WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Staatliche Porzellan-Manufaktur Meissen GmbH v. Jolanta Kozicki
Case No. D2014-0138
1. The Parties
The Complainant is Staatliche Porzellan-Manufaktur Meissen GmbH of Germany, represented by LS‑IP Loth & Spuhler GbR Intellectual Property Law, Germany.
The Respondent is Jolanta Kozicki of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <vonmeissen.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2014. On January 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2014, 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 registrar also verified that the disputed domain name expired on January 11, 2014. After inquiry from the Center, on February 5, 2014 the Registrar confirmed that the disputed domain name would remain on “lock” for the duration of proceedings, and indicated that either the Complainant or the Respondent can renew the disputed domain name by contacting the domain name reseller, Fasthosts Internet Limited (the “Reseller”). This information was forwarded by the Center to the parties on February 6, 2014.
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”).
On February 6, 2014, the Complainant contacted the Reseller about renewing the disputed domain name. The Reseller did not respond. After inquiry from the Center, the Complainant emailed the Reseller again on March 6, 2014 who did not respond. The Center then emailed the Registrar who indicated on March 12, 2014 that the disputed domain name had been renewed with a new expiration date of January 11, 2015.
Although documentary delivery of the Complaint was made and signed for on March 19, the Center was notified on April 30 that the delivery had been returned, apparently earlier that day, as the receiver had moved. However, electronic delivery was effected and in the circumstances all reasonable means were employed by the Center to achieve notification.
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 March 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2014.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on April 28, 2014. 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 trademark MEISSEN was first registered on October 5, 1976 in West Germany with a priority date of July 3, 1972 for “all kinds of products or goods made out of porcelain” (Registration No. 949873). The trademark MEISSEN also obtained registration as a European trademark on June 16, 2006 (No. 3743663) for porcelain wares. The trademark MEISSEN is also registered in a number of other jurisdictions.
The disputed domain name was registered on January 11, 2007.
5. Parties’ Contentions
The Complainant asserts that it has continually used the designation MEISSEN since the 18th century, and uses it in all its advertising activities. It also uses the domain names <meissen.com> and <meissen.de>, as well as <meissen-manufactur.com> and <meissener-porcelain.com>. The Complainant contends that its MEISSEN trademark must be regarded as a well-known and famous trademark.
The Complainant asserts that some polling conducted in 2003 indicated that 73.4% of all persons recognized the Complainant’s trademark. Only 10% of the persons polled thought of the city Meiβen (Meissen) when given the Complainant’s trademark MEISSEN. According to the Complainant 81.6% of all consumers think of the porcelain manufacturer when presented with MEISSEN. Further polling in 2011 indicated that over 90% of trading circles recognized MEISSEN. This polling considered MEISSEN to be a famous trademark, according to the Complainant.
The Complainant contends that the present Complaint is well founded, as it is in substance no different from five other Complaints in which the Complainant was successful. The Complainant also asserts that it has been successful in legal proceedings against Von Meissen Ltd in the District Court at Cologne, Germany in relation to the domain name <www.vonmeissen.com>. The present Respondent is listed as “Managing Director of Von Meissen Ltd” on LinkedIn, according to the Complainant. The Complainant obtained an order from the Cologne court for an immediate injunction against the continued use of <www.vonmeissen.com> on May 18, 2010.
The Complainant assumes that the present Respondent has knowledge of the injunction thus obtained, but notes that the Respondent has nonetheless neither relinquished nor stopped using the disputed domain name. However, the disputed domain name did not yield any response at all when the Complainant sought to access it.
Further, the Complainant contends that due to the high level of similarity between the disputed domain name and the trademark MEISSEN, people addressing the disputed domain name expect to be linked to the Complainant’s website. The Complainant’s trademark is included in the disputed domain name in identical form. The addition of “von” only indicates that products issue from the Meissen company. According to the Complainant the relevant part of the disputed domain name is “meissen” which is itself clearly distinctive.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name, nor has it obtained any authorizations from the Complainant. The Respondent is not engaged in any business activities that utilize the disputed domain name, nor known by it. It has not and does not make any legitimate or fair use of the disputed domain name, to the Complainant’s knowledge, and moreover, to the Complainant’s knowledge, uses “vonmeissen” to designate goods not emanating from the Complainant and thus causes confusion amongst trade circles.
Further, the Complainant asserts that due to the famous and well-known status of its trademark, even inaction or passive holding in relation to a disputed domain name incorporating the trademark constitutes use in bad faith. Given the fame attached to the Complainant’s trademark, it appears impossible to contemplate any use of the disputed domain name could be legitimate.
Finally, the Complainant asserts that the Respondent uses the disputed domain name to attract and divert traffic to its own business, to capture and profit off the goodwill attached to the Complainant’s trademark, which does not constitute use in good faith. The false suggestion that the website is an endorsed or official website of the Complainant is not in good faith as it does not accurately identify the relationship between the Complainant and the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trademark MEISSEN. However, for the present purposes the suffix “.com” may be ignored, and addition of the generic word “von” (meaning from or of) does nothing to distinguish the disputed domain name from the Complainant’s widely-known trademark. Although “vonmeissen” may be a person’s surname it also suggests products or goods emanating from “Meissen”, i.e. the Complainant. In any case, the dominant part of the combination that will draw the attention of an internet user is “meissen”, as it is highly distinctive and well recognized by consumers in relation to porcelain. Further, the Complainant’s own polling indicates that few consumers identify “Meissen” with the town of that name. The overwhelming impression of the disputed domain name is one of association with the Complainant’s well-known mark for porcelain goods.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s MEISSEN trademark.
B. Rights or Legitimate Interests
The Respondent is not known by the name “von Meissen” nor has it made any legitimate business use of that name, according to the record that is before the Panel in this matter. The Respondent is apparently connected with a company referred to as “von Meissen Ltd” against which the Complainant obtained a court order for an injunction from the Court at Cologne, Germany. But the Respondent has not made any assertion of that nature in this matter, nor do the recorded details concerning the disputed domain name make any mention of it.
The Complainant has not authorized the Respondent to utilize its trademark MEISSEN in any way nor to register the disputed domain name or to use it. There is nothing on the record to indicate that the Respondent conducts any legitimate business in relation to the Complainant or its products, or, as already stated, in any way under the name “von Meissen” or “Meissen”, or has any connection with the town Meiβen (Meissen). When the disputed domain name was accessed by the Panel, it resolved to a website displaying a number of sponsored listings, as well as an indication that the domain name had expired. However, communications from the Registrar indicate that the registration of the disputed domain name had been renewed with a new expiration date of January 11, 2015. Given the consumer recognition of the Complainant’s MEISSEN trademark it is difficult to envisage what legitimate use the Respondent could possibly contemplate during the extension term in the context of the current record.
In the circumstances the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Registration of a domain name that incorporates a widely known trademark is not likely to have occurred in good faith, certainly where there is no indication on the record of any legitimate use or connection with the Complainant and/or its mark. In this case there is no indication before the Panel of any legitimate use of the name “von Meissen” or ”Meissen” by the Respondent, or of any business activity that would warrant the registration of the disputed domain name in good faith. Passive holding of a domain name that incorporates a widely-known mark has often been held to be in bad faith by UDRP panelists, unless there are particular additional circumstances that render legitimacy to the registration or use. The Respondent has not replied to the Complainant’s contentions, and has apparently been involved with or at least aware of litigation conducted successfully in relation to the disputed domain name in Germany.
The Panel therefore holds that the disputed domain name is registered and 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 <vonmeissen.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: May 14, 2014