The Complainant is Montblanc-Simplo GmbH, Germany, represented by SILKA Law AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Vivek Guru, India. 2. The Domain Names and Registrar
The disputed domain names and (“Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2019. On July 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 17, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on August 19, 2019. 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 date of the disputed domain name registration was confirmed by the Registrar to be March 25, 2019, and the disputed domain name was confirmed by the Registrar to be March 28, 2019.
The trademark MONTBLANC is protected as a registered trademark in multiple jurisdictions worldwide. The Complainant provided evidence of multiple trademark registrations for the mark MONTBLANC including, inter alia, International Registration No. 1363473 (registered on July 11, 2017), and United States Trademark Registration No. 2820561 (registered on March 9, 2004) for both logo and word marks that predate the date of the Domain Names registrations for a variety of luxury goods.
The disputed domain name resolves to a page with a “404” error message, and the website currently appears to be inactive.
The disputed domain name resolves to an active webpage that uses the Complainant’s trademarks and logos and promotes the sale of, inter alia, writing instruments. 5. Parties’ Contentions A. Complainant
The Complainant is a company incorporated in Hamburg, Germany and is one of the world’s leading brands of luxury writing instruments, watches, jewelry, leather goods, fragrances and eyewear. The Complainant has designed, manufactured, and sold sophisticated, luxury writing instruments under the MONTBLANC brand since 1906, and it operates in more than seventy countries around the world and has more than 360 boutiques.
The Complainant has also registered several domain names under different Top-Level Domains containing the term MONTBLANC see for example, (registered 1995), (registered 2014), and (registered 1997).
The Domain Names incorporate the Complainant’s trademark MONTBLANC in its entirety which is instantly recognizable within the Domain Names together with the descriptive word “official”. One domain name has also an additional “s” in its domain name. The mere addition of the descriptive term “official” as a suffix to the Complainant’s mark does not distinguish the Domain Names from the Complainant’s trademark. By contrast, it may increase the likelihood of confusion. Internet users who visit the website at the Domain Names are likely to be confused and may falsely believe that it is an official website operated by the Complainant for selling MONTBLANC-branded products. The addition of the generic Top-Level Domain (gTLD) “.com” does not add any distinctiveness to the Domain Names. The Domain Names should be considered as confusingly to the registered trademark MONTBLANC.
Further, the Complainant argues that there is no bona fide offering of goods or services where the Domain Names incorporate a trademark which is not owned by the Respondent, nor is the Respondent known by the name “MONTBLANC”. The combination with “official” strengthens the impression of a legitimate connection between the website to which the Domain Names resolves and the Complainant. The tendency of the Domain Names is to induce consumers into visiting the related website under the misapprehension that the websites are endorsed by the Complainant where the Complainant offers its accessories.
The Complaint further contends that the Complainant’s logo is frequently displayed and there is a “promo code” offer which looks authentic. The potential customer can also create an account on the website where sensitive information is obtained such as user name and password. Such request for sensitive information on a site which the Complainant does not control is not only a security threat but can also cause bad-will if the information obtained is used in a manner which does not rhyme with the Complainant’s security measures. In the present case, the Domain Name resolves to a page that invites visitors to enter their name and email address in an attempt to phish for personal information, thus the Domain Names are not used for any legitimate use.
The Domain Name is currently not resolving to an active website. Looking at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3. Here, given the apparently widespread reputation that the Complainant enjoys in the MONTBLANC trademark and the Respondent’s failure to provide any evidence of actual or contemplated good-faith use, application of the passive holding doctrine is appropriate.
The Complainant’s trademarks and domain names predate the registration of the Domain Names. The active business presence of the Complainant also shows that it seems to be unlikely that the Respondent was not aware of the unlawful registration of the Domain Names. It is evident from the screen shots that the Respondent only registered the Domain Names due to the fame of the Complainant’s trademarks. That the Respondent is passively holding one of the Domain Names does not prevent a finding of bad faith use. The Respondent must have been aware that Internet users may reasonably believe that the Domain Names and resolving website would be owned, controlled, established or otherwise associated with the Complainant. Moreover, the Respondent’s holding of the Domain Names prevents the Complainant from reflecting its mark in said Domain Names.
The Complainant has not authorized any activities by the Respondent, nor any use of its trademarks thereby. The combination of the Complainant’s trademark with the carefully selected term “official” in any case indicates that the Respondent was fully cognizant of the Complainant’s trademark and its commercial standing at the time of registration and subsequent use of the Domain Names. Relying on a misleading impression of a legitimate association between the Domain Names and the Complainant for financial gain offering for sale presumably counterfeit copies of the Complainant’s products and is misleading consumers into believing that they are genuine whereas in reality no such connection exists, amounts to a use in bad faith of the Domain Names.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark MONTBLANC in respect of luxury goods. The Domain Names are confusingly similar to the trademark owned by the Complainant. The addition of the term “official” and the letter “s” does not prevent a finding of confusing similarity. Therefore, the Domain Names could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith. That continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registrations and use of the Domain Names constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent have no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names has been registered and are used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for MONTBLANC and considers the mark to be well-known. The Panel finds that the Domain Names are confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the term “official” and the letter “s” to the Domain Names does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademark and it suggests the offer of the Complainant’s products online. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that they are not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness and fame of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademark MONTBLANC and uses it for the purpose of misleading and diverting Internet traffic.
The mere addition of the descriptive term “official” as a suffix to the Complainant’s mark does not distinguish the Domain Names from the Complainant’s trademark. The Panel agrees that the term increases the likelihood of confusion and belief that it is an official website operated by the Complainant for selling MONTBLANC-branded products. This finding is consistent with Montblanc-Simplo G.m.b.H v. Lin Mingshun,WIPO Case No. D2013-0855, where the panel held that by adding the term official it did not seem to eliminate the identity or at least the similarity between the Complainant’s registered trademark and the disputed domain name.
The Panel finds that this is a classic example of the unfortunate fraudulent and opportunistic registrations that the UDRP is intended to address, and finds that the Respondent is using the Domain Names opportunistically to benefit financially from the Complainant’s trademark. That one of the two Domain Names resolves to an error page and the other has blatant abusive use of the Complainant’s marks to collect private information as well as to offer writing instruments for financial gain does not prevent a finding of bad faith use and registration for both Domain Names.
The Panel finds that the Respondent’s use of the Domain Name creates confusion as to the source of the Domain Names in an attempt to trade on the goodwill associated with the Complainant’s trademark. A respondent’s use of a complainant’s mark —for said respondent’s commercial benefit— to attract Internet users otherwise seeking said complainant evinces a finding of bad faith per Policy paragraph 4(b)(iv) and is consistent in this case. See WIPO Overview 3.0 at section 3.1.4 which states:
“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark:
(i) actual confusion,
(ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful,
(iii) the lack of a respondent’s own rights to or legitimate interests in a domain name,
(iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer,
(v) redirecting the domain name to the complainant’s (or a competitor’s) website, and
(vi) absence of any conceivable good faith use.”
With respect to the Domain Name the Panel finds that passive holding does not prevent a finding of bad faith registration and use.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant, the original proxy registration of the Domain Names to mask the Respondent’s identity, and the blatantly abusive use of the Complainant’s trademarks to apparently sell the Complainant’s goods and to obtain private information from users, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) 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 both Domain Names and be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: August 20, 2019
Full & Egal Universal Law Academy