WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pelikan Vertriebs Gesellschaft mbH & Co. KG. v. James Griffiths
Case No. D2007-1103
1. The Parties
The Complainant is Pelikan Vertriebs Gesellschaft mbH & Co. KG. of Hannover, Germany, represented by Detmar Schäfer, Germany.
The Respondent is James Griffiths of Castro Valley, California, United States of America.
2. The Domain Names and Registrars
The Disputed Domain Names <vintagepelikan.com> and <vintagepelikans.com> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2007. On August 1, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 1, 2007, Go Daddy Software 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2007. In accordance with the Rules, Paragraph 5(a), the due date for the Response was August 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2007.
The Center appointed Alistair Payne as the sole panelist in this matter on September 5, 2007. 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 is a well-known pen manufacturer trading under the name PELIKAN. The Complainant alleges that the Respondent’s Disputed Domain Names are confusingly similar to its trademarks in PELIKAN. The Complainant has registered a large number of trademarks for PELIKAN, including in Germany and the United States of America. The Complainant has established its main business under the website “www.pelikan.com”.
The Respondent registered <vintagepelikan.com> and <vintagepelikans.com>. on May 16, 2004. The Complainant allegedly has granted no rights to the Respondent in any of the PELIKAN marks. In the past the Respondent posted advertisements for the sale of vintage Pelikan, Montblanc, Sheaffer and other classic pens on the websites related to the two Disputed Domain Names. After the Complainant asked the Respondent to stop using the domain names he changed the details of the websites to include a disclaimer which claimed no affiliation or endorsement with the Complainant company. The Respondent also offered to discuss the sale of the websites with the Complainant. The Respondent then placed notices about the Complainant company on <vintagepelikan.com> and <vintagepelikans.com> expressing his personal opinions about the Complainant company. The Complainant finds the following content offensive:
“Generally, we like Germans. But in this instance, the legal department of Pelikan has their collective Germanic heads performing a proctology self-examination.
So they get this page for their troubles. This is no longer a commercial site. This is now a free speech site.
Do not buy modern Pelikan pens. This abomination of a company no longer honors the craftsmanship and integrity embodied by the original founders. Vintage Pelikans are wonderful pens, although we believe that vintage Montblanc fountain pens are superior. To find additional information to help you focus your collecting interests, we recommend that you perform a web search for either vintage Montblanc or vintage Pelikan fountains pens.
Again, do not spend your money on a modern Pelikan pen when you can purchase multiple vintage pens for the same price. The vintage pens offer better quality, character, satisfaction, and do not profit a multi-national “luxury brands” conglomerate that opposes the collecting of vintage pens.”
The Complainant is seeking the transfer of the Respondent’s registration for the Disputed Domain Names <vintagepelikan.com> and <vintagepelikans.com>.
5. Parties’ Contentions
The Complainant alleges that the Disputed Domain Names are confusingly similar to its registered trademarks for PELIKAN. The Respondent doesn’t have any rights or legitimate interests in the Disputed Domain Names because he does not operate any business under <vintagepelikan.com> and <vintagepelikans.com> and has no trademarks or service marks for the name. The Complainant notes that the Respondent is selling products made by its competitors on the two websites alongside sales for Pelikan pens.
Finally, the Complainant asserts that the expression of opinion that is posted on “www.vintagepelikan.com” and “www.vintagepelikans.com” is not free speech as permitted under Paragraph 4(c)(iii) of the Policy as it is not displayed on a genuine non-commercial website. The Complainant asserts that, based on past panel decisions, the Respondent does not have a legitimate right to register a confusingly similar domain name for criticism even where it is for a genuine non-commercial use. Alternatively, the Complainant asserts that even if a Respondent can register a domain name using a trademark where it is for criticism in a fair and non-commercial manner, the Respondent’s comments are not fair and the Disputed Domain Names are used for commercial gain. The Complainant asserts that the Respondent has registered and is using the Disputed Domain Names in bad faith for commercial gain in order to create a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation and endorsement. Furthermore, it asserts that the Complainant has entered into direct competition with them through the site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
If the Complainant is to succeed, it must prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel notes the evidence of the Complainant in this case demonstrates numerous rights in the PELIKAN mark. The PELIKAN mark was first registered in 1955 in both Germany and the United States of America and subsequently in several other countries worldwide. The Panel also accepts that the Complainant has rights in the domain name <pelikan.com>. The Complainant has made significant use of the PELIKAN trademarks and the Panel accepts that it has developed significant reputation in these marks.
The Panel finds that the Respondent’s Disputed Domain Names are confusingly similar to the Complainant’s trademark PELIKAN and the domain name <pelikan.com>. The Panel accepts that use of the word “vintage” before the word “pelikan” is descriptive. The PELIKAN mark is incorporated in its entirety in the domain names <vintagepelikan.com> and <vintagepelikans.com> preceded by the relevant descriptive word “vintage” in reference to the sale of old versions of Pelikan pens. There is therefore a strong likelihood of confusion in combining these particular words. See Playboy Enterprises International, Inc v. Federico Concas, a.k.a. John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745 and also, Playboy Enterprises International, Inc. Tamara Pitts, WIPO Case No. D2006-0675.
Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark and that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
As noted above, the Panel accepts that the Complainant has developed considerable reputation in the PELIKAN marks and owns several registered rights. The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests to the Disputed Domain Names. The Respondent, even though properly notified, has not participated in this proceeding and has thus not satisfied the Panel that he has any rights or legitimate interests in the Disputed Domain Names. The Respondent was using the Disputed Domain Names to offer vintage Pelikan pens for sale without the Complainant’s authorisation. He did this while also selling vintage pens of the Complainant’s competitors. Before notice of this dispute was sent to the Respondent he had sponsored links on both “www.vintagepelikan.com” and “www.vintagepelikans.com”. He subsequently changed the presentation of the site to criticise the Complainant company while maintaining a link to his sales website “jim.griffiths.home.comcast.net”. This is not a bona fide offering of goods and services for the purposes of Paragraph 4(c)(i) of the Policy.
Neither does the record suggest that the Respondent, or any business of his, is commonly known under the Disputed Domain Names. The Respondent does not hold any trademark or service marks for “Pelikan” or “Pelikan.com”.
Finally, there is nothing to establish that the Respondent is making, or plans to make, a legitimate non-commercial or fair use of the domain name. In registering and using the Disputed Domain Names, the Panel believes that the Respondent has taken unfair advantage of the Complainant’s reputation in the PELIKAN marks. See Triodo Bank N.V. v. Ashley Dobbs, WIPO Case No. D2002-0776. The Respondent has used domain names that are confusingly similar to the Complainant’s marks with apparent intention of deceiving the public. The Respondent currently states on his website that he is using the Disputed Domain Names only to express his opinion of the Complainant but this is not confirmed by the facts. The Panel notes that the Disputed Domain Names are not being used solely for non-commercial purposes. There are links from “www.vintagepelikan.com” and “www.vintagepelikans.com” to the Respondent’s other website (“jim.griffiths.home.comcast.net”) where he offers inter alia old Montblanc and Pelikan pens for sale. In these circumstances, where the Respondent is indirectly operating a commercial endeavor from the confusingly similar Disputed Domain Names, the Panel is prepared to infer that the Respondent does not have any rights or legitimate interests in the domain names <vintagepelikan.com> or <vintagepelikans.com>. See Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477.
Based on the record and in the absence of a rebuttal by the Respondent the Panel finds that Paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that registration and use of a domain name in bad faith is demonstrable by evidence that this was done in order to sell the domain name to the complainant who is the owner of rights in the name. In this case the Respondent did offer to sell the Disputed Domain Names to the Complainant, however, it is unclear if this was the Respondent’s intention when he registered the Disputed Domain Names. Therefore, it is not clear whether the Disputed Domain Names were registered in bad faith for the purpose of re-sale.
The Complainant relies on Paragraph 4(b)(iv) of the Policy which provides that registration and use of a domain name in bad faith is also demonstrable by evidence that a respondent is using the domain name and attempting to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation or endorsement. The Respondent registered and was using the Disputed Domain Names to sell vintage pens including Pelikan pens on-line. The current use of the <vintagepelikan.com> and <vintagepelikans.com> is twofold. Firstly, the Respondent is using the Disputed Domain Names to criticise the Complainant and secondly he is using them to attract customers to his other site (“jim.griffiths.home.comcast.net”) for the sale of vintage pens. As noted above, these objectives do not grant the Respondent any rights or legitimate interests in the Disputed Domain Names in this case.
The Respondent was, prior to this dispute, offering “sponsored links” on the Disputed Domain Names. Consequently, Internet users would have been confused as to the source, sponsorship, affiliation or endorsement of the two websites. See Members Equity PTY Limited v. Unasi Management Inc, WIPO Case No. D2005-0383. Against this background it is clear that the Respondent registered the Disputed Domain Names incorporating the Complainant’s trademark in order to take advantage of the Complainant’s reputation. The existence of a disclaimer at the websites with the <vintagepelikan.com> and <vintagepelikans.com> domain names does not eliminate the element of bad faith. This only demonstrates that the Respondent knew of the Complainant’s rights. The Respondent could have chosen a domain name that was not confusingly similar to the PELIKAN marks in order to criticise the Complainant. See Estee Lauder Inc. v. estelauder.com, esteelauder.net and Jeff Hanna, WIPO Case No. D2000-0869. Therefore, the Panel finds that the Respondent is using the Disputed Domain Names in bad faith in order to create confusion in the minds of consumers and attract them to the Respondent’s websites for commercial gain. The Panel finds that the Respondent registered and used the Disputed Domain Names in bad faith for the purposes listed in Paragraph 4(b)(iv) of the Policy.
The Panel finds that Paragraph 4(a)(iii) of the Policy is fulfilled and that the Respondent has registered and used the Disputed Domain Names in bad faith.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <vintagepelikan.com> and <vintagepelikans.com> be transferred to the Complainant.
Dated: September 26, 2007