The Complainant is Staatliche Porzellan-Manufaktur Meissen GmbH of Meissen, Germany, represented by LS-IP Loth & Spuhler GbR Intellectual Property Law, Germany.
The Respondent is Mr. Sagiv Shats of Tel Aviv, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2013. On October 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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.
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 October 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on November 6, 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
The Complainant is the well-known manufacturer of MEISSEN porcelain and it or its predecessors have carried on business based in Germany since the eighteenth century. The Complainant owns numerous trade mark registrations in Germany and internationally comprising or containing the word “Meissen” but in particular has owned a registration for the MEISSEN word mark in Germany under number 949873 since 1972. The Complainant also owns a Community word mark registration for MEISSEN PORCELAIN under registration number 010295384. The Complainant also owns 330 domain names containing the word “meissen” including , and which resolve to its website.
The Respondent registered the disputed domain name on April 6, 2013 which resolves automatically to the domain name and at which the Respondent operates an on-line shop selling porcelain. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name wholly incorporates and is confusingly similar to its MEISSEN word/figurative mark registration, the word “porcelain” being a generic non-distinctive term. Further, it submits that the disputed domain name is identical to its MEISSEN PORCELAIN mark as noted above.
As far as rights or legitimate interests are concerned, the Complainant submits that it has not authorised the Respondent to use its MEISSEN trade mark and neither is the Respondent commonly known by that name. Nor according to the Complainant does the Respondent engage in business activities under that name. It says that the Respondent is not making a noncommercial or fair use of the disputed domain name and rather is using it to designate porcelain which is not manufactured by the Complainant and which only results in confusion in relevant trade circles.
Due to the degree of renown attaching to the MEISSEN mark which the Complainant submits qualifies it as a famous or well-known mark in relation to its porcelain products, the Complainant must have known of the Complainant’s rights and it would therefore be impossible to conceive of any circumstances in which the Respondent could legitimately have chosen to use the disputed domain name. The Complainant submits that the Respondent is using the disputed domain to confuse Internet users into visiting its website at which it falsely suggests that the website is an official or endorsed site of the Complainant. In other words according to the Complainant it is trading off goodwill attaching to the Complainant’s marks for its own profit which amounts to use in bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a registered German trade mark for the MEISSEN word and figurative mark under number 949873 which consists of the MEISSEN mark written in fancy script. It also owns a Community word mark registration for MEISSEN PORCELAIN under registration number 010295384. The Panel finds that the most prominent element of this mark is the word “Meissen” and the only difference between this and the substantive element of the disputed domain name is the word “porcelain” which is a commonly used word in the English language and does not distinguish the disputed domain name from the MEISSEN mark. Consequently the Panel finds that the disputed domain name is confusingly similar to the Complainant’s MEISSEN mark. Further the disputed domain name is confusingly similar to the Complainant’s MEISSEN PORCELAIN mark as it only differs from this mark by the absence of a hyphen between the two words. As a result, the Panel finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorised the Respondent to use its mark and there is no evidence before the Panel to suggest that the Respondent was ever an authorised dealer or distributor of the Complainant’s products.
The Respondent is using the disputed domain name to resolve to a website at at which a range of porcelain brands (whether new or old), antiquities and collectibles are available for sale including various pieces of what are advertised as antique or second hand MEISSEN porcelain of the Complainant’s manufacture. It appears to the Panel based on the contact information on the website that this website is most likely connected with the Respondent and therefore is not merely a “pay per click site”.
Based on the well-established principles from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”) and the trends in panel decisions in re-seller cases as set out at section 2.3 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the use by a re-seller the use of the disputed domain name in these circumstances will only be bona fide where no other competing products are sold at the website to which the disputed domain name resolves. This approach is based on the premise that otherwise a trade mark could be used in a domain name in order to engage in bait selling.
The Panel has reviewed the website in this case and finds that there are various other brands of porcelain available, both new and antique. The website appears to use the Complainant’s mark next to individual entries for the MEISSEN products available for sale and there is no apparent disclaimer of any relationship or affiliation with the Complainant. In these circumstances the Panel finds that consistent with other decisions in broadly similar circumstances, such as in Daimler AG v. William Wood, WIPO Case No. D2008-1712, the use of the disputed domain name in this way is not legitimate because it makes an unauthorised use of the Complainant’s trade mark and the goodwill attaching to it to sell a range of competing products.
Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was only registered on April 6, 2013. Considering the degree of renown attaching to the Complainant’s mark and the range of porcelain products sold on the website to which the disputed domain name resolves, including antique examples of the Complainant’s manufacture, there is no question but that the Respondent was aware of the Complainant’s trade mark rights. The Panel infers that the Complainant chose the disputed domain name purposefully in order to attract Internet users to the website to which it resolves.
Under paragraph 4(b)(iv) of the Policy, bad faith registration and use of a domain name is found where a respondent has used the domain name intentionally in order to attract Internet users for commercial gain to a web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site. The Panel finds that in case and as already noted under the second element above that these circumstances have been made out. The Respondent has used the disputed domain name to attract Internet users interested in MEISSEN products to the website to which the disputed domain name resolves for the purpose of selling not only antique MEISSEN pieces but a broad range of competing new and antique products. This does not constitute a legitimate use of the disputed domain name and amounts to bad faith use.
As a result, the Panel finds that the disputed domain name was both registered and used in bad faith and the Complaint succeeds under 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.
Alistair Payne
Sole Panelist
Date: November 11, 2013
Full & Egal Universal Law Academy