WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montblanc-Simplo G.m.b.H v. Bi Ye
Case No. D2013-0858
1. The Parties
The Complainant is Montblanc-Simplo G.m.b.H of Hamburg, Germany, represented by Winston & Strawn LLP, United States of America (“U.S.”).
The Respondent is Bi Ye of Liupanshui, China.
2. The Domain Name and Registrar
The disputed domain name <penshopmontblanc.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 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on June 25, 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, Montblanc-Simplo G.m.b.H. (including its affiliate companies and/or predecessors), has designed, manufactured, and sold luxury writing instruments under the MONTBLANC brand since 1906. The Complainant has also expanded its product line to include, inter alia, writing accessories, watches, leather pieces, jewelry, fragrance and eyewear. The Complainant takes its name from the most prominent and highest summit in the Alps.
The Complainant operates in more than 70 countries around the world. All genuine MONTBLANC products are distributed exclusively through an international network of authorized retailers, jewelers, and more than 360 boutiques.
The Complainant operates its extensive website featuring information about its activities at “www.montblanc.com”.
The Complainant is the registrant of a family of marks which include the element MONTBLANC. This includes the longstanding mark MONTBLANC, U.S. Reg. No. 0776208, having a registration date of September 1, 1964, and a first use date of 1913, and a first use in interstate commerce date in 1913 covering “fountain pens, cases for fountain pens, ball point pens, ball point cartridges, ball point paste, mechanical pencils, lead for mechanical pencils.” The Complainant also provides evidence of a mark registered in China, where the Respondent seems to be located, with effect from May 1997.
The disputed domain name was registered on August 26, 2012, as confirmed by the Registrar. The WhoIs details for the disputed domain name indicate that the Respondent has an address in China.
5. Parties’ Contentions
The following is summarized from the Complaint:
The disputed domain name is confusingly similar to the Complainant’s mark because it fully incorporates it. Also, the disputed domain name is confusingly similar because it consists of the Complainant’s mark, with the inclusion of the generic words “pen,” which the Complainant is in the business of selling, and “sale”. The inclusion of generic words, including generic words that relate to the Complainant’s products, makes the disputed domain name confusingly similar to the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by any of the MONTBLANC marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted in the Complaint.
The Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name to offer products which compete directly with the Complainant’s 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 registrations which are confusingly similar to any of the Complainant’s MONTBLANC marks.
The Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant’s rights in its MONTBLANC mark by virtue of the Complainant’s prior registration of those marks with the trademark office of China, where the Respondent is a resident, and the United States, where the Respondent’s websites are targeted. The registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of the Policy, paragraph 4(a)(iii).
Also, the disputed domain name has been used to offer for sale counterfeit knock offs of the Complainant’s own products. Such activities fall squarely into the explicit example of bad faith registration and use found in the Policy at paragraph 4(b)(iv).
Further, the disputed domain name resolves to a website that offers products in competition with those of the Complainant. Such activities are disruptive to the Complainant’s business and therefore conclusive evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(b)(iii).
The Respondent did not reply to the Complainant’s contentions, nor make any other communication in connection with this case.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below.
The Panel also notes that the facts of this case are closely similar to another case in which this Panel is also involved: Montblanc-Simplo G.m.b.H. v. Azlina Nawe, WIPO Case No. D2013-0909. Those similarities include the approximate timing of the registration of the disputed domain names (in that case, July 2012, in this case, August 2012) and close similarities between the respondents’ websites. These similarities may indicate that there is some relationship between the Respondent in this case, and the respondent in that one, despite the lack of direct evidence and the superficial differences in the respondents’ registration details. Given these similarities, the Panel has adopted similar reasoning and argument in this case.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has registered rights in relation to MONTBLANC, including in China where the Respondent has its listed address. While the Complainant’s mark is also a geographical term, the Complainant has clearly demonstrated its registered rights, and that it uses the mark for goods (in particular, luxury pens) other than those that are described by or related to the geographical meaning of the term.
The disputed domain name is not identical to the Complainant’s mark. Therefore the question is whether it is confusingly similar.
The disputed domain name wholly incorporates the Complainant’s mark, with the prefix “penshop”. The latter term is one which is, self-evidently, closely associated with the Complainant’s business.
The Complainant argues, although provides little direct evidence in the case record, that its mark is famous. Despite this, the Panel has little difficulty finding that the Complainant’s mark is well known and has been used in commerce for a substantial period.
These facts, taken together, strongly suggest that an ordinary Internet user might easily be confused in believing that the disputed domain name has some connection with the Complainant. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark for the purposes of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. For the reasons further elaborated below, in relation to bad faith, there is no evidence in the case file that the Respondent has made a legitimate or bona fide use of the disputed domain name or that the Respondent has ever been commonly known by the disputed domain name. Neither has the Respondent come forward with any explanation as to its use of the disputed domain name.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, for the purpose of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s trademark rights and reputation. See, e.g., SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734. Put another way, bad faith fundamentally is demonstrated by an intention to take advantage of the Complainant’s rights. This is supported by paragraph 4(b) of the Policy, which sets out illustrative examples of bad faith. Each of the four examples in paragraph 4(b) uses language that relates to a respondent’s intent (e.g. “for the purpose of selling”, “to prevent” the owner from reflecting the mark in a domain name, “for the purpose of disrupting”, and “intentionally” attempting to attract Internet users).
The Panel finds that there is little doubt in this case that the Respondent registered the disputed domain name intending to misleadingly divert Internet users. The Respondent’s website purportedly offers to sell the Complainant’s products (although for suspiciously low prices, which is suggestive of the Complainant’s claim that the Respondent’s website offers counterfeit products). The Complainant provides evidence that, in May 2013, the disputed domain name was used in this connection. The Respondent chose to provide no challenge to the allegations in the Complaint to suggest otherwise.
For these reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith for the purpose of paragraph 4(a)(iii) of the Policy.
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 <penshopmontblanc.com> be transferred to the Complainant.
James A. Barker
Date: July 9, 2013