WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Villeroy & Boch AG v. Mario Pingerna
Case No. D2007-1912
1. The Parties
The Complainant is Villeroy & Boch AG, Germany, represented by Taylor Wessing, Germany.
The Respondent is Mario Pingerna, Italy.
2. The Domain Name and Registrar
The disputed domain name <villeroy-boch.mobi> is registered with EuroDNS S.A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2007. On December 27, 2007, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the domain name at issue. On December 27, 2007, EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details of the registrant. 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 January 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2008. The Respondent filed its Response on January 21, 2008. The Center acknowledged receipt of the Response on January 22, 2008.
The Center appointed Mr. David J.A. Cairns as the sole panelist in this matter on January 30, 2008. 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 company incorporated under the laws of Germany. The company was founded in 1748 and it is currently trading under the name “Villeroy & Boch AG”. The Complainant is an international manufacturer of tiles and bathroom and kitchen furniture and accessories. In the course of its existence, the Complainant has become a well-known company worldwide.
The Complainant’s name is composed of the two family names of its founders Jean-Francois Boch and Nicolas Villeroy.
The Complainant is the owner of many trademark registrations around the world based on its name “Villeroy & Boch”. Amongst others, the Complainant owns the following trademarks: (i) the German word mark Nš. 946 093 VILLEROY & BOCH first registered on June 30, 1976; (ii) the International registration Nš 586 592 VILLEROY & BOCH first registered on March 2, 1992; and (iii) the Community trade mark Nš. 1 840 362 VILLEROY & BOCH first registered on January 4, 2002.
The Complainant also owns, inter alia, the following domain names: (i) <villeroy-boch.de>; (ii) <villeroy-boch.com> and (iii) <villeroy-boch.it>.
The Respondent registered the disputed domain name on November 20, 2006 with EuroDNS S.A.
The disputed domain name hosts a parking which, as is commonly the case, has links under various subject headings. When the Panel viewed this website on February 14, 2008, the headings on the parking page related to kitchen and bathroom products, such as ‘Fiesta Dinnerware’, ‘Bathroom Accessory’ and ‘Kitchen’. These headings in turn led to more specific subject pages with ‘sponsored links’ and ‘top sites’ linked to retailers of the various products.
The parking page also stated “www.villeroy-boch.mobi Registered and Parked with EuroDNS”, followed by a disclaimer stating: “This parking page is created for information only in agreement with the holder of the domain name above. EuroDNS did not play any part in the selection of this domain name and does not endorse any meaning it may have for visitors. Links that may appear on this page are provided by a third-party for advertising purposes and have not be chosen nor specifically approved by EuroDNS.”
Clause 3.6 of the registration contract between the Respondent and the Registrar reads as follows: “If, upon registering a Name, the Customer abstains from linking such Name to a specific website or web page, EuroDNS shall be entitled to display a web page whose express purpose is to avoid a situation in which web surfers encounter an error 404 message. Such page shall, at EuroDNS’s discretion, offer various services such as a search engine and may contain advertising.
The Customer shall be entitled to lodge a written objection to having the Customer’s Name associated with a Parking Page, by mailing an explanatory letter to the address indicated on the following URL: http://www.eurodns.com/info/contact/”
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the Complainant’s trademarks or at least confusingly similar for the following reasons: (i) the disputed domain name is identical because it incorporates entirely the registrable elements of the Complainant’s name and trademark, since the “&” sign cannot be included in the domain name registration and the “.mobi” suffix is not to be taken into account for comparison purposes; (ii) the disputed domain name is at least confusingly similar due to the distinctiveness of the terms “villeroy” and “boch”, the Complainant’s longstanding use of those terms as its name and trademarks, and the fact that the difference between the disputed domain name and the Complainant’s trademarks constitutes a minor variation that does not detract from the close similarity between them, both aurally and visually.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name since: (i) the Complainant’s adoption and use of its trademarks and domain names precede by many years the Respondent’s registration of the disputed domain name; (ii) there is no evidence of the Respondent’s use or preparation to use the disputed domain name in connection with a bona fide offering of goods; (iii) the Respondent was not authorized by the Complainant to register or use its trademarks; (iv) the Respondent is not an authorized dealer of the Complainant nor does the Respondent seem to be engaged in selling products or services similar to the Complainant’s; (v) the Respondent is using the disputed domain name as a portal with presentation of and links to different products and web pages, most of them leading to products of competitors of the Complainant; (vi) the Respondent is not and has never been commonly known by the disputed domain name, nor has the Respondent acquired any rights in it; and (vii) there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith since the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship or affiliation of the website. This is demonstrated by the following facts: (i) the Respondent is using the disputed domain name to forward consumers to a portal with links to the Complainant’s competitors; (ii) the Respondent had to know that consumers would recognize the Complainant’s well-known trademark; (iii) the Respondent’s knowledge is demonstrated by the Complainant’s use of its well-known trademarks worldwide; (iv) using a domain name being aware of opposing rights, thus impeding its use to the owner of the rights constitutes bad faith; (v) the Respondent is using the disputed domain name for commercial gain by improperly associating itself with the Complainant and its trademarks; and (vi) by agreeing to the terms and conditions of the Registrar, the Respondent specifically committed itself to perform a search for matching trade marks or names and to ensure that the disputed domain name did not infringe any third party rights.
The Complainant has requested that the disputed domain name be transferred to the Complainant.
The Respondent contends that he registered the name after the well publicized official Sunrise period.
The Respondent contends that the registration was not made in order to resell or speculate with the disputed domain name but with the intent of personal future use for a literary work in progress.
The Respondent contends that he was never informed by the Registrar and was therefore not aware of the content of the disputed domain name’s web page.
The Respondent states that it has not received any money or discounts in relation to the website or its contents.
The Respondent states that the Registrar is the person responsible for that content in accordance with the contract between Registrant and Registrar and that, if so required, the Respondent will require the Registrar to remove the web page’s current content and display an “under construction” message instead.
The Respondent requests the Panel to deny the remedies requested by the Complainant.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the VILLEROY & BOCH trademark registrations referred to above.
The Complainant argues that the disputed domain name is identical to the Complainant’s trademarks notwithstanding the substitution of the sign “&” for a hyphen. However, this substitution constitutes a variation, albeit a minor one, in sight and pronunciation, and therefore the Panel finds that the disputed domain name is not identical to the trademark VILLEROY & BOCH.
The similarity of a trademark and a domain name for the purposes of the Policy depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).
The Panel finds that the disputed domain name is confusingly similar to the VILLEROY & BOCH trademarks for the following reasons: (i) ‘villeroy’ and ‘boch’ are personal names and are distinctive in combination; (ii) the disputed domain name includes both‘villeroy’ and ‘boch’ and differs only from the Complainant’s trademarks by connecting this distinctive combination of names by a hyphen rather than an ampersand; (iii) the hyphen does not constitute a distinctive feature in the disputed domain name. As stated in the WIPO Decision Bang & Olufsen a/s v. Unasi Inc. WIPO Case No. D2005-0728: “The “&” sign (ampersand) cannot be included in a domain name registration. [Therefore] hyphens are placed where the “&” sign are placed in the trademark. This contributes to similarity between the trademark and the domain names.” (iv) The overall appearance of the disputed domain name is very close to the Complainant’s trademarks; and (v) the VILLEROY & BOCH trademarks are widely-known and Internet users will associate the disputed domain name with the Complainant’s trademarks. “Domain names which differ from a trademark by only minor variations have a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive,” see Bang & Olufsen a/s v. Unasi Inc. WIPO Case No. D2005-0728.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interest of the Respondent in the disputed domain name: (i) there is no evidence before the Panel that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the VILLEROY & BOCH trademarks or to register and use the disputed domain name; (iii) the Complainant’s trademark rights substantially pre-date the Respondent’s registration of the disputed domain name; and (iv) the Respondent has not asserted that he has been commonly known by the disputed domain name.
The Respondent has stated that he registered the disputed domain name after the well publicized official Sunrise period. The Sunrise registration period ended on September 22, 2006 and the Respondent registered the disputed domain name on November 20, 2006. The Sunrise Challenge Period ended on December 15, 2006. Post-registration disputes concerning trademark rights are to be settled in accordance with the Policy. The fact that a domain name was not taken during the Sunrise period does not mean that trademark holders with potential rights in the domain name had renounced those rights, so that the domain name could be acquired by a member of the public and used as they wished. The fact that the Respondent respected the Sunrise registration does not per se confer any rights or legitimate interests on the Respondent. Nor does it preclude the Complainant from filing a complaint, or assserting its rights under the Policy.
The Respondent has also stated that he registered the disputed domain name with the intent of personal future use for a literary work in progress. This intent does not confer any rights or legitimate interests as: (i) this is not the current use; (ii) the current use is neither a legitimate noncommercial nor a fair use within the meaning of paragraph 4(c)(iii) as it involves sponsored links and advertising pop-ups (and therefore has a commercial purpose) and involves deceptive use of the Complainant’s trade name; and (iii) there are not any demonstrable preparations for this use in respect of a literary work that might support rights or legitimate interests under paragraph 4(c)(i) of the Policy.
For these reasons, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In considering bad faith the Panel notes that the Respondent does not deny that he knew of the Complainant’s widely known trademark at the time of registration. Further, the Respondent has stated that he is prepared to inform the Registrar to remove the current content, but has not done so.
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The Panel finds that the evidence submitted by the Complainant supports a finding of bad faith under paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the sponsored links and pop-up advertisements on its website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the VILLEROY & BOCH trademarks and the Complainant’s own domain names. The fact that the website at the disputed domain name includes links to sites offering competing products as the Complainant aggravates the likelihood of confusion.
The only novel feature in this case is the Repondent’s statement that the parking page was created by the Registrar, and that at the time the Respondent had no knowledge of its contents. These statements are corroborated by the information and disclaimer on the parking page itself, and the Registrar’s contractual right under clause 3.6 of the registration contract referred to above. Further, the Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.
The Panel also finds that the Respondent’s registration of the disputed domain name with knowledge of the Complainant’s trademarks, its authorization to the Registrar to host a parking page at the disputed domain name, and then its failure to act when the Complainant complained of the links of this parking page to its competitors is an independent ground of bad faith. The Respondent is responsible for the content of any webpage hosted at the disputed domain name. It cannot evade this responsibility by means of its contractual relationship with the Registrar. The relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy (cf Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain WIPO Case No. D2007-1373).
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <villeroy-boch.mobi> be transferred to the Complainant.
David J.A. Cairns
Dated: February 14, 2008.