WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montblanc-Simplo G.m.b.H v. Jing Yang
Case No. D2013-0856
1. The Parties
The Complainant is Montblanc-Simplo G.m.b.H of Hamburg, Germany, represented by Winston & Strawn LLP, United States of America (“USA”).
The Respondent is Jing Yang of Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <perfectmontblanc.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2013. On May 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2013, the Registrar 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 May 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2013.
The Center appointed Mladen Vukmir as the sole panelist in this matter on June 27, 2013. 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 corporation organized under the laws of Germany, having its principal place of business at Hamburg, Germany. The Complainant is the exclusive owner of famous and well-known MONTBLANC trademarks registered in USA and China for luxury writing instruments.
The Complainant protected its MONTBLANC trademarks by obtaining trademarks registrations, as listed and evidenced in Annex 5, which includes the following verbal trademarks in class 16:
- MONTBLANC, USA No. 0776208, registered on September 1, 1964;
- MONTBLANC, China, No. 996480, registered on May 7, 1997.
According to the WhoIs (Annex 1 to the Complaint), the disputed domain name was registered with the Registrar on November 15, 2011.
The Panel reviewed the print-outs of the representative pages of the website, to which the disputed domain name resolves, submitted by the Complainant in Annex 6, and determined that the Respondent uses the MONTBLANC trademarks throughout the website associated with the disputed domain name, as well as in the “title bar” of said website, and advertises for sale various purported Montblanc products.
5. Parties’ Contentions
The Complainant contends that:
- The MONTBLANC trademarks are famous and well-known under the laws of the USA and China;
- The Complainant has produced and sold sophisticated and luxury writing instruments under the MONTBLANC brand since 1906;
- The MONTBLANC trademarks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention;
- The disputed domain name is confusingly similar to the MONTBLANC trademarks;
- The Respondent is using the disputed domain name to offer products which directly compete with the Complainant’s own products and/or which may be counterfeit knockoffs of the Complainant’s own products;
- The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registration which are confusingly similar to any of MONTBLANC trademarks;
- The Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant’s rights in the MONTBLANC trademarks by virtue of the Complainant’s prior registration of those trademarks with the trademark office of the China, where the Respondent is resident, and the USA, where the Respondent’s website is targeted to;
- The disputed domain resolves to a website that offers products in competition with those offered under the MONTBLANC trademarks;
- The reason for registering the disputed domain name is to benefit from the reputation and goodwill of the MONTBLANC trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in the light of the Complaint, the absence of a response, the Policy, Rules, Supplemental Rules and other applicable substantive law, pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, each of the following:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of MONTBLANC trademarks in the USA and China, which are listed under Section 4 Factual Background. Further, the Complainant has established that its MONTBLANC trademarks are internationally well-known trademarks within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property.
Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the Complainant is generally sufficient to satisfy the threshold requirement (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”).
Besides this general view, it is well established that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2, WIPO Overview 2.0).
The disputed domain name <perfectmontblanc.com> consists of three parts, of which the main part is identical to the Complainant’s distinctive trademark MONTBLANC used in the disputed domain name in its entirety, without any modification. The remaining part is the generic term “perfect” and the applicable generic top-level domain (gTLD) suffix “.com”. Therefore, it is evident that the disputed domain name incorporates the Complainant’s MONTBLANC trademark in its entirety and it is clearly recognizable within the disputed domain name.
This Panel further determines that the Complainant has presented a sufficient amount of evidence showing that its MONTBLANC trademarks have been extensively used, including on the Internet, and are, in fact, well-known marks worldwide, including within the relevant Internet community. The Complainant appositely pointed out the longstanding trademark protection of MONTBLANC, USA No. 0776208, being registered on September 1, 1964, with a first use date of 1913, as well as the first use in interstate commerce since 1913 for “fountain pens, cases for fountain pens, ball point pens, ball point cartridges, ball point paste, mechanical pencils, lead for mechanical pencils”, as provided in the materials contained in the Annex 5 of the Complaint.
Further, the Panel upholds the Complainant’s contention that the generic term “perfect”, used by the Respondent in combination with the Complainant’s trademark MONTBLANC in creation of the disputed domain name, is insufficient for establishing indubitable difference between the disputed domain name and MONTBLANC well-known trademarks. The generic term “perfect” is merely emphasizing the characteristics of the Montblanc products, which contributes to the overall similarity of the Complainant’s trademark MONTBLANC and the disputed domain name, in particular in respect of the products of the Complainant. Therefore, the Panel determines that consumers will likely associate this term exclusively with the Complainant and its products owing to the international goodwill that the Complainant has developed in the MONTBLANC trademarks over the years.
Moreover, since from the website operated under the disputed domain name, it is evident that it offers for sale various purported Montblanc products, Internet users will most likely be confused into thinking that the subject matter website is associated with or endorsed by the Complainant because of the use of the MONTBLANC trademarks.
In general terms, it should be noted, that UDRP panels have found confusing similarity in several earlier UDRP cases based on the circumstances involving domain names comprised of a known trademark and a generic term. Confusing similarity was found in each instance because the term added was not powerful enough to overcome the strong mental association created by the trademark itself.
See the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0., and particularly, Ecco Sko A/S v. Jacklee, WIPO Case No. D2011-0800; Entertainment Shoping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. RBlue, WIPO Case No. D2005-0290; F.Hoffmann-La Roche AG v. Avieltech Consultant, WIPO Case No. D2007-0930.
Taking into consideration the reputation of the Complainant’s MONTBLANC trademarks, as well as the previous practice in the UDRP, in this Panel’s view, the word “perfect” is not sufficient to overcome the overall confusing similarity between the disputed domain name and the Complainant’s MONTBLANC trademarks.
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the Policy, paragraph 4(a)(i), i.e. that the disputed domain name <perfectmontblanc.com> is confusingly similar to the Complainant’s MONTBLANC trademarks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP…If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant…”
In accordance with the Policy and paragraph 3(b)(ix)(2) of the Rules, the Complainant must describe the grounds on which the Complaint is made, including, in particular, why the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject matter of the Complaint.
In the case at hand, the Complainant has established that it is the owner of well-known MONTBLANC trademarks protected in USA and China, and that it has extensively used the same trademarks by designing, manufacturing, and selling sophisticated and luxury writing instruments under the MONTBLANC brand since 1906, and by presently operating in more than 70 countries worldwide, as well as on the Internet through its website “www.montblanc.com”.
The Complainant furthermore states that the lack of rights or legitimate interests is supported by the fact that the Respondent has never been commonly known by any of MONTBLANC trademarks or by any variations thereof, and has never used any trademark or service similar to the disputed domain name by which it may have become known, in ways other than the infringing use which is the subject matter of this case.
The Complainant also asserts that the Respondent is using the disputed domain name to offer products which compete directly with the ones of the Complainant and /or which may be counterfeit knockoffs of the Complainant’s own products.
In favor of the above, the Complainant states that the Respondent has not been granted any license, permission, or authorization under which it could own or use any domain name registrations which are confusingly similar to any of the MONTBLANC trademarks.
The Complainant rightfully claims that such use does not constitute bona fide or legitimate business use.
See the generally adopted panel views contained in the following UDRP decisions: Alstom v. Yulei, WIPO Case No. D2007-0424; Harry Winston, Inc. and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324.
The Respondent failed to deliver a Response to the Complaint or give any explanation as to why the disputed domain name was chosen and registered.
The Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.
In addition, the Panel accepts the Complainant’s contentions that there is no indication that the Respondent is commonly known by the disputed domain name, that it has used the same in connection with bona fide offering of goods and services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. On the contrary, the Panel finds that it can be safely concluded that the Respondent deliberately chose to include the Complainant’s MONTBLANC trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers, and that such use cannot be considered as a legitimate noncommercial or fair use.
Given the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.
Considering the Complainant’s allegation that the Respondent is a resident of China and that the website is targeted to the USA, which are the territories covered by the Complainant’s MONTBLANC trademark registration, the Panel hereby determines that the Respondent registered the confusingly similar disputed domain name being aware of the Complainant’s goodwill in order to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s MONTBLANC trademarks.
From the content available on the website operated under the disputed domain name <perfectmontblanc.com> presented by the Complainant in the Annex 6 to the Complaint, it is clear that the Respondent uses the disputed domain name for selling what appears to be counterfeits of the Complainant’s own products, which is an immediate example of bad faith registration.
The Panel further finds that the aforementioned evidence shows that the website under disputed domain name offers products which are in competition with those offered under the MONTBLANC trademarks, which is to be considered as disruptive to the Complainant’s business operations and therefore, an indication of bad faith.
With regard to bad faith at the time of registration, the Panel notes that it is unlikely that the Respondent was unaware of the Complainant and its MONTBLANC trademarks.
Finally, the Panel determines that the Respondent uses said website to advertise for sale purported Montblanc products with the intent to achieve commercial gain by misleadingly diverting consumers.
Therefore, it is safe to assume that the Respondent was aware of the Complainant, its MONTBLANC trademarks and the Complainant’s business, and that it registered the disputed domain name in order to trade on the renown of the Complainant’s trademarks and goodwill.
The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <perfectmontblanc.com> be transferred to the Complainant.
Date: July 11, 2013