WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Richemont International Ltd. v. Brasserie Du Mont Blanc

Case No. DBIZ2002-00276

 

1. The Parties

The Complainant is Richemont International Limited, a corporation organized under the laws of the United Kingdom, having its principal place of business at 15 Hill Street, London W1J 5QT, United Kingdom, and represented by Ms. Jane Schurtz-Taylor ("Complainant").

The Respondent is Brasserie Distillerie Du Mont Blanc, A company organized under the laws of France, having its principal place of business at 15, Place de la Mairie, 74310 Les Houches, France ("Respondent").

 

2. The Domain Name and Registrar

The domain name at issue is <montblanc.biz>.

The Registrar is Namebay Sam, located at 30, Boulevard Princesse Charlotte, MC-98000 Monaco ("the Registrar").

 

3. Procedural History

The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy for .biz (the "STOP"), the Rules for Start-up Trademark Opposition Policy for .biz (the "STOP Rules"), adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules").

The Complaint was received by e-mail and fax by the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2002. A hard copy of the Complaint was received by the Center on June 24, 2002.

On June 21, 2002, the Center sent an Acknowledgement of Receipt of Complaint to Complainant.

On July 8, 2002, the Center sent a Request for Registrar Verification to the Registrar. The Request was resent on July 11, 2002. The Registrar emailed its reply to the Center on July 17, 2002.

On July 18, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent, setting a deadline of August 7, 2002, for Respondent to submit a response to the Complaint.

On August 8, 2002, the Center sent a Notification of Respondent Default to Respondent.

On August 14, 2002, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to parties, in which Mr. Wolter Wefers Bettink was appointed as Sole Panelist.

 

4. Factual Background

Complainant has filed an intellectual property claim ("IP Claim") pursuant to the instructions and the format provided by NeuLevel.

On March 27, 2002, Respondent registered the domain name <montblanc.biz>.

After this registration, NeuLevel notified Complainant that Respondent had registered the domain name <montblanc.biz> and informed Complainant that it was entitled to commence a STOP proceeding against Respondent. On June 21, 2002, Complainant filed a STOP Complaint pursuant to the Start-up Trademark Opposition Policy.

 

5. Partiesí Contentions

Complainant

Complainant has registered the trademark MONTBLANC in more than 150 countries. The trademark MONTBLANC has been used continuously since 1908, most notably in respect of writing instruments, but also for other luxury goods including eyewear, menís jewelry, leather items, stationery and perfume. The trademark MONTBLANC is a well-known mark within the meaning of article 6bis of the Paris Convention for the Protection of Intellectual Property.

Respondent has registered the domain name <montblanc.biz> which is identical to Complainantís trademark MONTBLANC.

Respondent has no rights or legitimate interests in the domain name at issue, other than as an element of its recently registered business name (since 1999). According to Complainant, Respondent does not own an identical trademark or company name.

Respondent has the obligation to determine whether its domain name registration infringes or violates a third partyís rights. Respondent could not possibly have believed that, in view of the fact that the MONTBLANC trademark is well-known worldwide, it would not violate any third party rights. Furthermore, Respondent could equally have registered as a domain name the company name or other trade name to which it is entitled. This behaviour constitutes bad faith on the part of Respondent.

According to Complainant, Respondentís registration of the <montblanc.biz> domain name dilutes the distinctive quality of the trademark MONTBLANC, thereby significantly reducing its strength and value and tarnishes the excellent image and reputation the MONTBLANC name has created and earned over a period of more than nine decades.

Complainant and its affiliated companies have registered over 117 domain names containing the element MONTBLANC to protect its well-known trademark, e.g. from cyber-squatters.

The (intended) use of the domain name <montblanc.biz> will cause confusion for internet users, who could mistakenly assume that Respondentís website is somehow associated with Complainant.

Complainant concludes that Respondent could have had no motive in registering the domain name <montblanc.biz> other than to derive unfair advantage from the goodwill and reputation built up by Complainant in the MONTBLANC trademark.

Respondent

As Respondent has not submitted a response to the WIPO Center, Complainantís contentions are uncontested.

 

6. Due Process

Where, as in this case, a Respondent does not submit a Response and the file does not contain any communication from Respondent, the rules of due process require the Panel to verify to the extent possible that Respondent is aware of the present proceedings. The Panel is satisfied on the basis of the file documents that this is the case.

A hard copy of the Complaint was sent by the Center to Respondentís address as mentioned under 1 above, by courier, and a copy was sent both by facsimile and by email. The Center has discharged its responsibility under the STOP Rules to notify the Complaint.

 

7. Discussion and Findings

Under the STOP, a Complaint can only be filed by an "IP Claimant" who had filed an IP Claim for a particular alpha-numeric string. If that string becomes registered as a .biz domain name, NeuLevel notifies the IP Claimant and invites it to initiate a STOP proceeding within 20 days. NeuLevel determines priority if there are multiple claimants on a random basis. Only the priority claimant will be invited to initiate a STOP Complaint, to whom a ticket number has been allocated allowing dispute resolution providers to verify whether a STOP Complaint is filed by the priority Claimant. The service provider (in this case the Center) is required to advise the Panelist if a disputed domain name is subject to more than one claim. In the present case, the Panel was advised that there is no other IP claim.

Complainant must under the STOP show and provide evidence that:

(a) the domain name is identical to Complainantís trademark or service mark (Paragraph 4(a)(i));

(b) Respondent has no rights or legitimate interests in the domain name (Paragraph 4(a)(ii));

(c) the domain name was either registered or used in bad faith (Paragraph 4(a)(iii)).

Since the decision to transfer a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all aspects to support such a decision. The absence of a Response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.

(a) Trademark Rights

Complainant has provided sufficient evidence of its rights to the trademark MONT BLANC. The Panel is also satisfied, on the basis of the evidence provided, that the trademark is well-known in many countries, including France, where Respondent is domiciled.

The pertinent part of the domain name <montblanc.biz> is identical to Complainantís trademark MONTBLANC. Therefore the Panel finds that Paragraph 4(a)(i) of the STOP has been satisfied.

(b) Legitimate Interests

Complainant has stated that Respondent has no rights or legitimate interests in the domain name <montblanc.biz>, other than as an element of its recently registered business name. Respondent has no international or national trademark for "Mont Blanc". This in itself, however, is not sufficient to conclude that Respondent does not have a legitimate interest or own rights, since it is only one of the examples of such interests or rights as mentioned in Paragraph 4 (a) (ii) of the STOP.

The mere fact that a domain name may consist of a geographic name (or have a generic character) does not necessarily give the Respondent a legitimate interest in the use of that domain name. As set out in PRL USA Holdings,Inc. v. iTournament, LLC, WIPO Case No. DBIZ2002-00022, which concerned the domain name <polo.biz>, many famous marks may also have a potentially generic use (e.g. Apple, Budget and Virgin), but that does not make them fair game for cybersquatting. This implies that the Respondent has to demonstrate its interest, which in my view at least requires a demonstrable plan to use the Domain Name in a legitimate, non-infringing matter. A finding of lack of rights or legitimate interests is appropriate if the alleged plan is not demonstrable, J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035; or is merely a sham, Advanced Internet Technologies, Inc. v. AIT, Inc., WIPO Case No. D2000-0597. These considerations can be applied, mutatis mutandis, to a domain name consisting of a geographical name, as in this case the Mont Blanc mountain.

As set out above, the trademark MONTBLANC is deemed to be a well-known trademark on the basis of the evidence provided. Respondent has not submitted a response explaining why it would have a legitimate interest. In the absence thereof, the geographical nature of the name in itself is insufficient to show a legitimate interest. See J.Crew International v. crew.com, WIPO Case No. D2000-0054; Madonna v. Parisi, WIPO Case No. D2000-0847.

Therefore, the Panel is of the opinion that Respondent does not have a right or legitimate interest in the domain name <montblanc.biz>.

(c) Bad Faith

Due to the fact that MONTBLANC is a well-known trademark and that MONTBLANC products have been widely marketed and sold in France, where Respondent is domiciled, prior to March 27, 2002 (the date of registration of the domain name), the Panel is of the opinion that Respondent must have been aware of Complainantís rights in the MONTBLANC trademark when it registered the domain name <montblanc.biz> and of the possible interest that Complainant would have in the domain name <montblanc.biz>. Therefore, Respondent must have realised that by registering that domain name it creates a likelihood of confusion with the well-known trademark MONTBLANC as the public may assume that the domain name <montblanc.biz> is owned by (a company affiliated with) Complainant.

The Panel therefore is of the opinion that Respondentís registration of the domain name at issue has been made in bad faith.

 

8. Decision

On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence for the requested order to transfer the domain name at issue from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(l)(ii)(1) the Panel orders that Respondentís registration of the domain name <montblanc.biz> be transferred to Complainant.

 


 

Wolter Wefers Bettink
Sole Panelist

Dated: August 28, 2002