WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Montblanc-Simplo G.m.b.H. v. fu jian da tuo wang luo you xian gong si

Case No. D2013-0908

1. The Parties

Complainant is Montblanc-Simplo G.m.b.H. of Hamburg, Germany, represented by Winston & Strawn LLP, United States of America.

Respondent is fu jian da tuo wang luo you xian gong si of Fuzhou, Fujian Province, China.

2. The Domain Names and Registrar

The disputed domain names <montblancpens-a.com>, <montblancpens-b.com>, <montblancpens-c.com> and <montblancpens-d.com> are registered with Shanghai Yovole Networks, Inc. (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 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 28, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent of the Complaint, and the proceedings commenced on June 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 25, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on July 1, 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

Complainant, Montblanc-Simplo G.m.b.H, is a company incorporated in Hamburg, Germany. Complainant has designed, manufactured, and sold sophisticated, luxury writing instruments under the Montblanc brand since 1906, and it operates in more than 70 countries around the world.

Complainant has exclusive rights in the MONTBLANC marks. It is the exclusive owner of famous and well-known registered trademarks globally, including the United States (since 1964) and China (since 2007; see Annex 4 to the Complaint). Complainant operates its extensive website featuring information about its activities at “www.montblanc.com”. (Annex 3 to the Complaint).

Respondent is fu jian da tuo wang luo you xian gong si of Fuzhou, Fujian Province, China. Respondent registered the disputed domain names <montblancpens-a.com> and <montblancpens-b.com> on August 17, 2012, and registered the disputed domain names <montblancpens-c.com> and <montblancpens-d.com> on August 19, 2012 respectively, long after the MONTBLANC marks became internationally famous (Annex 4 to the Complaint).

5. Parties’ Contentions

A. Complainant

(a) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.

Complainant has designed, manufactured, and sold sophisticated, luxury writing instruments under the Montblanc brand since 1906, and also expanded its product line to include, inter alia, writing accessories, watches, leather pieces, jewelry, fragrance and eyewear.

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.

Complainant operates its extensive website featuring information about its activities at “www.montblanc.com” (see Annex 3 to the Complaint).

Complainant is the exclusive owner of famous and well-known registered trademarks MONTBLANC globally, including the United States (since 1964) and China (since 2007; see Annex 4 to the Complaint).

Due to the extensive use and registration of the MONTBLANC marks around the world, the MONTBLANC marks have become famous under the laws of the United States and China.

The disputed domain names are confusingly similar to MONTBLANC marks because they fully incorporate the MONTBLANC marks. Also, they are confusingly similar because they consist of the MONTBLANC marks, with the inclusion of the generic industry word “pens”, which Complainant is in the business of selling, and the letters “a”, “b”, “c” or “d”.

The inclusion of a generic industry term which Complainant is in the business of selling only adds confusion to the disputed domain names, and the inclusion of generic elements such as letters do not alter the confusing similarity of the disputed domain names for purposes of the confusingly similar analysis.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has never been commonly known by any of 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 herein.

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. By contrast, Respondent is/was using the disputed domain names to publish a website that offers products which compete directly with Complainant’s own products and/or which may be counterfeit knockoffs of Complainant’s own products.

Respondent is currently using the disputed domain names <montblancpens-b.com>, <montblancpens-c.com>, and <montblancpens-d.com> to direct customers to competing businesses by promoting a hosting company’s webpage. (Annex 5 to the Complaint). Such uses do not constitute a bona fide or legitimate business use.

Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of MONTBLANC marks.

Respondent registered the disputed domain names with either actual or constructive knowledge of Complainant’s rights in the MONTBLANC marks by virtue of Complainant’s prior registration of those marks in China, where Respondent is a resident, and the United States, where Respondent’s websites are targeted.

Registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Policy, paragraph 4(a)(iii).

The disputed domain names have been used to publish websites offering for sale counterfeit knockoffs of Complainant’s own products. Such activities fall squarely into the explicit example of bad faith registration and use found in the Policy, paragraph 4(b)(iv).

The disputed domain names currently or formerly resolved to websites that offer(ed) products in competition with those offered under the MONTBLANC marks. Such activities are disruptive to Complainant’s business and therefore conclusive evidence that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy, paragraph 4(b)(iii).

There is no reason for Respondent to have registered the disputed domain names other than to trade off of the reputation and goodwill of the MONTBLANC marks. As such, the nature of the disputed domain names themselves evidence bad faith registration and use.

Had Respondent conducted even a preliminary trademark search, it would have found Complainant’s use of its marks in connection with the Complainant’s goods and services.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain names involved are in ASCI characters and contain English words, such as “pens”.

(b) The websites published in association with the disputed domain names were in English.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Germany, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain names include English word “pens” and Latin characters “a”, “b”, “c” and “d” (with hyphen) respectively (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain names <montblancpens-a.com>, <montblancpens-b.com>, <montblancpens-c.com> and <montblancpens-d.com> are registered in Latin characters and particularly in English language, rather than Chinese script; (b) the websites at the disputed domain names are English-based websites and Respondent is apparently doing business in English through these websites (Annex 5 to the Complaint); (c) the websites appear to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be transferred:

(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the MONTBLANC marks acquired through registration. The MONTBLANC mark has been registered worldwide including in the United States and China, and Complainant has a widespread reputation in designing, manufacturing, and selling sophisticated, luxury writing instruments under the Montblanc brand.

The disputed domain names comprise the MONTBLANC mark in its entirety. The disputed domain names <montblancpens-a.com>, <montblancpens-b.com>, <montblancpens-c.com> and <montblancpens-d.com> only differ from Complainant’s trademark by the additions of the word “pens” and one Latin letter (“a”, “b”, “c”, or “d”) (connected with hyphen) to the mark MONTBLANC. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain names.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive term “pens” and one Latin letter (“a”, “b”, “c”, or “d”) connected by “-” as suffixes to Complainant’s mark fail to distinguish to this Panel the disputed domain names from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. The “pen” is one of products of Complainant. Internet users who visit <montblancpens-a.com>, <montblancpens-b.com>, <montblancpens-c.com> and <montblancpens-d.com> are likely to be confused and may falsely believe that these disputed domain names are operated by Complainant for selling Montblanc-branded products, particularly pens.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain names and the MONTBLANC marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain names:

(i) use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain names; or

(iii) legitimate noncommercial or fair use of the disputed domain names.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the MONTBLANC mark, including registration in the United States (since 1964) China (since 2007) – (see Annex 4 to the Complaint) which long precedes Respondent’s registrations of the disputed domain names (August 2012).

According to Complainant, Complainant is the world’s leading company in designing, manufacturing, and selling sophisticated, luxury writing instruments under the Montblanc brand. It operates in more than 70 countries around the world, and distributes its Montblanc products exclusively through an international network of authorized retailers, jewelers, and more than 360 boutiques.

Moreover, Respondent is not an authorized dealer of Montblanc branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of the word “Montblanc” in its business operation or the use of the MONTBLANC marks and design on its website (without disclaimer or other clarifying details; see Annex 5 of the Complaint - the webpage resolved by <montblancpens-a.com>). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the MONTBLANC mark or to apply for or use any domain name incorporating the MONTBLANC mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain names. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain names. Respondent registered the disputed domain names in August 2012, long after Complainant’s registrations of the MONTBLANC mark (in the United States since 1964; in China since 2007) (Annex 4 to the Complaint). The disputed domain names are identical or confusingly similar to Complainant’s MONTBLANC mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Montblanc products, (e.g. selling pens through the website resolved by <montblancpens-a.com>; see Annex 5 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain names. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain names in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or

(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites 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 websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraphs 4(b)(iii) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain names in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the MONTBLANC marks with regard to its products. Complainant has registered its MONTBLANC marks internationally, including registration in the United States (since 1964) and in China (since 2007). Moreover, the websites resolved by some disputed domain names have been used to advertise for sale various purported Montblanc products (see the webpages resolved by <montblancpens-a.com>; Annex 5 to the Complaint) or to offer products in competition with those offered under the MONTBLANC marks products (see the webpages resolved by <montblancpens-b.com>, <montblancpens-c.com> and <montblancpens-d.com>; Annex 5 to the Complaint). Respondent would likely not have advertised products purporting to be Montblanc products on the websites if it was unaware of Complainant’s reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain names. The Panel therefore finds that the MONTBLANC mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain names were registered in bad faith with the intent to create an impression of an association with Complainant’s Montblanc branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain names, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” purportedly offering Complainant’s Montblanc branded products and services without authorization.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the MONTBLANC marks (as well as the content on some Respondent’s website - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain names have a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites to which the disputed domain names are resolved (see Annex 5 to the Complaint). In other words, Respondent has through the use of a confusingly similar domain names created a likelihood of confusion with the MONTBLANC marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain names, potential Internet users may be led to believe that the websites are either Complainant’s sites or the sites of official authorized agents of Complainant, which they are not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain names were used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use disputed domain names which are confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the websites on to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <montblancpens-a.com>, <montblancpens-b.com>, <montblancpens-c.com> and <montblancpens-d.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: July 30, 2013