WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montblanc-Simplo G.m.b.H. v. Azlina Nawe
Case No. D2013-0909
1. The Parties
The Complainant is Montblanc-Simplo G.m.b.H. of Hamburg, Germany, represented by Winston & Strawn LLP, United States of America.
The Respondent is Azlina Nawe of New York, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names <montblancfountainpensale.com> and <montblancpen-shop.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2013. On May 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 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 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on June 21, 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. These include the Complainant’s longstanding mark MONTBLANC, United States Registration No. 0776208, with a registration date of September 1, 1964, 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.”
Both of the disputed domain names were registered in July 2012 (indicated by the “creation date” in the WhoIs details, as confirmed by the Registrar).
5. Parties’ Contentions
The following is summarized from the Complaint.
The Complainant claims that its marks have become famous.
The disputed domain names are confusingly similar to the Complainant’s MONTBLANC mark because they fully incorporate the mark, and in the case of <montblancpen-shop.com>, the Respondent merely adds a hyphen, which does not render the disputed domain name any less confusing for purposes of the confusing similarity analysis.
The disputed domain names include the generic industry words “fountain” and “pen”, which the Complainant is in the business of selling, and the generic words “sale”, and “shop”. The inclusion of generic industry words, including generic words for the products that the Complainant is in the business of selling, adds confusion to the disputed domain names.
The Respondent lacks rights or legitimate interest in the disputed domain names. 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 names 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 names, and is not making a protected noncommercial or fair use of the disputed domain names. The Respondent is using <montblancfountainpensale.com>, and was using <montblancpen-shop.com>, to offer products which compete directly with the Complainant’s products and/or which may be counterfeit knockoffs of the Complainant’s own products. Currently, the Respondent is passively holding the disputed domain name <montblancpen-shop.com>.
The Complainant has not granted the Respondent any licence, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the Complainant’s.
The Respondent registered the disputed domain names with either actual or constructive knowledge of the Complainant’s rights in its marks by virtue of the Complainant’s prior registration of those marks with the trademark office of the United States, where the Respondent is a resident, where the Registrar is located, and where the Respondent’s websites are targeted, as well as France, where the Respondent’s websites are also 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 names have 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 names resolve to websites that offer 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 names 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 names are 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 names; and
(iii) the disputed domain names were registered and are 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.
A. Identical or Confusingly Similar
There is no dispute that the Complainant has registered rights in relation to MONTBLANC, including on the principal register of the United States Patent and Trademark Office. 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 names are not identical to the Complainant’s mark. Therefore the question is whether they are confusingly similar.
Both of the disputed domain names wholly incorporate the Complainant’s mark. They also add words that are descriptive of the Complainant’s products.
The Complainant argues, although provides little direct evidence, 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 into believing that the disputed domain names had some connection with the Complainant. In these circumstances, the Panel finds that the disputed domain names are 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 names. 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 names. Neither has the Respondent come forward with any explanation as to its use of the disputed domain names.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, 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 names 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) use 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 names intending to divert Internet users misled by them. 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 July 2012, both the disputed domain names have been used in this connection, although only one of them is currently so used. 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 names were registered and are being 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 names, <montblancfountainpensale.com> and <montblancpen-shop.com>, be transferred to the Complainant.
James A. Barker
Date: July 6, 2013