Complainant is Lange Uhren GmbH of Glashütte, Germany, represented by Winston & Strawn LLP, United States of America.
Respondent is Dvlpmnt, Ltd. of Charlestown, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with DNC Holdings, Inc. (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 October 1, 2013, the Registrar 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, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 29, 2013.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 5, 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, Lange Uhren GmbH, is a provider of luxury watches marketed and sold under the name “A. Lange & Söhne”. Complainant is the holder of a number of trademarks consisting of, or including A. LANGE & SÖHNE, registered in various countries. Complainant is the holder of inter alia the following trademarks:
- A. LANGE & SOHNE (word mark), registered in class 14 with the United States Patent and Trademark Office under number 2,430,848 on February 27, 2001 and duly renewed;
- A. LANGE & SÖHNE (+ design), registered as an International Trademark which designates various countries including Japan, in class 14 under number 835903 on September 15, 2004.
According to the WhoIs database, the registrant of the disputed domain name is Dvlpmnt, Ltd., Respondent in this case. According to the information provided by the Registrar, the disputed domain name was registered on February 25, 2004.
Respondent has been using the disputed domain name to refer to a parking page containing sponsored links. Respondent did not reply to the Complaint. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with any legitimate use. Also, according to Complainant, Respondent has not been commonly known by the disputed domain name.
Finally, Complainant considers that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the 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.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and previous UDRP decisions, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) The disputed domain name 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a A. LANGE & SÖHNE trademark in which Complainant has rights. The trademark has been registered and used in various countries, including in Japan and in Germany.
The Panel considers the disputed domain name to be composed of a name that is confusingly similar to the A. LANGE & SÖHNE trademark and the geographic name “Japan”. The Panel is of the opinion that the mere omission of the non-critical elements (the “A.”, the umlaut and the ampersand) and the addition of non-distinctive text to Complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scot banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words ““mail”, “post”, “fan” and “top50” to the word “pokemon” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the mark POKEMON; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKEMON marks; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal on Respondent. (See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not apparently been commonly known by the disputed domain name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “making a legitimate noncommercial 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.” Policy, paragraph 4(c)(iii). First, Respondent obviously is making “commercial gain” by virtue of the pay-per click (PPC) links on the page. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the website linked to the disputed domain name because they believe it to be associated with Complainant. Further, Respondent’s use of the disputed domain name to resolve to a PPC parking page, containing sponsored links, cannot be considered “fair” on the facts of this case. Registering a domain name for such pages might be fair, and hence legitimate, if the name was being used for its generic or descriptive value and if the sponsored links on the page were related to that generic or descriptive value. See, e.g., Landmark Group v. DigiM, L.P., NAF Claim No. 0285459 (legitimate interest “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (“A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant […]. It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered.”); Havanna S.A. v. Brendan Hight, Mdnh Inc,WIPO Case No. D2010-1652 (“Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill.”). However, it is not legitimate to register a domain name and use it for a PPC parking page where the domain name is a trademark and has no dictionary or descriptive meaning, and where the sponsored links have no relationship to any alleged descriptive meaning of the domain name. See Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598, mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; Gerber Products Company v. LaPorte Holdings,WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailP,WIPO Case No. D2006-0006; and The Knot, Inc. v. In Knot we Trust LTD,WIPO Case No. D2006-0340.
In the instant case, there appears to be no dictionary meaning for the term “langesöhne-japan”. To the contrary, the domain name is confusingly similar to a known luxury trademark. The value of the disputed domain name to Respondent is, therefore, its value as a trademark referring to Complainant. By generating automated links at the website under the disputed domain name, the Panel concludes that Respondent is taking advantage of Complainant’s trademark, since Internet users looking for Complainant may land on a PPC parking page which has no link whatsoever with Complainant or its trademark.
Finally, Respondent did not reply to Complainant’s arguments and decided not to take part in the administrative proceedings. This is a further indication of the absence of rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the registration of the domain name primarily for the purpose of disrupting the business of a competitor and the use of the domain name with the intention to attract, for commercial gain, Internet users to a website 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 the website or location or of a product or service on the respondent’s website or location. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. (See, e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763).
In the present case, Respondent is using the disputed domain to publish a website advertising third party websites, some of which offer for sale products of Complainant’s competitors. In addition, Respondent has failed to respond to the Complaint, while it is inconceivable to this Panel that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name.
According to the Panel, this evidences bad faith registration and use pursuant to paragraphs 4(b)(iii) and (iv) of the Policy.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used 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.
Flip Jan Claude Petillion
Sole Panelist
Date: November 19, 2013
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