The Complainant is Montblanc-Simplo GmbH, Germany, represented by SILKA Law AB, Sweden.
The Respondent is Domains By Proxy, LLC, United States of America / SohoFifth Kapoor, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2019, 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 the Complainant on September 9, 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 amendment to the Complaint on September 10, 2019. The Center verified that the Complaint, together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint together with the amendment, and the proceedings commenced on September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019. The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on October 24, 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 Complainant, Montblanc-Simplo GmbH, is a company incorporated in Hamburg, Germany and one of the leading brands of luxury writing instruments, watches, jewelry, leather goods, fragrances, and eyewear. The Complainant owns several nominal and figurative trademark registrations of MONTBLANC in several countries, including the following: - International trademark MONTBLANC registration No. 1363639 (designated India) registered on July 14, 2017; - US trademark MONTBLANC registration No. 2820561 registered on March 9, 2004, among many others. The Complainant also owns several domain names, such as: The disputed domain name The Complainant claims to have designed, manufactured, and sold sophisticated writing instruments under the trademark MONTBLANC since 1906, and that it operates in more than seventy countries around the world and has more than 360 boutiques, which has made the MONTBLANC brand become prominent in all corners of the world. In essence, the Complainant claims that the disputed domain name More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and, nor is the Respondent affiliated to the Complainant who has not authorized the Respondent to use the trademark MONTBLANC. The combination of the Complainant’s trademark with the carefully selected geographic term “England” 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 disputed domain name. Relying on a misleading impression of legitimate association with the Complainant for financial gain offering for sale presumably counterfeit copies of the Complainant’s products and misleading consumers into believing that they are genuine whereas in reality no such connection exists, amounts to bad faith of the disputed domain name. Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar to a trade mark 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has proved that it has rights in the trademark MONTBLANC. The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In this case the disputed domain name As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark. Furthermore, as stated in section 1.8 of WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of a geographical term would not prevent a finding of confusing similarity under the first element. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to the trademark MONTBLANC in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The Complainant sustains that it has never granted the Respondent with the right to register and use the MONTBLANC trademark as a domain name. Previous panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0144. As further discussed under section C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather it is using the Complainant’s trademark without consent for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name resolves relates to the Complainant. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name that contains a third party’s trademark without authorization. The Respondent could not ignore the existence of the MONTBLANC trademark when it registered the disputed domain name on July 17, 2019, because MONTBLANC is the trademark of the Complainant which was extensively registered (including in India where the Respondent presumably is located) and used by the Complainant many years before that date. Therefore, it is difficult to conceive that any use of the disputed domain name would not be related by Internet users to the Complainant and its activities. This assumption is further proved by the fact that the disputed domain name entirely contains Complainant’s trademark MONTBLANC. The misappropriation of a well-known trademark as domain name by itself may constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor,WIPO Case No. D2010-1277, and Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556. In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating MONTBLANC was very likely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users to its own website. The inclusion of the geographical word “England” in the disputed domain name The site to which the disputed domain name resolves contains a “promo code” with a 60% discount for a MONTBLANC writing instrument, which would lead to think that very likely it is a counterfeit copy of the Complaint’s product. In conclusion, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith to confuse Internet users and thereby derive an illegal commercial benefit by taking advantage of the Complainant’s well-known trademark MONTBLANC as per paragraph 4(b)(iv) of the Policy.. Therefore, Complaint also succeeds on the third prong. 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 Miguel B. O’Farrell
Sole Panelist
Date: November 7, 2019
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