ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Montblanc-Simplo GMbH, and Compagnie Financière Richemont SA v. Client Care, Web Commerce Communications Limited Case No. D2024-1322 1. The Parties The Complainant is Montblanc-Simplo GMbH, Germany, and Compagnie Financière Richemont SA, Switzerland, represented by Corsearch, United States of America (“US”). The Respondent is Client Care, Web Commerce Communications Limited, Malaysia. 2. The Domain Names and Registrar The disputed domain names , , , , , , , , , , , , , , , ,, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2024. On March 28, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 29, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names
page 2 which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2024, 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 April 7, 2024. 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 April 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2024. The Center appointed Knud Wallberg as the sole panelist in this matter on May 13, 2024. 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 Complainants are Montblanc-Simplo GmbH and Compagnie Financiere Richemont SA, manufacturing companies of luxury goods, with Compagnie Financiere Richemont SA being the parent company of Montblanc-Simplo GmbH. The Complainants provide goods and services for the luxury market, such as watches, writing instruments, jewelry, and leather goods. The Complainant Montblanc-Simplo GmbH owns a wide portfolio of trademark registrations internationally containing the word mark MONTBLANC including US registration no. 0776208, MONTBLANC US registered on September 1, 1964, for goods in class 16, German registration no. 132223, MONTBLANC registered on July 8, 1910, for goods in class 16 and International Registration no. 524326 MONTBLANC registered on June 16, 1988, for goods in class 16. The disputed domain names were registered on 3 different dates in August and September 2023. Most of the 51 domain names resolve to a similar active webpage which contains the Complainants’ trademark MONTBLANC and imagery of original products provided by the Complainants. The websites of 8 of the disputed domain names display the text “This site can’t be reached”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the Disputed Domain Names are confusingly similar to the Complainant-s registered trademark MONTBLANC with the mere addition of a geographical term, and the generic Top-Level domain (gTLD) “.com”. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain names for purposes of Paragraph 4(c) of the Policy. The Respondent is not commonly known by the disputed domain names, nor has it any intellectual property rights in the disputed domain names. The Respondent is not affiliated with the Complainants nor have the Complainants authorized or licensed the Respondent to use the
page 3 MONTBLANC trademark. The Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use since the resolving websites contain prominent unauthorized uses of the MONTBLANC trademark. The Complainant finally contends that the Respondent has registered and is using the disputed domain names in bad faith. Given the world-wide fame of the Complainant and its marks, and the fact that the disputed domain names incorporate the mark verbatim, and that the active websites display the MONTBLANC, Montblanc Design logo and copyrighted images, it is obvious that the Respondent had actual knowledge of the Complainant and its marks when he registered the disputed domain names. The Complainant contends that the Respondent is commercially gaining from the sales of pens and accessories being sold on the websites which is evidence of bad faith use of these disputed domain names. Regarding those of the disputed domain names that resolve to inactive websites the Complainant contends that it is a recognized principle under the UDRP that using a disputed domain name to host an inactive website is also evidence of bad faith use and registration. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within all of the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, country names, and for a few of the disputed domain names the term “shop” and “tienda”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
page 4 proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Panel further notes that the composition of the disputed domain names carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has used most of the disputed domain names to intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant’s mark. As far as those domain names that appear not to be used actively, are concerned. Panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look 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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case including the registration of a large number of similar disputed domain names that are used actively, the passive holding of some of the disputed domain names does not prevent a finding of bad faith under the Policy also for these disputed domain names. 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 names , , , , , , , , , , , , , , , ,, , , , , , , , , , , , , , , ,
page 5 , , , , , , , , , , , , , , , , , , and be transferred to the Complainant. /Knud Wallberg/ Knud Wallberg Sole Panelist Date: May 27, 2024
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