WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mandalay Real Estate Limited v. Private Registrations Aktien Gesellschaft
Case No. D2012-0158
1. The Parties
Complainant is Mandalay Real Estate Limited of Neuchatel, Switzerland represented by Gottlieb, Rackman & Reisman, PC, United States of America.
Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <mihjeans.com> (the “Domain Name”) is registered with Answerable.com (I) Pvt Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2012. On January 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2012.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on February 29, 2012. 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
According to the evidence submitted by Complainant, Complainant holds several trademark registrations for MIH, including a registration in the United States of America and an international registration with WIPO designating 15 countries. Some of the trademark registrations have been issued prior to the registration of the Domain Name. Complainant licenses the MIH trademark to its related company MiH Jeans, formerly called Made in Heaven. The Panel takes notice of Complainant’s statement that MiH Jeans has operations in more than 35 countries worldwide. The trademark MIH designates a brand for jeans and for a full ready-to-wear collection. Complainant has registered MIH as a top level domain name in many registries. According to Complainant its primary website is “www.mih-jeans.com”.
The Domain Name <mihjeans.com> was registered on September 26, 2009.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to the MIH trademark as it contains the MIH trademark in its entirety. According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name in view of its trademark. Internet users are directed to a website which is a pay-per-click site for jeans. Respondent uses the Domain Name without permission from Complainant for commercial gain and with the purpose to benefit from the reputation of the trademark of Complainant. Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademark of Complainant and is intentionally misleading consumers.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of various trademark registrations for MIH. Complainant’s registrations predate the creation date of the Domain Name.
The Domain Name <mihjeans.com> incorporates the entirety of the MIH trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of common, dictionary, descriptive or other elements is irrelevant. Moreover, the generic term “jeans” adds to the potential confusion as Complainant sells jeans.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, Respondent directs Internet users to a website which is a pay-per-click site featuring the trademark MIH connected to the generic term “jeans” on a page associated with non-MIH jeans. Respondent makes use of the value of the MIH trademark and the likelihood of confusion with the trademarks of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. See paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Respondent is not commonly known by the Domain Name nor has it acquired trademark rights.
Under these circumstances the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks and goods of Complainant have been existing since the early 1970s and Respondent knew or should have known that the Domain Name included Complainant’s trademarks.
The Panel finds that the above elements mean that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location, as per paragraph 4(b)(iv) of the Policy. The Panel also takes into account that Respondent has been found to have registered and used a broad range of domain names in bad faith in over 20 cases decided under the UDRP, which clearly suggest that Respondent has made a pattern of conduct of registering domain names consisting of third parties’ trademarks. See, e.g. Akzo Nobel N.V. v. Domain Admin, Private Registrations Aktien Gesellschaft, WIPO Case No. D2011-2029.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mihjeans.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Dated: March 12, 2012