WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perfetti Van Melle Benelux BV v. Prasanth Mohanachandran
Case No. DTV2010-0013
1. The Parties
The Complainant is Perfetti Van Melle Benelux BV of Breda, Netherlands, represented by Perfetti Van Melle S.p.A., Italy.
The Respondent is Prasanth Mohanachandran of Mumbai of Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <mentos.tv> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2010. On November 18, 2010, the Center transmitted by email to Network Solutions, LLC. A request for registrar verification in connection with the disputed domain name. On November 18, 2010, Network Solutions, LLC. 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 November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on December 28, 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 the owner of many trademark registrations and applications for Mentos word and/or device, 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.
Mentos has been used on candies in The Netherlands since the 1950s and nowadays Mentos products are widely advertised and sold successfully all round the world. The total net sales of Mentos products in 2009 amounted to € 484.171.000 and the advertising expenses to € 64.328.000. In India (home country of the Respondent) MENTOS was launched in 1999; the net sales in 2009 amounted to € 9.309.000 and the
advertising and promotional spending amounted to € 2.282.000.
One of the Complainant’s web sites, “www.mentos.com” is specifically dedicated to MENTOS and it
illustrates its history, products and promotions. MENTOS is also present in Wikipedia®, the famous Internet free encyclopedia.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is not only confusingly similar but identical to the Complainant’s mark MENTOS, a fancy expression protected by the Complainant’s trademark registrations all around the world. Being the two identical, consumers may well think there is a link between the Complainant’s MENTOS products and the disputed domain name.
Complainant contends that 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 name chosen for its domain name. At the moment the web page relating to the disputed domain name is parked by the registrar but the Complainant fears that the Respondent’s aim, when finally using it, would be 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. As a matter of fact, bearing in mind that MENTOS is a brand famous all over the world, it seems quite strange that the choice for the name of the Respondent’s domain name fell precisely on the word Mentos, identical to the Complainant’s trademark.
The Complainant has never received any information about the existence of the Respondent and 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 it should have done if its intention were to use the disputed domain name in good faith.
Complainant informs that as soon as the Complainant was informed of the registration of the domain name by the Respondent, it wrote an e-mail to the Respondent explaining the situation and asking for the transfer of the domain name. No reply was ever received from the Respondent.
Complainant further alleges that due to the identity between the Respondent’s domain name and the Complainant’s trademark and relating products, consumers may think there is a link between the two; thus, the Respondent’s domain name creates a likelihood of confusion with the Complainant’s trademark and products and intentionally attempts to attract Internet users, expecting to reach the web site relating to the Complainant’s products Mentos, to another variety of services. The Respondent could not be unaware of this risk when choosing to register its domain name as he could not be unaware of the existence of the Complainant’s products Mentos.
Complainant further contends that the bad faith of the Respondent is demonstrated also by the fact that a very simple search among international 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 a 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 Internet; therefore, a search with Google® or any other similar search engine would have been absolutely in his power.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The panel finds that Complainant’s registered trademarks are distinctive in his field of activity and have reached strong reputation and notoriety in many countries. The Panel finds that the disputed domain name is identical to Complainant’s MENTOS registered trademarks.
The Panel finds that this identity is likely to cause confusion and mislead Internet users who search for Complainant’s products and divert them to the domain names at issue.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in respect of the disputed domain name. Taking into consideration that Respondent has failed to respond to the Complaint, the Panel will analyze the facts and circumstances brought by Complainant to verify if Respondent lacks rights and legitimates interests in the disputed domain name.
As a matter of a fact, the Complainant has made a prima facie case in support of its allegations and, due to this, the burden of proof shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, according to paragraph 4(a) (ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the UDRP complaint was filed and at the time this decision was rendered, the disputed domain name was associated with a website that displayed pay-per-click advertisements of third parties. The panel finds that this is not a bona fide offering of goods and services.
Thus, in view of the above, the Panel finds that the Complainant has established the second condition of the paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s 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 site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the disputed domain name in bad faith.
Respondent has intentionally registered the domain name at issue which totally reproduces Complainant’s well-know trademark MENTOS. By the time the disputed domain name was registered, it is highly unlikely that the Respondent would have been unaware of the Complainant’s pre-existing rights on its trademark MENTOS when registering the disputed domain name.
Complainant’s allegations of bad faith are not contested. The evidence provided by the Complainant confirms that it had long been using its MENTOS registered trademark when the disputed domain name was registered. Moreover, the Complainant submitted evidence that its trademark is well-known. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the mark and, further, that Respondent knowingly infringed the Complainant’s trademark when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainant’s well-known trademark to attract users to Respondent’s website that displayed pay-per-click advertisements of third parties. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of these facts, the Panel finds that the Complainant has established the third element of the Paragraph 4(a) 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, <mentos.tv> be transferred to the Complainant .
Dated: January 12, 2011