The Complainant is Verner Panton Design of Bern, Switzerland, represented by Rechtsanwalt, Germany.
The Respondent is Fontana di Luce Corp of New York, New York, United States of America (“U.S.”). 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 26, 2012. On September 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 1, 2012.
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” 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 October 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2012.
The Center appointed John Swinson as the sole panelist in this matter on November 9, 2012. 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 is Verner Panton Design, of Bern, Switzerland, an individual enterprise according to the laws of Switzerland.
The Complainant owns a number of trade mark registrations, including the German trade mark registration for VERNER PANTON (Registration No. 39866162), which was filed on November 17, 1998, (the “Trade Mark”).
The Respondent is Fontana di Luce Corp of New York, U.S. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on December 22, 2003. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions were brief, and are summarised as follows.
Identical or Confusingly Similar:
The Complainant was founded by Verner Panton, the famous and much lauded designer and architect. Verner Panton is most famous for his piece the “Panton Chair” (or “Stacking Chair”), the world’s first one-piece molded plastic chair, which he designed in 1960. The U.S. company Henry Miller began mass producing the “Panton Chair” in 1968. The Complainant owns a number of trade marks, including for the Trade Mark (as detailed above). The use of the Disputed Domain Name by any person other than the Complainant is likely to cause confusion in the public.
Rights or Legitimate Interests:
The Complainant has not authorized the Respondent to use the Trade Mark.
Registered and Used in Bad Faith:
The Respondent is a furniture manufacturer, and therefore a competitor of the Complainant. The Respondent is not using the Disputed Domain Name at the moment, however, there is a high risk that it may be used in a misleading way in the future (possibly to promote and sell counterfeit Verner Panton pieces).
The Complainant contacted the Respondent via email. The Respondent requested further information, which the Complainant provided. The Respondent stopped responding to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; 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.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response. A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413; and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant asserts that it owns the Trade Mark, and provided evidence of ownership. The Panel accepts that the Complainant owns the Trade Mark.
The Disputed Domain Name is identical to the Trade Mark. The addition of generic top level domains (the “.net” suffix) is irrelevant in comparing the similarities between a domain name and a trade mark (see Missoni S.p.A. v. Ahmed Salman,WIPO Case No. D2007-1485; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Although the Complainant made very limited submissions on this point, the Panel finds that the Complainant has made out a prima facie case for the following reasons:
- the Respondent has no connection or affiliation with the Complainant;
- the Complainant has not consented to the Respondent's use of the Disputed Domain Name;
- there is no evidence that the Respondent has been commonly known by the Disputed Domain Name;
- the Respondent does not use the website associated with the Dispute Domain Name in connection with a bona fide offering of goods or services, as the website is “under construction”; and
- since the Respondent has not used the Disputed Domain Name, it makes no legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name is not being actively used, it resolves to a website that is “under construction”. Therefore, the question is whether the passive holding of the Disputed Domain Name can be considered registration and use in bad faith, taking into account all the circumstances of the present case.
In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the panel stated:
“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
This has been affirmed by panels in subsequent cases (see, for example, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; and Atlas Copco Aktiebolag v. MKC Supply Inc,WIPO Case No. D2011-1844).
Given the strong reputation of Verner Panton the designer, the Complainant and the Trade Mark, it is highly likely that the Respondent had knowledge of the Verner Panton brand when it registered the Disputed Domain Name. In cases where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith on the part of the respondent may be inferred (see, for example, Telstra Corporation Limited v. Peter Yellowlees,WIPO Case No. D2002-0638 and Sony Kabushiki Kaisha v ,WIPO Case No. D2000-1074). Here, it is reasonable for the Panel to infer that the Respondent sought to make use of the reputation of the Complainant (at some point) and registered the Disputed Domain Name in bad faith.
In circumstances such as are present here passive holding of the Disputed Domain Name has been held to amount to bad faith use in accordance with Policy, paragraph 4(a)(iii). Further, taking into account the significant reputation associated with the Trade Mark, here the Panel finds that there is no conceivable legitimate use of the Disputed Domain Name by the Respondent. Any use of the Disputed Domain Name by the Respondent is likely to constitute passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s trade mark rights ( Audi AG v. Hans Wolf,WIPO Case No. D2001-0148; and ACCOR Societe Anonyme à Directoire et Conseil de Surveillance v. Tigertail Partners,WIPO Case No. D2002-0625).
The Panel also considers that the Respondent’s cessation of communication with the Complainant, after the Complainant had been forthcoming in providing identification information on two occasions, is further evidence that suggests bad faith intentions.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
John Swinson
Sole Panelist
Date: November 19, 2012
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