WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montblanc-Simplo GmbH v. Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Abhishek10533, Mont India
Case No. D2019-2912
1. The Parties
Complainant is Montblanc-Simplo GmbH, Germany, represented by SILKA Law AB, Sweden.
Respondent is Domain Admin Privacy Protect, LLC (PrivacyProtect.org) / Abhishek10533, Mont India, India.
2. The Domain Name and Registrar
The disputed domain name <montblancindia.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2019. On November 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2019, 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 Complainant on December 5, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 5, 2019.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. Respondent sent informal emails to the Center on December 5, 20191 and December 9, 2019. The Center proceeded with the Panel appointment on January 8, 2020.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 13, 2020. 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
Complainant is the owner of registrations for the word, and word and design/device, trademark MONTBLANC on trademark registries of various countries, including through two international trademark registrations under the Madrid System designating India: registration number 1363639 (word), registration dated July 14, 2017, in international class (IC) 34, covering, inter alia, cigar cutters and ashtrays, and; registration number 1363473 (word and device), registration dated July 11, 2017, in IC 34, covering, inter alia, cigar cutters and ashtrays. Complainant is owner of registration of the word, and word and design, trademark MONTBLANC on the Principal Register of the United States Patent and Trademark Office (USPTO), including registration number 0776208, registration dated September 1, 1964, in IC 16, covering, inter alia, fountain pens and ballpoint pens.
Complainant designs, manufactures and sells writing instruments, watches, jewelry, leather goods, fragrances, and eyewear. Complainant has made and sold writing instruments identified by the MONTBLANC trademark since 1906. Complainant operates in more than 70 countries and has more than 360 boutique stores. Complainant operates a commercial website at “www.montblanc.com”,2 and maintains an active social media presence. The Panel takes administrative notice that the MONTBLANC trademark is well known among consumers of luxury writing implements.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. That verification indicates that the disputed domain name was registered by Respondent on April 19, 2019.
Respondent has used the disputed domain name to direct Internet users to a website that prominently displays Complainant’s word, and word and device, trademarks, and is similar in a number of respects to Complainant’s website. Respondent’s website offers for sale Complainant’s products priced in Indian rupees and includes a request for registration and login by users. Respondent is not an authorized seller or reseller of Complainant’s branded products, and Complainant believes that Respondent is selling counterfeit copies of Respondent’s products. Respondent’s website prominently displays a promotional code offer. Respondent’s website identifies its copyright owner as “MONTBLANC INDIA”.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges ownership of rights in the trademark MONTBLANC and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; (2) Respondent has not been commonly known by Complainant’s trademark; (3) Respondent’s addition of the term “India” to Complainant’s trademark in the disputed domain name falsely conveys the impression of a legitimate connection to Complainant, and; (4) Respondent is using the disputed domain name to deceptively capture the personal data of Internet users.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant’s rights in its trademark predate Respondent’s registration of the disputed domain name; (2) Respondent’s prominent use of Complainant’s trademark on its website along with products purported to be those of Complainant make evident that Respondent was and is cognizant of Complainant’s trademark and business, and; (3) the design of Respondent’s website is intended to convey an impression of association with Complainant and to mislead consumers.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent replied to the Complaint as follows:
Its Abhishek , i bought this domain name and sold it to some unknown person meet on Internet.
I don’t know anything else this matter.
Please track the current user and owner of this domain.”
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. There is no indication on the record of this proceeding that email transmission of the Complaint to Respondent encountered difficulty. Respondent filed an informal response to the Complaint indicating that notice was received. The express courier delivery service engaged by the Center was unable to deliver the hard copy Complaint to Respondent because of a false address. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are 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 has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark MONTBLANC including through international registration under the Madrid System (designating India), and registration at the USPTO, as well as identifying use in commerce. Respondent has not contested Complainant’s rights in the MONTBLANC trademark. The Panel determines that Complainant has rights in the MONTBLANC trademark.
The disputed domain name directly incorporates Complainant’s trademark and appends the geographic term “India”. Because Complainant’s trademark is readily identifiable within the disputed domain name, and because addition of the geographic term does not dispel potential Internet user confusion, the Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has established rights in the trademark MONTBLANC and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has asserted that he sold and transferred the disputed domain name to a third-party. That claim is unsubstantiated, and the Panel does not further address it.
Respondent has not otherwise replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain does not on its face otherwise suggest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location” (Policy, paragraph 4(b)(iv)).
Respondent is using the disputed domain name that is confusingly similar to Complainant’s well known trademark to operate a website that makes substantial use of Complainant’s trademark in association with the unauthorized sale of products purporting to be supplied by Complainant (but which Complainant believes to be counterfeit). Respondent manifestly was aware of Complainant’s rights in its trademark when it registered the disputed domain name and designed its website. Respondent has used Complainant’s trademark to identify the copyright owner of Respondent’s website, heightening the confusion as between Respondent and Complainant as the source or sponsor of the website. Respondent registered and is using the disputed domain name to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant as the source, sponsor, affiliate or endorser of Respondent’s website. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning 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 <montblancindia.com> be transferred to Complainant.
Frederick M. Abbott
Date: January 27, 2020
1 The Panel notes that Respondent’s initial response consisted solely of a snippet of HTML code used to create spacing, i.e. “ ”.
2 Complainant also is registrant of several MONTBLANC-formative domain names that redirect to its principal website.