The Complainant is Perfetti Van Melle Benelux BV of Breda, the Netherlands, internally represented.
The Respondent is MBALogy, Gaurav Sharma of New Delhi, Delhi, India.
The disputed domain name <mentosjob.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2010. On March 12, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On March 15, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on April 19, 2010. 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 disputed domain name was registered by the Respondent on September 12, 2009.
The Complainant is the owner of many trademark registrations and applications for MENTOS, covering mainly products of international class 30 and used in particular on candies and chewing gum. The first international trademark registration for MENTOS dates back to 1949 while in India, where the Respondent has its address, MENTOS is a registered trademark since 1983. (The Complainant provided a list of its current trademark registrations.) MENTOS has been used on candies in the Netherlands since the 1950s. MENTOS products are widely advertised and sold all round the world.
The Complainant also operates a website at “www.mentos.com”.
Although not mentioned in the Complaint, the Complainant has prevailed in a series of previous UDRP cases decided under the Policy concerning its MENTOS mark. These include Perfetti Van Melle Benelux BV v. Anne Schmieg, WIPO Case No. D2009-0834; Perfetti Van Melle Benelux BV v. Jesse Lebiwotz, WIPO Case No. D2008-1383; Perfetti Van Melle Benelux BV v. Whois Privacy Protection Service, Inc. / Domain Manager, WIPO Case No. D2008-1424.
The entirety of the Complaint, in relation to paragraph 4(a) of the Policy, is transcribed (with only minor changes) as follows:
The disputed domain name <mentosjob.com> is confusingly similar to the Complainant's registered trademark MENTOS. The Respondent's domain name consists of the word “mentos” and the common English word “job” which has no power to differentiate the domain name from the trademark. On the contrary, the association of MENTOS with “job” in the domain name suggests to people searching the Internet that the relating website could disclose information on how to get jobs relating to the Complaint's MENTOS candies and chewing gum.
The Respondent has not been commonly known by the disputed domain name. To the Complainant's knowledge, the Respondent has no rights based upon tradition or legitimate prior use of the disputed domain name. The web page relating to the domain name is not active at the date the Complaint was filed, but the Complainant fears that the Respondent's aim is to attempt to exploit the fame of the Complainant's MENTOS products without need to bear any advertising or promotional costs, which is not legitimate, as the Complainant has been investing high sums of money in the advertisement of the brand MENTOS. Bearing in mind that MENTOS is a brand famous all over the world, and also in India, it seems quite strange that the choice for the name of the Respondent's domain name fell on the word “mentos”, identical to the Complainant's trademark, with only the addition of the common English word “job”.
The Complainant has never had any connection, affiliation or commercial relationship with the Respondent. The Respondent has never approached the Complainant to inform of its intention to register the disputed domain name or to ask for consent to its registration, which the Respondent should have done if its intention were to use the domain name in good faith. As soon as the Complainant was informed of the registration of the disputed domain name, it wrote an email to the Respondent explaining the situation and asking for the transfer of the domain name. No reply was ever received from the Respondent.
Due to the similarity between “mentosjob” and “mentos”, consumers may think there is a link between the Complainant's products and the Respondent's domain name. The Respondent could not be unaware of the existence of the Complainant's products. The bad faith of the Respondent is demonstrated also by the fact that a very simple search among international and Indian trademarks would easily reveal the existence of the Complainant's registrations for MENTOS. Also an inexperienced eye would notice from the number of trademark registrations displayed by the search, that MENTOS is a used trademark. Even if the Respondent hadn't performed a trademark search, a simpler and easier search with an Internet search engine would have shown to the Respondent that MENTOS is a brand used for confectionery products and that it has been widely advertised and used. Having registered a domain name, the Respondent proves to be familiar with the use of the Internet; therefore, a search with Google or any other similar search engine would have been absolutely in the Respondent's power.
In response to being notified of the Complaint, on March 16, 2010, the Respondent sent emails to the Center including one stating “Tankyou for sending me the details. Please keep me updated about the process and I will represent my part.” This communication clearly indicates that the Respondent has received actual notice of the case against it. In the event, the Respondent filed no reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
The Complainant must establish two things to succeed under paragraph 4(a)(i) of the Policy. The Complainant must firstly establish that it has rights in a mark. The Panel finds that the Complainant has clearly established such rights. The Complainant provides evidence (copies of registration certificates) of being the owner of a various registered marks, including marks registered under the Madrid Protocol, and a mark registered in India for MENTOS since 2002. The Complainant also provides evidence of a larger list of claimed trademarks in a number of jurisdictions (without accompanying copies of trademark certificates). The Complainant's rights in its MENTOS mark have also been accepted in the recent cases under the Policy, cited above. Those cases are significantly persuasive to establish the same rights in this case.
Having established that it has rights in its MENTOS mark, the Complainant must then establish that the disputed domain name is identical or confusingly similar to that mark. The disputed domain name is, self-evidently, not identical to the disputed domain name. The Panel considers however that it is confusingly similar. The Complainant's mark is entirely incorporated in the disputed domain name. As far as the Panel can tell (although the Complainant did not explain the origin of its mark), that mark is arbitrary and fanciful, and so is at the stronger end of the spectrum. It is a common circumstance under the Policy to find that the entire incorporation of a mark in a domain name, including a domain name that adds a generic word, may be sufficient for a finding of confusing similarity. See e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102. The simple reason for this approach is that the trademark remains clearly identifiable in the disputed domain name. As such, there is a likelihood that at least some Internet consumers might be confused as to whether the domain name has an association with the Complainant.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
In providing no Response, the Respondent has chosen to leave unanswered the prima facie case against it. There is otherwise nothing in the case file to suggest that the Respondent has rights or legitimate interests in the disputed domain name. The Complainant's mark appears to be well-known and it is also difficult to conceive of the Respondent having rights or legitimate interests in a domain name that incorporates that mark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
The final matter which the Complainant must establish is that the disputed domain name was registered, and has been used in bad faith. In this connection, it is well-established under the Policy that a “use” need not be active. An inactive holding of a domain name can itself, in certain circumstances, be a type of bad faith use of a domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Complaint proceeds on the basis that no active use has been made of the disputed domain name.
The Complainant argues that the Respondent has demonstrated bad faith because the Respondent cannot have been unaware of the Complainant's MENTOS mark. The Complainant makes the additional argument that, because the Respondent has registered a domain name, it must be familiar with the Internet and that even the most simple search would have indicated to the Respondent that MENTOS is a brand used for confectionery products and that it has been widely advertised and used. The first of these arguments is persuasive. As noted above, the Complainant's mark is distinctive and appears to be well-known. The Complainant has a suite of marks registered in various jurisdictions for that mark, including in India where the Respondent has its address. The Respondent has also provided no explanation for registering the disputed domain name. As such, there is a reasonable inference that the Respondent must have been aware of the Complainant's mark and registered the disputed domain name with an intent to exploit the Complainant's mark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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 <mentosjob.com> be transferred to the Complainant.
James A. Barker
Dated: May 3, 2010