Complainant is Montblanc-Simplo G.m.b.H. of Chicago, Illinois, United States of America, represented by Winston & Strawn LLP, United States of America.
Respondent is Whois Privacy Protection Service MuuMuuDomain of Osaka, Japan/Ryota Shirahama of Fukuoka-shi, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 2013, the Registrar 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 Complainant on September 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On September 17, 2013, the Center further informed the Parties that the language of the registration agreement for the disputed domain name is Japanese, and invited Complainant to either: (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English; (ii) to submit the Complaint translated into Japanese; or (iii) to submit a request for English to be the language of the proceedings, and invited the Respondent to comment thereon. On the same date, Complainant submitted a request for English to be the language of the proceedings. Respondent neither filed language submissions nor responded to the Complainant’s request. On September 18, 2013, Complainant filed an amended Complaint regarding Respondent’s identity. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on September 27, 2013.
The Center verified that the Complaint together with the amended Complaints 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 in both English and Japanese the Respondent of the Complaint, and the proceedings commenced on October 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2013. On October 11, 2013, the Center received an email communication from Respondent (the text of which is reproduced under Section 5.B. below). Respondent did not submit any formal response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on October 22, 2013.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on November 4, 2013. 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
Complainant including its affiliate companies and/or predecessors, has designed, manufactured, and sold writing instruments under the MONTBLANC brand since 1906. Complainant has also expanded its product line to include, inter alia, writing accessories, watches, leather pieces, jewelry, fragrance and eyewear. Complainant operates in more than 70 countries around the world. All genuine MONTBLANC products are distributed exclusively through an international network of authorized retailers, jewelers, and more than 360 boutiques.
Complainant owns trademark registrations as follows:
In the United States
Trademark: MONTBLANC
Registration number: 0776208
Registration date: September 1, 1964
Designated goods: Fountain pens, cases for fountain pens, ball points pens, ball point cartridges, ball point paste, mechanical pencils, lead for mechanical pencils
In Japan
Trademark: MONTBLANC
Registration number: 2721721
Registration date: May 23, 1997
Designated goods: Writing implements, leather pouches for writing implements, stationary and writing items
Trademark: MONTBLANC
Registration number: 4920238
Registration date: January 13, 2006
Designated goods: Fountain pens, roller balls and other ball-point pens, pencils, felt-tip pens, document markers
The disputed domain name was registered on May 9, 2013. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the registered trademark MONTBLANC in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and being used in bad faith by Respondent;
Complainant requests the transfer of the disputed domain name to itself. B. Respondent
Respondent did not reply to Complainant’s contentions. The Center received an informal email communication from Respondent in Japanese stating that: (i) Respondent obtained the disputed domain name in errors without being aware of the fact that the disputed domain name includes a brand name; and (ii) the disputed domain name was not necessary and thus Respondent wished to delete it. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
In view of Respondent’s failure to submit a response, the Panel decides this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true). A. The Language of Proceeding
The Registrar has informed the Center that the language of the Registration Agreement was Japanese. On September 17, 2013, the Center issued both in English and Japanese the Language of Proceeding Notification.
On the same date, Complainant submitted a request that English be the language of the proceeding because Respondent understands English as Respondent’s website is in English and directed to English-speaking customers.
Complainant alleges that it is not able to communicate in Japanese, and therefore, if it were to submit all the documents in Japanese, the administrative proceeding would be unduly delayed, and Complainant would have to incur substantial expenses for translation.
Respondent did not object to Complaint’s request.
In consideration of all above circumstances and in the interest of fairness to both parties, pursuant to paragraph 11(a) of the Rules, the Panel determines that the language requirement has been satisfied through the use of Japanese in the Notification of Complaint and Commencement of Administrative Proceeding, and, absent a Response, determines that the decision is in English. (See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L.,WIPO Case No. DRO2006-0001). B. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the MONTBLANC mark, the use and registration of which predate Respondent’s registration of the disputed domain name.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s MONTBLANC mark, pointing out that the disputed domain name includes the generic and descriptive wording “stylos” and “pas cher” (meaning “pens” and “cheap” in French). Complainant asserts that such terms do not alleviate confusion similarity.
The Panel agrees with the Complainant’s contentions and finds that the disputed domain name is confusingly similar to the Complainant’s mark MONTBLANC especially in that it incorporates Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.”
The Panel also finds that the “.com” is a descriptive suffix commonly used as a generic Top-Level Domain (gTLD), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the suffix “.com” does not have any impact on the avoidance of confusion. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.”
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. C. Rights or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. It avers that Respondent, who is currently hiding behind the privacy services of MuuMuuDomain and uses the e-mail privacy@[...], has never been commonly known by way of the MONTBLANC marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known. The Panel finds that on the record, it has been established that Respondent has not been commonly known by the disputed domain name, and thus the Panel does not recognize that Respondent has rights or legitimate interests in the disputed domain name. See Harry Winston, Inc. and Harry Winston, S.A. v.h,WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to Policy paragraph 4(c) (ii) in the domain name where there was no evidence that Respondent was commonly known by the domain name); see also Alstom v.Yulei,WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the disputed domain name where there is no indication that respondent is commonly known by the domain name and/or is using the domain name in connection with a bona fide offering of goods or services).
Complainant further asserts that Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name and that Respondent is using the disputed domain name as a commercial search engine to advertise links to third-party websites offering for sale products, including counterfeit knock offs of Complainant’s own products. The Panel finds that such use does not constitute a bona fide or legitimate business use. See America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which confusingly similar to the complainant’s mark and for the same business); see also MasterCard International Incorporated v. DL Webb,WIPO Case No. D2008-0324 (finding that respondent’s use of the domain name in connection with a website which contains links to other websites offering services of complainant and complainant’s competitors did not constitute use of the domain name in connection with a bona fide offering of goods or services).
Complainant also contends that it has not granted Respondent any license, permission, or authorization by which it could own or use nay domain name registrations which are confusingly similar to any of the MONTBLANC marks. The Panel agrees with Complainant, and thus finds that Respondent lacks rights or legitimate interests in the disputed domain name. See Nokia Corp.v. a.k.a IBCC,WIPO Case No. D2000-0102 (finding absence of license permitting to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).
Under the circumstance that Respondent did not reply, the Panel finds that Complainant has proven a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; see also Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
Given the above circumstances, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name, and the second element of the Policy has been established. D. Registered and Used in Bad Faith
The Panel recognizes that Complainant including its affiliate companies and/or predecessors, has designed, manufactured, and sold writing instruments under the MONTBLANC brand since 1906. Complainant has also expanded its product line to include, inter alia, writing accessories, watches, leather pieces, jewelry, fragrance and eyewear. Complainant operates in more than 70 countries around the world. All genuine MONTBLANC products are distributed exclusively through an international network of authorized retailers, jewelers, and more than 360 boutiques. Complainant contends that due to the extensive use and registration of the MONTBLANC marks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention.
The Panel notes that the notoriety of the Complainant’s trademark in respect of its various goods is such that a prima facie presumption is raised that Respondent registered the disputed domain name for the purpose of using it in some way to attract for commercial gain users to its web site by creating a likelihood of confusion with Complainant’s trademark.
The Panel finds that Respondent must have been aware of the existence of Complainant and its trademark MONTBLANC at the time of registering the disputed domain name due to the following facts:
i) the well-known reputation of Complainant and its trademark; and
ii) the website at the disputed domain name contains a list of links to third-party sites offering for sale possible counterfeit knock offs of Complainant’s own products.
See Nokia Corp.v. Private, WIPO Case No. D2000-1271 (finding bad faith registration and use pursuant to Policy paragraph 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
In addition, the Panel recognizes that the disputed domain name resolves to a website with links to third-party businesses that offer products in competition with those offered under the MONTBLANC marks. The Panel finds that such activities are disruptive to Complainant’s business and therefore conclusive evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iii). See S.A.S. Jean Cassegrain v. Yeon-Gu Kim,WIPO Case No. D2005-0275 (finding that respondent’s offer to sell competing products on the website identified by the contested domain name evidenced bad faith in respondent’s conduct; see also Paul Barnett Puckett, Individually and d/b/a Nature’s Window v. Christopher D. Miller,WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy paragraph 4(b)(iii)).
For all of the above considerations, the Panel infers that Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites, making them believe that the websites behind those links are associated with or recommended by Complainant. Respondent is therefore illegitimately capitalizing on the goodwill of Complainant’s mark.
As such, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith. 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 Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: November 18, 2013
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