WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perfetti Van Melle Benelux BV v. Lopuhin Ivan, IPHOSTER
Case No. D2010-0858
1. The Parties
The Complainant is Perfetti Van Melle Benelux BV, of Breda, The Netherlands represented by Alessandro Biraghi, Italy.
The Respondent is IPHOSTER, Lopuhin Ivan, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <mentozz.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 27, 2010. On May 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 28, 2010, GoDaddy.com, Inc., 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 June 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2010.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on July 13, 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.
4. Factual Background
The Complainant is a Dutch multinational company manufacturing and selling confectionery products under the trademark MENTOS. It has trademark registrations and applications for MENTOS word and/or device marks under class 30. The Complainant has provided a list of its trademark registrations in numerous jurisdictions and documents of its Russian trademark certificates, having Russian TM No. 96182 of September 13, 1990, IR No.143859 of November 5, 1949, IR No. 598995 of March 2, 1993 (valid also in the Russian Federation), and IR No.681732 of September
30, 1997 (valid also in the Russian Federation).
The Respondent registered the disputed domain name on August 22, 2009.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademark, except for the letters “zz” used in the disputed domain name in lieu the letter “s” in the mark. It contends its first international trademark registration for MENTOS dates back to 1949 and has been used on candies in the Netherlands since 1950. In the Russian Federation, where the Respondent is located, it is a registered mark since 1990.
The Complainant states its world wide total net sales of MENTOS products in 2009 amounted to EUR 484.171.000 and the advertisement expenses were to the tune of EUR 64.328.000. In the Russian Federation MENTOS net sales in 2009 amounted to EUR 22.400.000 and the advertisement and promotional expenditure was EUR 1.893.000. The Complainant’s website “www.mentos.com” is dedicated to the history, products and promotions of MENTOS. The online encyclopedia Wikipedia, also gives information about MENTOS.
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the disputed domain name or has rights due to any legitimate prior use of the name, but has registered it only for exploiting the Complainant’s mark.
The disputed domain name was registered and is used in bad faith, according to the Complainant as users searching for the Complainant’s products online, may mistype “mentozz” and are likely to be misdirected to the Respondent site. The Complainant states it has no information about the Respondent and has no connection, affiliation or commercial relationship with the Respondent. It had sent an email dated September 3, 2009 to the Respondent requesting for the transfer of the disputed domain name and no reply was received. The Complainant argues that, had the Respondent performed a trademark search, or even a simple Google search it would have revealed that MENTOS is a trademark widely used and advertised for confectionery products by the Complainant. The Complainant further states that its products are targeted toward children and young people, but as the Respondent’s domain name resolves to a webpage with adult content it cannot risk such confusion with its mark and therefore requests for transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy stipulates that the Complainant has to establish three elements under paragraph 4(a) to obtain the remedy of transfer of the disputed domain name.
(i) The disputed domain name is identical or confusingly similar to a 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 by the Respondent.
A. Identical or Confusingly Similar
The first requirement under paragraph 4(a) of the Policy stipulates the Complainant must establish that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
Trademark registration constitutes prima facie evidence of the validity of trademark rights. See Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654. The Complainant has established its rights in the MENTOS trademark by furnishing documents of its trademark registration in the Russian Federation and by providing the details of its registered trademarks for MENTOS in numerous countries.
The second level domain name must be compared with the Complainant’s trademark in order to determine whether there is confusing similarity between the disputed domain name and the mark. The generic top leveldomain, such as “.info” or “.com” is not significant for this comparison as it is a basic standard prefix for domain names. The second level domain in the present dispute is “mentozz”, when it is compared to the Complainant’s trademark MENTOS, the only difference is that of the letter “s” of the mark has been replaced with the letters “zz”.
The Panel finds that the letters “zz” being used instead for the letter “s” does not change the overall sound or pronunciation of the MENTOS mark and that “mentozz” is phonetically similar to the Complainant’s trademark. Due to its phonetic similarity, it is also a common misspelling of the Complainant’s mark. Furthermore, users may mistype the letter “z”, instead of the letter “s” as it is placed just below the letter “s” on a standard QWERTY keyboard. For all these reasons, the disputed domain name is found to be inherently similar to the Complainant’s MENTOS mark.
The Panel finds the Complainant has met the first requirement under paragraph 4(a) of the Policy, that the disputed domain name is confusingly similar to the Complainant’s trademark MENTOS.
B. Rights or Legitimate Interests
The second factor under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the domain name. See paragraph 2.1 of WIPO Overview of WIPO of WIPO Panel Views on Selected UDRP Questions.
The Complainant has asserted that the Respondent has not been given any authorization to use its trademark and there is no connection or business relationship between the Complainant and the Respondent. The Respondent has not filed a response to refute the Complainant’s contentions in these proceedings by submitting evidence that he is making a bona fide offering of goods or services using the disputed domain name, or that he is commonly known by the disputed domain name or making legitimate non-commercial fair use of the domain name within the meaning of paragraph 4(c) of the Policy.
The evidence on record shows the disputed domain name resolves to a website with adult content. The purposeful misspelling of trademarks in domain names, that are used to divert users to websites with explicit adult themes does not constitute a bona fide offering of services under of paragraph 4(c ) of the Policy, See e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies, WIPO Case No. D2000-1369. The Panel is satisfied that the entire set of facts and circumstances here show that the Respondent most likely registered the disputed domain name with knowledge of the Complainant’s MENTOS mark as a purposeful misspelling of the mark. The Respondent uses the disputed domain name and the linked website to divert consumers in complete disregard to the fact that he has no authorization to use the Complainant’s mark or its variants.
The Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name which the Respondent has not rebutted.
C. Registered and Used in Bad Faith
The third factor under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and is being used in bad faith by the Respondent.
The Complainant has expressed its concern of its customers being exposed to the explicit adult content of the Respondent’s website, particularly as the average user of the Complainant’s products are children or young people. The owner of a trademark has the right to determine the type of images that may be associated with its mark and can seek a remedy under the Policy for unauthorized exploitation of its trademark as a domain name for the ensuing harm that it can cause by misleading the public.
The use of a widely-known trademark in a domain name that resolves to a website with adult content may establish bad faith registration and use under the Policy. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775. (Misspellings of a trademark to divert users to websites containing adult content was considered to establish bad faith registration and use). Hyper linking to sites containing adult content by registration and use of a confusingly similar variant of a trademark has been found to establish bad faith and abusive use of a domain name. Six Continental Hotels, Inc. v. Sewern Nowak, WIPO Case No.D2003-0022 (Hyper linking to pornographic sites considered bad faith use).
The evidence on record shows the Respondent has placed explicit adult content on its website. In the present case, given the target audience of young persons who are the users of the Complainant’s products and the misspelling of the Complainant’s mark to mislead unsuspecting users in this manner is in this Panel’s view abusive registration and use of the disputed domain name. Trying to divert web traffic intended for the Complainant to a website providing pornographic images and content establishes here bad faith registration and use of the domain name. See V&S Vin and Sprit AB v. VCN -Whois Protection Service Panama, WIPO Case No.D2010-0715 .
The Complainant has adopted and used the MENTOS trademark for several decades prior to the registration of the disputed domain name and it has invested substantial amounts for publicizing its mark. Under these circumstances it can be inferred that the similarity of the disputed domain name to the Complainant’s trademark MENTOS is not a coincidence. The Respondent has intentionally acquired the disputed domain name for exploiting its value as a phonetically similar variant and as a misspelling of the Complainant’s trademark.
Paragraph 4(b)(iv) of the Policy mentions circumstances indicating bad faith registration and use of the domain name. One of such circumstances is the intention of attracting Internet users to a website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. In the light of the preceding discussions the Panel holds that the Respondent has registered the disputed domain name and uses it in a manner that constitutes bad faith registration and use as described under and paragraph 4(b)(iv) of the Policy.
The Panel also notes that the Respondent has not sent any reply to the emails and notices sent by Complainant and has chosen not to participate in these proceedings. All these facts and circumstances discussed are the basis for drawing an adverse inference of Respondent’s bona fides in the registration and use of the disputed domain name.
The Panel finds the Complainant has successfully established that the disputed domain name was registered and is being used in bad faith and has satisfied the third requirement of 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 <mentozz.info> be transferred to the Complainant.
Dated: July 27, 2010