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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mayr-Melnhof Karton AG v. Private Whois, Global Domain Privacy Services Inc. / Myron Bocharov

Case No. D2017-2031

1. The Parties

The Complainant is Mayr-Melnhof Karton AG of Vienna, Austria, represented by Hofstetter, Schurack & Partner, Germany.

The Respondent is Private Whois, Global Domain Privacy Services Inc. of Panama / Myron Bocharov of Marion, Texas, United States of America, ("United States").

2. The Domain Name and Registrar

The disputed domain name <melnhof.com> (the "Disputed Domain Name") is registered with URL Solutions, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 19, 2017. On October 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 20, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2017 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 27, 2017.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint and the proceedings commenced on October 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2017.

The Center appointed Michael D. Cover as the sole panelist in this matter on December 6, 2017. 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 Mayr-Melnhof Karton AG and has a worldwide revenue of EUR 2.3 billion. The Complainant is a leading manufacturer of coated recovered cartonboard and a growing involvement in other related areas. The Complainant employs nearly 10,000 people and has annual operating revenue in the financial year 2016 of EUR 2,286.1 million, according to its Annual Report 2016.

The group of companies of which the Complainant is part can trace its origins back to 1859. Since that time, the Complainant's predecessors and the Complainant have established or acquired many other businesses, including a cigarette carton printing plant, which was acquired in 1997.

The Complainant is the proprietor of a number of International trademark registrations consisting of or including the name MAYR-MELNHOF and is also the proprietor of many national trademark registrations as set out in Annex 13 to the Amended Complaint. The Complainant operates a website at "www.mayr-melnhof.com".

The Disputed Domain Name resolves to a website showing Melnhof Karton Gesellschaft GmbH and/or MKG GmbH, from which is offered copy paper, lighters and cigarette rolling papers.

The Disputed Domain Name was registered on April 11, 2017.

5. Parties' Contentions

A. Complainant

Confusingly Similar to a Trademark in which the Complainant has Rights

The Complainants submits that the Disputed Domain Name is identical or confusingly similar to the Complainant's MAYR-MELNHOF trademark, in which the Complainant has rights. The Complainant submits that the Disputed Domain Name has taken the dominant part of the Complainant's trademark, which is the aristocratic and distinctive name MELNHOF. This, says the Complainant, will lead the public to think that the Disputed Domain Name is somehow connected to the owner of the trademark MAYR-MELNHOF, in other words the Complainant.

The Complainant submits that these changes and additions are insufficient to distinguish the Disputed Domain Name from the Complainant's MAYR-MELNHOF trademark. The Complainant notes that the addition of the gTLD ".com" is required for technical reasons and can be ignored for the purpose of comparison of the Disputed Domain Name with the Complainant's trademark MAYR-MELNHOF.

The Complainant also notes that the company shown on the website to which the Disputed Domain Name resolves does not exist as either Melnhof Karton GmbH of MKG GmbH and the company name has a great resemblance to the Austrian company, Mayr-Melnhof Karton Gesellschaft MbH, which belongs to the Complainant's group of companies.

The Complainant submits that the registration and use of the Disputed Domain Name has already caused confusion, in that a Hamburg-based company had addressed two letters to what the Complainant calls the fake company Melnhof Karton GmbH, when it clearly wished to contact the Complainant's company, Mayr-Melnhof Karton Gesellschaft MbH and refers to Annex 3 to the Complaint in that regard.

The Complainant concludes by drawing the Panel's attention to the confusion set out above and submits that it is clear that the Respondent registered the Disputed Domain Name because the Respondent believed that the Disputed Domain Name was confusingly similar to the Complainant's trademark, MAYR-MELNHOF.

Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Respondent does not itself hold the trademark MELNHOF and has no rights or legitimate interests in the designation "Melnhof", states the Complainant.

The Complainant maintains that the Respondent has not registered the Disputed Domain Name in connection with a bona fide intent to use it, as the Respondent is not licensed by the Complainant so to do. The Complainant also submits that the Respondent is not commonly known by the Disputed Domain Name.

The Complainant states that the Respondent is not an authorized dealer, distributor or licensee of the Complainant, is not in any way associated with the Complainant and is not making legitimate non-commercial or fair use of the Disputed Domain Name. The Complainant notes that, on the website to which the Disputed Domain Name resolves, the Respondent does not explain that such website is not related to the Complainant.

The Complainant therefore concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. In particular, the "Melnhof" part of the Complainant's trademark MAYR-MELNHOF is an unusual aristocratic family name, which serves as an unique identifier.

The Complainant notes that the Disputed Domain Name is in use for a webshop, via which wood products, copy paper and cigarette papers are advertised and offered, thereby seeking to exploit the Complainant's trademark to attract potential clients. The Complainant notes that the sole purpose of adopting the Disputed Domain Name, which is virtually identical to the Complainant's trademark MAYR-MELNHOF, was to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website and the products on that website.

The Complainant submits there could be no other plausible reason for the Respondent so doing and, further, that the Complainant has been able to establish the resulting actual confusion. The Complainant adds that it is obvious that the Respondent had knowledge of the Complainant's trademark MAYR-MELNHOF.

The Complainant concludes that the Disputed Domain Name has been registered and is being used in bad faith.

Remedy requested by the Complainant

The Complainant requests the Panel to decide that the Disputed Domain Name should be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Substantive Issues

The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established both registered and common law rights in its MAYR-MELNHOF trademark. The Complainant owns and uses its registered trademark around the world and uses related domain names in connection with its business, those domain names all having the common element of the letters "Melnhof". The Panel considers the Complainant's trademark MAYR-MELNHOF, first used many years ago, has become well-known as a result. The Complainant has accordingly also established common law rights in its MAYR-MELNHOF trademark.

The Panel also accepts the Complainant's submission that the Disputed Domain Name is confusingly similar to the Complainant's trademark MAYR-MELNHOF. It is well established that the addition of generic or descriptive material or the addition of a Top-Level Domain ("gTLD") or other non-distinctive element is not sufficient to avoid confusing similarity. The dominant element of the Disputed Domain Name is the word MELNHOF, which is a distinctive and recognizable part of the Complainant's trademark MAYR-MELNHOF.

The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark MAYR-MELNHOF, in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent has no rights or legitimate interests in the Dispute Domain Name. The Panel notes that the Complainant has not permitted or licensed the Respondent to use the MAYR-MELNHOF trademark and that the Respondent is not affiliated to the Complainant.

It is a reasonable inference that the Respondent was aware of the Complainant's well-known MAYR-MELNHOF trademark when it registered the Disputed Domain Name. The only evidence that the Respondent has used or prepared to use the Disputed Domain Name shows the Disputed Domain Name resolving to a website promoting products which are competing with those of the Complainant sold under the Complainant's trademark MAYR-MELNHOF. There is no evidence that the Respondent was commonly known by the Disputed Domain Name, so that route is not available to the Respondent.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met.

C. Registered and Used in Bad Faith

The Panel accepts the submissions of the Complainant on this head and finds that the Disputed Domain Name has been registered and is being used in bad faith. The Panel accepts that the registration of the Disputed Domain Name that is confusingly similar to the well-known trademark MAYR-MELNHOF, combined with the use of the Disputed Domain Name to resolve to a website which promotes competing goods to those of the Complainant, constitutes the registration and use of that trademark in bad faith.

The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <melnhof.com>, be transferred to the Complainant.

Michael D. Cover
Sole Panelist
Date: December 15, 2017

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