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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Montblanc-Simplo G.m.b.H. v. zhu lanxin / PrivacyProtect.org

Case No. D2013-0910

1. The Parties

1.1 The Complainant is Montblanc-Simplo G.m.b.H. of Hamburg, Germany, (the “Complainant”), represented by Winston & Strawn LLP, United States of America.

1.2 The Respondent is zhu lanxin of Chengdu, Sichuan Province, China; PrivacyProtect.org of Nobby Beach, Queensland, Australia (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <stylomontblancsoldes.com> (the “disputed Domain Name”) is registered with Cloud Group Limited (the “Registrar”).

3. Procedural History

3.1 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 Name. On the same day, 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 May 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also sent another email communication to the Complainant on the same day regarding the Registrar information. The Complainant filed an amended Complaint on May 30, 2013.

3.2 The Center verified that the Complaint together with the amended 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”).

3.3 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 June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2013.

The Center appointed Ike Ehiribe as the sole panelist in this matter on June 28, 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

4.1 The Complainant in these administrative proceedings is Montblanc- Simplo G.m.b.H., a German corporation organized under the laws of Germany and with its principal place of business in Hamburg, Germany. The Complainant including its affiliate companies and or predecessors is said to have designed, manufactured and sold sophisticated, luxury writing instruments under the MONTBLANC brand since 1906. The Complainant is also said to have expanded its product line to include writing accessories, watches, leather pieces, jewelry, fragrance and eyewear. The Complainant is said to have also derived its name from the most prominent and highest summit in the Alps and is also known for the extreme care it takes in making its products of the highest quality, long-lasting and durable.

4.2 The Complainant is said to operate in more than 70 countries around the world and distributes all Montblanc products exclusively through an international network of authorized jewelers and through more than 360 boutiques. The Complainant also operates its extensive website featuring information about its activities at “www.montblanc.com” as evidenced by web pages from the said website attached at Annex 4 to the Complaint. The Complainant has attached at Annex 5 to the Complaint, numerous copies of trademark registration certificates for the United States, China, Australia and France, which includes the element MONTBLANC. The Complainant therefore asserts that the MONTBLANC marks, as a result of extensive use and registration around the world, have become famous, obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention.

4.3 The Respondent in these administrative proceedings is zhu lanxin of Chengdu, Sichuan Province, China and PrivacyProtect.org based at Nobby Beach, Queensland, Australia and according to the WhoIs record, registered the disputed Domain Name <stylomontblancsoldes.com> on November 16, 2012.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the disputed Domain Name <stylomontblancsoldes.com> is confusingly similar to the Complainant’s MONTBLANC marks in that the disputed Domain Name fully incorporates the MONTBLANC mark. Furthermore, the Complainant argues that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words. In this respect, the Complainant refers to a previous UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Complainant further contends that the disputed Domain Name is confusingly similar because it consists of generic words such as “stylo” and “soldes” which are French words for “pen” which the Complainant sells and “sales”. The Complainant relies on a number of previous UDRP decisions such as Société AIR FRANCE v. Ted Chen, WIPO Case No. D2007-0528; ECCO Sko A/S v. Jacklee, WIPO Case No. D2011-0800 and F.Hoffmann-La Roche AG v. Private Whois cheapvalium24.com, WIPO Case No. D2012-0089.

5.2 The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed Domain Name as the Respondent has never been commonly known by any of the Complainant’s MONTBLANC marks nor any of the variations thereof or is not known to be using the disputed Domain Name in connection with a bona fide offering of goods and services. In support of this contention, the Complainant relies on previous UDRP decisions such as Harry Winston, Inc., and Harry Winston, S.A. v.h, WIPO Case No. D2008-1266 and Alstom v. Yulei, WIPO Case No. D2007-0424. The Complainant states further that the Respondent has never operated any bona fide or legitimate business and is not making a protected noncommercial or fair use of the disputed Domain Name. The Respondent is said to be using the disputed Domain Name to publish a website that offers products which compete directly with the complainant’s products and which may be counterfeit knockoffs of the Complainant’s own products as shown in a printout of the website at Annex 6 to the Complaint. In support of this contention, the Complainant refers to the following previous UDRP decisions, namely America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324 and Citigroup Inc. and Primerica Fin Servs, Inc v. Macc Gahary & gahary.com, NAF Claim No. 1298515. It is also asserted that 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 its MONTBLANC marks following Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102.

5.3 On the question of bad faith registration and use, the Complainant states that the Respondent registered the disputed Domain Name with either actual or constructive knowledge of the Complainant’s rights in the MONTBLANC marks by reason of the Complainant’s prior registration of those marks with the trademark offices of Australia and China where the Respondent is based, France where the Respondent’s website is targeted and in the United States. The Complainant therefore argues that the registration of a confusingly similar domain name despite actual or constructive knowledge without more is evidence of bad faith registration within the meaning of the Policy as held in Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412. Secondly, the Complainant states that the disputed Domain Name resolves to a website that offers products in competition with those offered under the MONTBLANC marks owned by the Complainant, such activities are said to be disruptive to the Complainant’s business and is therefore conclusive evidence of bad faith registration as found in previous UDRP cases such as S.A.S. Jean Cassegrain v. Yeon-Gu Kim, WIPO Case No. D2005-0275 and Paul Barnett Puckett, Individually and d/b/a Nature’s Window v. Christopher D. Miller, WIPO Case No. D2000-0297. Thirdly, the Complainant argues that the Respondent had no other reason for registering the disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s MONTBLANC marks and as such the nature of the disputed Domain Name in itself is evidence of bad faith registration and use, following Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. Finally, the Complainant submits that had the Respondent conducted even a preliminary trademark search it would have discovered the Complainant’s various trademark registrations in the MONTBLANC marks and the websites associated with the marks and numerous additional references in commerce, on the Internet and in publications evidencing the Complainant’s use of its marks in connection with the Complainant’s goods and services.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant had rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds from the unchallenged facts, and without any hesitation, that the disputed Domain Name <stylomontblancsoldes.com> is confusingly similar to the Complainant’s well-known MONTBLANC mark; a mark globally known, in the manufacture and sale of luxury writing instruments industry since 1906. The Panel finds that the mere addition of the generic words “stylo” and “soldes” which are French terms for “pen” which the Complainant is in the business of selling and “sales” which the Complainant is evidently engaged in, worldwide, does absolutely nothing to preclude a finding of confusing similarity considering that the disputed Domain Name incorporates the MONTBLANC mark entirely. See in this regard a number of previous UDRP cases cited by the Complainant. The first case is Oki Data Americas, Inc. v. ASD, supra where following numerous other UDRP panels, it was held that the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. See also, the case of ECCO Sko A/S v. Jacklee, supra where in considering the disputed domain name <eccoshoesaustralia.com> the panel found that the addition of the generic term “shoes” and the geographical indicator “Australia” did nothing to prevent a finding of confusing similarity to the complainant’s trademark in view of the fact that the complainant provided footwear under its ECCO trademark.

6.4 The Panel is therefore satisfied that the Complainant has established that the disputed Domain Name is confusingly similar to the Complainant’s MONTBLANC marks, thereby satisfying the requirement of paragraph 4(a)(ii) of the Policy.

B. Rights or Legitimate Interests

6.5 In addition, the Panel also finds that the Respondent has failed to provide any concrete evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant submits, the Respondent has not been authorized or licensed by the Complainant to own or use any domain name registrations which are confusingly similar to any of the Complainant’s MONTBLANC marks; the absence of such license and or authorisation is clear evidence of the Respondent’s illegitimate interests, as found in Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, supra.

6.6 From the adduced evidence in the form of website printouts attached at annex 6 to the Complaint, the Panel is satisfied that the Respondent is using the disputed Domain Name to direct Internet users to a website at which the Complainant’s products or counterfeit knock offs of the Complainant’s products are advertised for sale displaying the Complainant’s trademark, without disclosing the Respondent’s (lack of a) relationship with the Complainant. As submitted by the Complainant such usage cannot constitute a bona fide or legitimate business use as held in a number of previous UDRP decisions including America Online, Inc. v. Xianfeng Fu, supra. The Panel also finds that such unauthorized usage cannot be described as a legitimate noncommercial or fair use of the disputed Domain Name. Again, see generally, Oki Data Americas, Inc. v. ASD, Inc., supra.

6.7 In the circumstances the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.8 With specific reference to the question of bad faith registration and use, the Panel finds that the Respondent registered the disputed Domain Name in bad faith and engaged in continued bad faith use for the following reasons. In the first instance, the Panel finds that the Respondent must have known and ought to have known of the Complainant’s long established rights in the MONTBLANC marks by virtue of the Complainant’s prior registration of those marks in Australia and China where the Respondent is based and in France where the Respondent’s website is targeted. The Panel is satisfied that an ordinary preliminary trademark search would have revealed the Complainant’s various trademark registrations in the MONTBLANC marks and the websites associated with the Complainant’s marks. Accordingly, as submitted by the Complainant the registration of a confusingly similar domain name despite actual or constructive knowledge without more is clear evidence of bad faith registration within the meaning of the Policy following Exxon Mobil Corporation v. Joseph Fisher, supra. Secondly, the Panel is satisfied that the disputed Domain Name resolves to a website that offers the Complainant’s products or counterfeit knock offs of the Complainant’s products, displays the Complainant’s trademark and does not in any way disclose the Respondent’s (lack of a ) relationship with the Complainant.

6.9 Thirdly, from the foregoing the Panel has no hesitation in finding that the Respondent had no other reason for registering the disputed Domain Name except to exploit the reputation and goodwill of the Complainant’s marks and finds as submitted by the Complainant, that such exploitative usage by someone with no connection with the Complainant is in itself evidence of bad faith registration and use following Charles Jorden Holding AG v. AAIM, supra. Fourthly, as indicated at paragraph 5.4 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to rebut the evidence and submissions provided by the Complainant in these proceedings.

6.10 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent engaged in bad faith registration and continued bad faith use within the meaning of the Policy as specified in paragraph 4(a)(iii).

7. Decision

7.1 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 <stylomontblancsoldes.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: July 18, 2013.

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