The Complainant is Staatliche Porzellan-Manufaktur of Meissen, Germany, represented by LS-IP Loth & Spuhler GbR Intellectual Property Law, Germany.
The Respondent is HyoJung Park of GimHae-Shi, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with GetYourDotN Inc. aka 3349608 Canada Inc. dba GetYourDotI Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2013, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 3, 2014.
On January 1, 2014, the Center received an email communication from the Respondent. On January 3, 2014, the Center informed the Respondent regarding the proceeding and how it could file a response to the Complaint.
On January 17, 2014, the Center sent an email communication to the Registrar requesting the Registrar to clarify what appeared to be a change of registrar after filing of the Complaint. On the same day the Registrar replied and indicated that “[t]he domain is under registrar lock and under our registrars. Whenever a domain is renewed, it is consolidated to our primary registrar 1MoreName. No change of ownership has occurred.”
The Center verified that the Complaint together with the amended 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 January 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2014. The Respondent did not submit any further formal Response. Accordingly, the Center notified the commencement of the Panel appointment process on February 11, 2014.
The Center appointed George R. F. Souter as the sole panelist in this matter on February 13, 2014. 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 a famous manufacturer of porcelain, with origins dating back to the early 18th century.
The Panel has been supplied with details of extensive registration of its MEISSEN trademark, including German registration No. 1179748 and European Community registration No. 003743689, both of which specifically include “coffee services” in their specification of goods. The Panel has also been supplied with copious evidence of the renown of the Complainant’s MEISSEN trademark.
The disputed domain name was registered on January 1, 2013. The disputed domain name resolves to a webpage with sponsored links mainly related to the Complainant’s field of business. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its MEISSEN trademark.
The Complainant further alleges that the Respondent lacks rights or legitimate interests in the disputed domain name; in particular that the Respondent has no rights to the trademark MEISSEN, that the Complainant has never licensed or otherwise permitted the Respondent to use its MEISSEN trademark or to include it in a domain name, and that the Respondent is not making any noncommercial or fair use of the disputed domain name.
The Complainant further alleges that the domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant or be cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark 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. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trademark and a domain name. The Panel agrees with this view and considers the the gTLD “.com” indicator to be irrelevant in the present case.
The Panel recognizes the well-known nature of the Complainant’s MEISSEN trademark, and regards it as the predominant element of the disputed domain name. The disputed domain name differs from the Complainant’s MEISSEN trademark only by the addition of the term “cafe”. It is well-established in prior decisions under the UDRP that the mere addition to a well-known trademark of a descriptive or non-distinctive element is insufficient to avoid a finding of confusing similarity. The Panel finds that, in the context of the present case, the word “cafe” is a descriptive or non-distinctive element, and, accordingly finds that the Complainant has satisfied the provision of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. The Respondent did not avail itself of the opportunity to be heard in these proceedings. The Panel, therefore, accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that the Respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case in which the disputed domain name contains the Complainant’s well-known MEISSEN trademark in its entirety and was registered many years after the Complainant’s trademarks were registered as making it appropriate for the Panel to find that the disputed domain name was registered in bad faith and the Panel so finds.
The Respondent’s use of the disputed domain name for a website with sponsored links mainly related to the Complainant’s field of business constitutes bad faith registration and use under paragraph 4(b)(iv) 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.
George R. F. Souter
Sole Panelist
Date: February 27, 2014
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