WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Staatliche Porzellan-Manufaktur Meissen GmbH v. Marina Tsoy

Case No. D2014-0569

1. The Parties

The Complainant is Staatliche Porzellan-Manufaktur Meissen GmbH of Meissen, Germany, represented by LS-IP Loth & Spuhler GbR Intellectual Property, Germany.

The Respondent is Marina Tsoy of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <meissen-porcelain.net> is registered with the Registrar REG.RU, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2014. On April 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 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.

On April 11, 2014, the Center received an email communication from the Registrar informing that the Respondent is ready to explore an amicable settlement to the dispute. On April 15, 2014, the Complainant requested a suspension of the proceeding for 30 days in order to explore the possibilities for a settlement of the dispute, on the basis of which on April 16, 2014, the Center notified a suspension of the proceeding until May 16, 2014. On May 14, 2014, the Center received an email communication from the Registrar confirming that the Respondent was ready to transfer the disputed domain name to the Complainant, followed by another email communication from the Registrar on May 16, 2014, which included what the Registrar referred to as the secret key for the transfer of the disputed domain name. On May 16, 2014, the Complainant requested an additional 30 day extension of the suspension of the proceedings, on the basis of which the Center extended the suspension until June 13, 2014. On June 13, 2014, the Complainant requested the reinstitution of the proceeding.

On June 20, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On June 24, 2014, the Complainant requested English to be the language of the proceedings. On June 23, 2014, the Respondent requested that Russian be the language of the proceedings.

On June 25, 2014 and June 27, 2014, the Registrar sent two email communications to the Center confirming that the disputed domain name was unlocked for transfer and including what the Registrar referred to as the secret key for the transfer of the disputed domain name. On July 1, 2014, the Complainant requested a 14 day suspension of the proceeding, on the basis of which on July 2, 2014, the Center suspended the proceeding until July 15, 2014.

On July 2, 2014, the Registrar sent an email communication to the Center stating that the Complainant had not taken action for the transfer of the disputed domain name, followed by another email communication, by which the Registrar informed the Center that the Complainant had not responded to the Registrar’s communications. On July 3, 2014, the Complainant confirmed that it would inform the Registrar once the transfer of the disputed domain name could take place.

On July 15, 2014, the Complainant requested a further two week suspension of the proceeding, on the basis of which on July 15, 2014 the Center extended the suspension until July 29, 2014.

On July 16, 2014, the Registrar sent an email communication by which it confirmed that it had taken certain actions necessary for the transfer of the disputed domain name. In response, on July 17, 2014, the Complainant sent an email communication, by which it informed the Respondent, the Registrar and the Center of the steps that had to be followed for the transfer of the disputed domain name.

On July 29, 2014, the Complainant sent an email communication, by which it informed the Center that the transfer of the disputed domain name could not take place yet due to technical problems, and requested a further extension of the suspension of the proceeding until August 12, 2014. On the basis of this request, on July 30, 2014 the Center extended the suspension until August 12, 2014.

On August 8, 2014, the Complainant sent an email communication, by which it again informed the Respondent, the Registrar and the Center of the steps that had to be followed for the transfer of the disputed domain name, and stated that it would request the reinstitution of the proceeding if these steps were not taken until August 12, 2014.

On August 12, 2014, the Complainant requested the reinstitution of the proceeding and stated that it had made several attempts to settle the dispute amicably and had given precise instructions to the Respondent how to transfer the disputed domain name, but the Respondent had failed to carry out these steps for the transfer.

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 August 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2014.

On August 15, 2014, the Respondent sent an email communication to the Center, by which it confirmed its readiness to transfer the disputed domain name to the Complainant, stated that it had signed certain documents for this purpose and forwarded a copy of a communication to it from the CORE Internet Council of Registrars, containing instructions for the transfer of the disputed domain name. The Respondent stated that she was unable to understand these instructions and that she did not receive an answer to her questions about this from CORE and from the Registrar, and asked for further instructions for the transfer.

On August 25, 2014, the Center informed the Respondent that the administrative proceeding was reinstituted upon request by the Complainant, because the parties could not reach a settlement during the suspension period. In response, on September 4, 2014, the Respondent again asked for instructions what she had to do to transfer the disputed domain name to the Complainant.

The Respondent did not submit any formal Response to the Complaint. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 4, 2014.

The Center appointed Assen Alexiev as the sole panelist in this matter on September 10, 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.

Before proceeding further, the Panel has decided first to deal with the issue whether this proceeding has to be terminated pursuant to the Rules, paragraph 17(a) in view of the apparent readiness of both parties to settle the dispute. In this regard, the Panel notes that the Respondent has repeatedly stated its consent to transfer the disputed domain name to the Complainant. At the same time, the Complainant has on its part repeatedly stated that the Respondent had not carried out the necessary steps for the transfer of the disputed domain name, as specified by the Complainant. In this situation it is obvious that the parties are not in agreement with each other about what exactly should be done and have not settled their dispute in a mutually acceptable way. In this situation, the Panel finds that there are no grounds for termination of the proceeding under the Rules, paragraph 17(a), and the Panel is not aware of any other grounds for termination under the Rules, paragraph 17(b). Therefore, the Panel shall proceed with the issuance of a decision on the substance of the dispute.

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In the present proceeding, the Complainant is a company registered in Germany and is represented by German counsel. The Respondent is a private person with an address in the Russian Federation. The Complainant has submitted the Complaint in English and has requested the proceeding to be held in English, and has supported this request with copies of correspondence in English exchanged between the parties which show that the Respondent uses this language for communication. The Respondent has requested the proceeding to be held in Russian but has provided no reasons for its request and has not denied that she has communicated with the Complainant in English. The website associated to the disputed domain name contains the following statement in English: “Web site for sale “meissen-porcelain.net” […]@mail.ru”. This statement obviously invites interested parties to submit offers for the purchase of the disputed domain name to the email address of the Respondent, and shows a readiness to communicate with such interested parties in English. The Center has communicated with the Respondent in both English and Russian, has responded to the communications from the Respondent made in Russian, and has informed the Respondent that it will accept a Response in either English or Russian.

In these circumstances, the Panel finds that using the English language in this proceeding will be fair and efficient and will ensure the equality of the parties without putting either of them at a disadvantage. Therefore, in exercise of its powers under paragraph 11(a) of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will accept and take into account the evidence and submissions of the Respondent made in the Russian language.

4. Factual Background

The Complainant is the well-known manufacturer of MEISSEN porcelain. It started manufacturing porcelain in the beginning of the 18th century, and presently offers more than 175,000 different porcelain products. The Complainant has continuously used the designation “Meissen” and the “Crossed Swords” symbol both as trade name for its manufactory and as a trademark for its porcelain and other products since the early 18th century, and these two signs are among the oldest known trademarks in the world that are still in use.

The Complainant is the owner of numerous trademark registrations that consist of or include the word “Meissen” as their most prominent element (the “MEISSEN trademark”), including the following trademarks:

- the trademark MEISSEN with registration No. 949873, registered in Germany on October 5, 1976, for goods in International Classes 11, 14, 19, 20, 21 and 34;

- the Community trademark MEISSEN PORCELAIN with registration No. 010295384, registered on May 4, 2012 with priority as of September 27, 2011 for goods and services in International Classes 14, 21, 35 and 41.

The Complainant is also the owner of a figurative trademark representing two crossed swords with registration No. 2068480, registered in Germany on June 20, 1994 for goods in International Classes 14, 21, 25, 28, 29, 30, 32, 33 and 34.

The Complainant has registered and uses the domain names <meissen.de>, <meissen.com>, and <meissener-porcelain.com>.

The Respondent registered the disputed domain name on April 3, 2012. It is currently linked to a website that displays the figurative trademark of the Complainant representing two crossed swords and an offer for sale of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the MEISSEN trademark has become well known and famous as a result of its permanent use since the early 18th century. Public opinion polls conducted in August/September 2003 show that a vast majority of consumers knew the expression “Meissen” and attributed very favorable characteristics to Meissen porcelain.

According to the Complainant, the disputed domain name is confusingly similar to the MEISSEN trademark of the Complainant. The disputed domain name consists of two elements - the distinctive MEISSEN trademark and the descriptive element “porcelain”, which is likely to be understood as an obvious reference to the products of the Complainant. The addition of the suffix “.net” is a purely technical necessity, meant to indicate that the disputed domain name is intended to be commercial.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has ceased to present an online presence or a functioning website under the disputed domain name. The Respondent owns no rights in the indication “Meissen”, and the Complainant has not licensed or otherwise permitted the Respondent to use the MEISSEN trademark or to register the disputed domain name. To the best of the Complainant’s knowledge the Respondent is not engaged in any business activities that utilize the disputed domain name and is not commonly known by the latter. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

In the Complainant’s submission, the Respondent’s registration, use and current passive holding of the disputed domain name were made in bad faith. Considering the renown of the MEISSEN trademark, it appears impossible to conceive of any circumstances in which the Respondent could legitimately use the disputed domain name. Rather, the Respondent has registered and used the disputed domain name to create a likelihood of confusion for the trade circles addressed. The Respondent’s website does not accurately disclose that there is no relationship between the Respondent and the Complainant, but falsely suggests that it is an official website endorsed by the Complainant. Thus, the Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s MEISSEN trademark as to the source, affiliation, or endorsement of the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its trademark rights in the MEISSEN trademark.

It is a common practice under the Policy to disregard the generic Top-Level Domains (“gTLD”) such as the “.net” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is its “meissen-porcelain” section. This section represents a combination of the word elements “meissen” and “porcelain”. The “meissen”’ element is identical to the Complainant’s MEISSEN trademark, and is the most prominent element in the disputed domain name. The word element “porcelain” is descriptive of the products of the Complainant. Rather than distinguishing the disputed domain name from the Complainant’s MEISSEN trademark, this additional element is more likely to reinforce the appearance of connection between the Complainant and the disputed domain name.

Taking the above into account, the Panel finds that the disputed domain name is confusingly similar to the MEISSEN trademark in which the Complainant has rights, and the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating a number of arguments in support of this contention, as described in Section 5 above. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any arguments in its defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the acquisition and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c), is present in its favor. Rather, the Respondent has repeatedly confirmed her readiness to transfer the disputed domain name to the Complainant, which the Panel understands as a confirmation that the Respondent does not claim any rights or legitimate interests in the disputed domain name.

The only other sources of information about the Respondent are the WhoIs information, provided by the Registrar, and the content of the website at the disputed domain name. The WhoIs information contains no evidence that the Respondent is commonly known by the disputed domain name. The disputed domain name is confusingly similar to the MEISSEN trademark of the Complainant, and the website linked to it contains a representation of the figurative trademark of the Complainant representing two crossed swords, and an offer for sale of the disputed domain name.

Taking these circumstances into account, the Panel finds that none of them substantiates any rights or legitimate interests of the Respondent in the disputed domain name. Rather, the confusing similarity between the disputed domain name and the MEISSEN trademark, combined with the display of the crossed sword figurative trademark of the Complainant on the Respondent’s website supports a conclusion that the Respondent attempts to attract to its website visitors that are looking for the Complainant’s products. Being carried out without the Complainant’s consent, such actions of the Respondent cannot be regarded as giving rise to rights or legitimate interests in the disputed domain name. Therefore, the Panel accepts that the Complainant’s prima facie case has not been rebutted, and finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The disputed domain name resolves to a website that uses the Complainant’s figurative trademark and contains an offer for sale of the disputed domain name. This content of the website at the disputed domain name makes it clear that the Respondent was aware of the Complainant’s goodwill and of the popularity of its products at the time of the registration of the disputed domain name, which is confusingly similar to the MEISSEN trademark. In the lack of any evidence or allegations to the contrary, the Panel accepts that this registration was made in the lack of any rights or legitimate interests in the disputed domain name in an attempt to benefit from the Complainant’s goodwill. These circumstances satisfy the Panel that the Respondent has registered the disputed domain name primarily for the purpose of selling its registration for a valuable consideration, which supports a finding of bad faith registration of the disputed domain name under Policy, paragraph 4(b)(i).

Therefore, and in the lack of any allegation or evidence to the contrary, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

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 <meissen-porcelain.net> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: September 30, 2014