The Complainant is Moleskine S.p.A. (formerly Moleskine S.r.l.) of Milano, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
The Respondent is Pen City Pty Ltd of Melbourne, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with MYOB Australia E1 Pty Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2012. On November 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2012, 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.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 December 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on January 17, 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.
The Panel has reviewed the record and finds that the Center has adequately discharged its responsibility to contact the Respondent by reasonable means. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. 4. Factual Background
The Complainant operates a business selling notebooks, paper and non-paper products in more than 48 countries. The Complainant holds registrations for the MOLESKINE trademark and variations of it in numerous countries including Australia, which it uses to designate goods in class 16 including paper, cardboard and goods made from these not included in other classes such as printed matter; bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' supplies; paintbrushes, typewriters and office articles (except furniture), instructional or teaching equipment (excluding apparatus), plastic materials for packaging (not included in other classes), printer's type, and printing blocks. The Australian trademark registration for goods in class 16 has been in effect since 2002 and for goods in classes 9, 11, 14, 18, 20, 25 and 41 has been registered since February 2010.
The Complainant conducts business on the Internet using numerous domain names containing the word “moleskine” including with a notebooks, paper and non-paper goods business website resolving from that domain name. The Complainant owns several domain names comprising or containing the word “moleskine”.
The Disputed Domain Name was registered on November 25, 2007, does not resolve to a webpage and appears to be unused. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark MOLESKINE in various countries, including Australia, as prima facie evidence of ownership.
The Complainant submits that the mark MOLESKINE is well-known, providing evidence from various sources of its wide recognition. The Complainant submits that its rights in that mark predate the registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the MOLESKINE trademark and that the similarity is not removed by the addition of the country code level domain suffix “.”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use, which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by incorporating the Complainant’s MOLESKINE mark in the Disputed Domain Name then passively holding the Disputed Domain Name, without use in commerce, may support a holding of use in bad faith (citing: Recordati S.P.A. v. Domain Name Clearing Company,WIPO Case No. D2000-0194). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered or subsequently used in bad faith.
Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel finds that cases decided under the UDRP can be of assistance in applying the Policy to this case. A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark MOLESKINE in Australia and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark MOLESKINE in the Respondent’s relevant jurisdiction, Australia, pursuant to Australian Trademark Registration No. 952200 (based on International registration No.80025) from December 4, 2002 and Australian Trademark Registration No. 1374432 (based on International Registration : 1043501) which was registered in February 2010. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark MOLESKINE.
The Panel also finds that the mark MOLESKINE is well-known based on the evidence presented and assessed by the Panel, demonstrating the mark as being recognized globally, even in countries where no trademark registration is in place.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the MOLESKINE trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) followed by the country code level domain suffix “.”.
It is well-established that the “.” country code level designation used as part of the address may be disregarded in the determination of similarity (see: BT Financial Group Pty Limited v. Basketball Times Pty Ltd,WIPO Case No. DAU2004 0001; Telstra Corporation Limited v. CQ Media Group Pty Ltd,WIPO Case No. DAU2008-0023). The relevant comparison to be made is with the second level portion of the Disputed Domain Name: “moleskine”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
In considering the elements of paragraph 4(a)(i) of the Policy, whether the Disputed Domain Name resolves to a website or not is irrelevant. In The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven,WIPO Case No. DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the Disputed Domain Name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.”
Further, unlike the UDRP, the Policy extends protection expressly to “names” as well as trademark rights. For the purposes of the Policy, a “name” is defined by note 2 as referring to:
(a) the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or
(b) the complainant’s personal name.
The name of the Complainant Moleskine S.p.A. (formerly Moleskine S.r.l.), registered with IP Australia as the owner of the MOLESKINE trademarks, comprises the trademark and three letters that connote its legal structure.
The Panel finds that on a side by side comparison, or relying on imperfect recollection, a person seeing the Disputed Domain Name would be caused to wonder if there was an association with the Complainant’s trademark rights. The Disputed Domain Name is therefore confusingly similar to the MOLESKINE trademark on that basis also.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists (illustratively rather than exhaustively) the ways that a respondent may demonstrate rights or legitimate interests in a domain name:
(i) before any notice to [the Respondent] of the subject matter of the dispute, [the Respondent’s] bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that [the Respondent has] acquired for the purpose of selling, renting or otherwise transferring); or
(ii) [the Respondent has] (as an individual, business, or other organisation) been commonly known by the domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) paragraph 2.1).
For the purposes of the Policy, auDA has determined that “rights or legitimate interests in respect of the domain name” are not established merely by a registrar’s determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration: (see Note 2 to the Policy).
As to (i), the Disputed Domain Name is not being used to resolve to a webpage. There is no evidence that the Respondent has made any use of, nor that it has made demonstrable preparations to use, the Disputed Domain Name in connection with an offering of goods and services (not being the offering of a domain name that the Respondent has acquired for the purpose of selling, renting or otherwise transferring). On this point, the Respondent satisfies none of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 though to be fair that case is of limited utility in circumstances such as these where there is no relationship between the parties.
Nor is there any evidence that the Respondent satisfies (ii) or (iii) above. The Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use any of the Complainant’s trademarks nor to apply for or use any domain name incorporating these marks. In these circumstances, the Complainant has made out a prima facie case.
The fact that the Respondent chose to register a domain name that wholly incorporates a mark owned by the Complainant calls for an explanation, which the Respondent could have given in a Response. By its failure to submit a Response, the Respondent has not rebutted the prima facie case. In the circumstances, the Panel can find no evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name.
The Panel finds for the Complainant on the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name had been registered or used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(i) circumstances indicating that [the Respondent] registered or [the Respondent] has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the Respondent] has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) [the Respondent] has registered the domain name primarily for the purpose of disrupting the business of another person; or
(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online locations, by creating a likelihood of confusion with [the Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location.”
The examples of bad faith registration and use in the Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The unlikelihood that registering a domain name comprising only of the Complainant’s trademarks and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see, Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, Webreg,WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The trademark MOLESKINE is so widely known globally for notebooks and paper products that it is inconceivable that the Respondent might have registered this domain name without knowing of the Complainant’s trademark. This finding is supported by the fact that the Respondent operates a website that sells MOLESKINE brand diaries.1
Moreover, the Panel has considered whether the apparent absence of use of the Disputed Domain Name can absolve the Respondent from a finding of bad faith and whether passive holding combined and cumulated with the well-known character of the Complainant’s mark amounts to bad faith. It is the Complainant’s position that it does, citing Recordati S.P.A. v. Domain Name Clearing Company,WIPO Case No. D2000-0194 and Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615 amongst other cases. As the Recordati case acknowledges, “passive holding of the domain name, without use in commerce, may support a holding of use in bad faith” (citing Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003). In Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615, the panel observed: “there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant’s rights”. Every schoolboy knows that the role of a registered trademark is to serve its owner rather than a third party: only the owner is entitled to decide whether (and on what terms) to share it or not and to decide how its business will exploit those rights.
This Panel finds that the Respondent has taken the well-known trademark MOLESKINE and incorporated it, into the Disputed Domain Name without the Complainant’s consent or authorization, primarily for the purpose of disrupting the business of a competitor.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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.
Nicholas Weston
Sole Panelist
Date: January 31, 2013
1
Full & Egal Universal Law Academy