identity or similarity between the disputed domain name and Complainant’s trademark (F. Hoffman-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828).
Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a)(ii) of the Policy requires Complainant to establish that Respondent lacks rights and legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.
“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 mark 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 mark at issue.”
Several UDRP decisions have established that once a complainant has made a prima facie case that a respondent lacks legitimate interest or right, the burden shifts to the respondent to prove its right or legitimate interest in the domain name (F. Hoffman-La Roche AG v. Steven Pratt, Supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., Supra).
Firstly, the Panel believes from the record that there is no relationship between Respondent and Complainant and that Respondent is neither a licensee of Complainant nor has Respondent otherwise obtained an authorization to use Complainant’s trademark.
Secondly, the Panel considers that the fact that the disputed domain name directs towards a parking page displaying sponsored links does not constitute a bona fide offering of goods. Therefore, it is an indication that Respondent lacks of rights or legitimate interests (National Bedding Company L.L.C. v. Back To Bed, Inc.,WIPO Case No. D2010-0106 and LEGO Juris A/S v. J.h.Ryu,WIPO Case No. D2010-1156).
Finally, there is no evidence that Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name.
Taking all of these elements into consideration, the Panel finds that Respondent has registered and used Complainant’s trademark with the sole intention of exploiting the reputation of Complainant’s MENTOS products as well as its previous use of the domain name without having to bear any advertising or promotional costs. Therefore, Respondent is deriving advantage from user confusion. The Panel accepts that such behavior does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey (WIPO Case No. D2009-0258).
In the present case, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests with respect to the disputed domain name. The Panel’s opinion is further corroborated by the lack of a Response by Respondent in these proceedings as well as the Panel’s findings further below. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of bad faith registration and use, namely:
(i) circumstances indicating that Respondent has registered or acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants who are the owner of the trademark or service mark or to a competitor of Complainants, for valuable consideration in excess of 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 web site or other on-line location, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above. 1. Registration in bad faith
The Panel considers that it is unlikely that Respondent was unaware of Complainant’s trademark when it registered the disputed domain name. Firstly, according to Complainant, the MENTOS trademark has been used on candies in the Netherlands since the 1950s. Indeed, one of the MENTOS trademark registrations dates back to 1949. Today, MENTOS products have worldwide exposure as, according to Complainant, they are widely advertised and sold successfully in several countries. Therefore, the trademark itself seems to have acquired worldwide recognition in its class of products. Secondly, a simple and easy search of the term “mentos” with a search engine further shows the trademark’s degree of exposure to the public and, accordingly, to Respondent.
In previous UDRP decisions, panels have considered that in certain circumstances when a complainant’s trademark is well-known, the respondent’s bad faith could be inferred (AT&T Corp. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1088: “Bad faith can be presumed based on the fame of Complainant’s marks, such that Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto”). Panels have previously held that Complainant’s trademark appears to be well-known (see Perfetti Van Melle Benelux BV v. MBALogy, Gaurav Sharma,WIPO Case No. D2010-0370).
Moreover, a trademark search would have revealed the existence of Complainant’s prior trademark rights over the term “mentos”. Respondent’s failure to do so is a contributory factor to its bad faith (Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226).
As to the domain name itself, it allegedly belonged to the Indian Subsidiary of Complainant’s Group from 2006 to 2009 and was actively and successfully used, as attested by Indian press reports provided by Complainant. Awards were even granted to the web site relating to the disputed domain name due to its success and originality. According to Complainant, a misunderstanding among Complainant’s subsidiary at the moment of the 2009 due renewal of enabled Respondent to register the disputed domain name. Moreover, the disputed domain name was clearly indicated in the packaging of Complainant’s MENTOS products, sold in several countries. Taking all of these elements into consideration, the Panel finds it likely that Respondent was aware of Complainant’s trademark and prior ownership of the domain name in dispute at the time of registration.
Finally, Complainant alleges that it has never received any information about the existence of Respondent and that it has never had any connection, affiliation or commercial relationships with Respondent. The Panel considers that if Respondent intended to register the disputed domain name in good faith, it would have approached Complainant to ask for its consent to register .
These findings lead the Panel to conclude that the disputed domain name has been registered in bad faith by Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain name is registered in bad faith, it is also necessary to prove that the disputed domain name is being used in bad faith. 2. Use in bad faith
As previously indicated, Respondent was likely aware of the existence of Complainant’s trademark MENTOS. In light of this knowledge, Respondent used the domain name as a “pay-per-click portal site” or “parking page”. In Mpire Corporation v. Michael Frey, supra, it was recognized that “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” In the present case, the Panel finds that Respondent was using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain and earning, especially in light of Complainant’s prior ownership and use of the disputed domain name.
The Panel accepts that the MENTOS trademark is well-known worldwide. As such, the use of the domain name to post pay-per-click links based on the trademark value of the disputed domain name is clearly indicative of Respondent’s bad faith.
Moreover, the Panel notes that after Complainant’s cease-and-desist letter was sent to Respondent, the website associated with the disputed domain name was slightly modified. Indeed, Complainant provided evidence that on June 5, 2010, the claim that the domain name may be bought if of interest was added to the website. At the date of this decision, the claim has been deleted. However, the Panel takes it into consideration in evaluating whether Respondent has been using the disputed domain name in bad faith. Offers to sell a domain name have previously been held to constitute bad faith use of a domain name (Research In Motion Limited v. Alon Banay,WIPO Case No. D2009-0151).
Furthermore, Respondent’s failure to reply to Complainant’s cease-and-desist letter supports an inference of bad faith (Guccio Gucci S.p.A.v. Domain Administrato – Domain Administrator,WIPO Case No. D2010-1589). Moreover, Respondent’s failure to reply to the Complaint and take any part in these proceedings also suggests in combination with the other mentioned factors bad faith on its part (KNAUF Insulation Holding GmbH, KNAUF Insulation SPRL v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1218).
Finally, by using the disputed domain name, Respondent is not only preventing Complainant from further use of the domain name, but it is also intentionally attempting to attract Internet users, expecting to reach the web site as it was when used by Complainant’s Subsidiary in the past, to another variety of services by creating a likelihood of confusion with Complainant’s trademark and prior use of the domain name.
For all of these reasons, the Panel finds that the disputed domain name has been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by Complainant. 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Dated: November 17, 2010
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