|Kläger||Maurer + Wirtz GmbH & Co. KG|
|Beklagter||Delux Befektetes Lajos Kiss|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Murer + Wirtz GmbH & Co. KG v. Lajos Kiss, Delux Befektetes
Case No. D2007-1696
1. The Parties
Complainant is Murer + Wirtz GmbH & Co. KG, Germany, represented by Heuking Khn Ler Wojtek, Germany.
Respondent is Lajos Kiss, Delux Befektetes, Hungary.
2. The Domain Name and Registrar
The disputed domain name <4711.org> (the “Domain Name”) is registered with eNom Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 22, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On November 26, 2007, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 19, 2007.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 17, 2008. 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.
In accordance with the Rules, paragraph 11(a), the language of this administrative proceeding is English, being the language of the Domain Name Registration Agreement.
4. Factual Background
Complainant is a company duly incorporated and registered with the commercial register of Aachen, Germany. It has been active in the market of perfumes and perfumeries for more than 150 years and has a very good reputation in Germany. Currently Complainant is led by the fifth generation of the family Wirtz.
In January 2007 Complainant acquired (besides others) the “4711” business from Mlhens GmbH & Co. KG, a subsidiary of Procter & Gamble. As a part of the deal the seller transferred to Complainant the full title and interest over numerous trademarks, including more than 1,000 “4711” trademark registrations worldwide. These trademarks include, among many others, the following:
- 4711, registered in Germany in 1915, with registration No. DE 206 680, for goods in classes 3 and 5, including for Eau de Cologne;
- 4711, registered in Germany in 1895, with registration No. DE 5261, for goods in class 3 - Eau de Cologne;
- 4711, registered in Germany in 1925, with registration No. DE 339 885, for goods in classes 3, 5, 8, 14, 16, 18, 21, 24, 25, 26, 28, 30, and 32;
- 4711, Community trademark with registration No. CTM 603 217, registered on December 14, 1998, for goods in class 3;
- 4711, Community trademark with registration No. CTM 681 270, registered on May 11, 1999, for goods in class 3;
- 4711, International Trademark with registration No. 276 013, applied for on November 8, 1963, for goods in class 3, with protection in 34 countries, inter alia, in Hungary and Russia; and
- 4711, International Trademark with registration No. 323 346, applied for on October 19, 1966, registered for goods in classes 1, 2, 3, 4, 5, 6, 8, 9, 10, 14, 15, 16, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, including perfumeries, with protection in 23 countries, inter alia, in Hungary.
The Domain Name was first registered on December 27, 2003, and acquired by Respondent on July 15, 2007.
5. Parties’ Contentions
In July 2007, Complainant became aware that Mr. Zoltan Kovacs-Nies, of Kassel, Germany had registered the Domain Name. On the website at the Domain Name Mr. Kovacs-Nies offered links to competitors of Complainant and offered perfumes and similar products. On July 13, 2007, Complainant sent Mr. Kovacs-Nies a warning letter and required him to cease and desist from using the Domain Name and to transfer it to Complainant. Mr. Kovacs-Nies did not sign the requested declaration, but a different one which did not include an obligation to transfer the Domain Name to Complainant. On or shortly before July 15, 2007, the Domain name was transferred to Respondent.
The trademark “4711” is used for perfumeries, soaps and cosmetics, and particularly for the world famous Eau de Cologne produced in the city of Cologne. Complainant claims that “4711” is one of the most famous trademarks in Germany, Europe and worldwide.
Complainant submits that the Domain Name is identical or confusingly similar to Complainant’s trademarks, as the top level domain “.org” is of mere generic character and “4711” is either the only element of these trademarks, or their most distinctive and dominant part.
According to Complainant, Respondent has no rights or legitimate interests in the Domain Name. He has not used nor demonstrably prepared to use it or a name corresponding to it in connection with a bona fide offering of goods and services.
Complainant claims that the website at the Domain Name has no genuine content with respect to any offering of goods and services by Respondent. The website is made in Russian, and offers the services of the Russian Internet provider Infobox.ru such as hosting, website services and email services. This content does not originate from Respondent who is located in Hungary and uses a famous Hungarian name as his name. Complainant asserts that Respondent retrieves payment by using the Domain Name to generate traffic to the website of Infobox.ru. There is no indication that Respondent performs any business activities under the website nor that he demonstrably prepares to do so. If there was real business to be performed under the website, potential customers would not be able to address Respondent nor order or buy any goods and services from him, because only the contact details of Infobox.ru are available at the website.
In another case under the Policy, Respondent was found to have registered and used in bad faith the domain name <ravensburger.net>.
Complainant states that Respondent is not commonly known by the Domain Name and does not make a legitimate and non-commercial or fair use of the Domain Name. Respondent and his company are not named “4711”. Thus, Respondent uses the Domain Name to misleadingly divert potential customers of Complainant from its own websites to the website at the Domain Name and to dilute and tarnish the trademark of Complainant.
It can be assumed that Respondent and the former owner of the Domain Name, Mr. Kovacs-Nies, conspiratively co-operated, as immediately after the cease and desist letter of July 13, 2007 was sent, Respondent acquired the Domain Name from Kovacs-Nies.
As stated by the Panelist in Veuve Clicquot Ponsardin, Maison Fonde en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163: <veuvecliquot.org> is so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith.” As the Domain Name is identical to a worldwide famous trademark, Respondent cannot have failed to recognize such trademark at the time of registration of the Domain Name.
Complainant states that the Domain Name was registered in order to prevent Complainant from reflecting the mark in a corresponding domain name. Respondent commercially engages in registering domain names identical to famous trademarks in order to prevent the owners from using such domain names for their own goods and services. Complainant needs the Domain Name to reflect its business worldwide and to fight dilution of its famous trademarks by third party’s use of the trademarks.
According to Complainant, Respondent is also using the Domain Name to attract, for commercial gain, Internet users to Respondent’s website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the third party’s website. Respondent supports the business of the Internet provider Infobox.ru. By using the Domain Name many Internet users will be attracted by the Domain Name and will be directed to the website of Infobox.ru. Further, many of them will assume that Infobox.ru owns or offers to sell the domain name <4711.org> or products related to “4711” or that Infobox.ru has business connections with Complainant.
Respondent has used the name “Lajos Kiss” which is a well-known name in Hungary. Mr. Lajos Kiss was a member of the Hungarian Academy of Science, Vice President of the Hungarian Linguistics, and, inter alia, Honorary Professor of the famous Eotvos Lorand University of Budapest. He further was a person of the public life in Hungary. He passed away in 2003 at the age of 81. Complainant assumes that the name of the contact person is not Respondent’s real name, but that such person uses the famous name of Lajos Kiss to conceal its identity. This alone proves bad faith in respect of the registration and use of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, the Complainant must prove each of the following:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of the 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.”
In this administrative proceeding, Respondent’s default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence of the registration of its “4711” trademarks in many countries around the world, both as word trademarks and as combined trademarks. As a result of their long and continuous use for the famous Eau de Cologne, Complainant’s trademarks have gained a wide popularity and goodwill.
Thus, Complainant has established its rights in the trademarks “4711”, as required by the Policy, paragraph 4(a)(i).
It is an established practice to disregard the gTLDs such as “org” for the purposes of the comparison under Policy, paragraph 4(a)(i).
The Domain Name reproduces the word trademarks “4711” in their entirety. The “4711” element of Complainant’s combined trademarks is their most distinctive part. Therefore, the Panel finds that the Domain Name is identical and confusingly similar to trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has contended that Respondent has no rights or legitimate interests in the Domain Name, stating numerous arguments in this regard.
Thus, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names.
Once Complainant makes out a prima facie case under Policy, paragraph 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the Domain Name.
Respondent, by its default, has chosen not to present to the Panel any allegations or documents in its defense despite its burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for the registering or using the disputed Domain Name, it could have provided it. In particular, Respondent has failed to contend that any of the circumstances described in Policy, paragraph 4(c) – or any other circumstance – is present in its favor.
In fact, the only information available about Respondent is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The WhoIs information contains no evidence of rights or legitimate interests of Respondent in the Domain Name, apart from its rights as registrant of the latter. The WhoIs contact details provided by Respondent in respect of the Domain Name proved to be incomplete, as the hard copy of the Notification of Complaint sent to Respondent by the Center was returned by the courier due to insufficient address information. The only conclusion that can be made in this respect is that Respondent has decided not to disclose its real address. There is no explanation by Respondent of the reasons for this, although one would expect from a respondent having rights and legitimate interest in respect of a domain name to provide plausible reasons as to why it hides its location.
The website associated to the Domain Name offer various Internet-related services. The content of this website makes it clear that these services are provided by a third party, without mentioning Respondent.
The question is whether such an offering of goods or services is bona fide under Policy, paragraph 4(c)(i). The answer depends on the finding whether the use of the disputed Domain Name in connection with the offering otherwise constitutes bad-faith registration or use of the Domain Name under Policy, paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith).
The Panel concludes that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. It is clear from the record that Mr. Kovacs-Nies was informed about Complainant’s trademarks, and did not raise any rights of its own in the Domain Name. The Domain Name was transferred to Respondent only days after Mr. Kovacs-Nies received the cease and desist letter from Complainant. Therefore, and in the lack of any evidence to the contrary, the Panel is prepared to accept that the transfer was made in clear knowledge of the lack of rights in the Domain Name, and in order to evade the application of the Policy.
Complainant has made a substantial showing that “4711” is a popular mark in many countries, and is clearly connected to the Eau de Cologne product. Respondent simply has no legitimate interest in using the “4711” trademark as part of a domain name that directs Internet users to a website where various services unrelated to Complainant are offered. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products, its very use by a registrant with no connection to the complainant suggests “opportunistic bad faith”. Accordingly, the finding by the Panel regarding Respondent’s bad-faith registration and use of the disputed Domain Name precludes a finding that the offering of goods or services by Respondent is bona fide. Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296.
The finding of the lack of rights and legitimate interests of Respondent in the Domain Name is further supported by its conduct in the proceeding and before its commencement. As evidenced by the correspondence in the case file, Respondent took no action to renew the registration of the Domain Name, and it was Complainant that took the necessary steps in this regard in order to ensure the proper application of the Policy in respect of this proceeding. Moreover, Respondent’s contact details provided to the Registrar are incorrect.
Therefore, as the evidence supports the contentions of Complainant, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
In the present proceeding, Respondent did not itself register the Domain Name, rather, it is only a transferee. That is the reason why the doctrine of “extension” can be invoked here, that is, that the term “registration” extends beyond the original act of registration and covers subsequent acquisitions of the Domain Name. Thus, Policy, paragraph 4(b)(i) specifically refers to circumstances in which Respondent has registered or has acquired a domain name, and there are prior Panel decisions in which it has been held more generally that “registration” extends to subsequent acts of acquisition. BWR Resources Ltd v. Waitomo Adventures Ltd., WIPO Case No. D2000-0861, Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079, and Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406. Therefore, the acquisition by a party of a domain name amounts to a new registration, and is evaluated for the purposes of the Policy by application of the same criteria.
Complainant’s trademark “4711” and the Eau de Cologne produced under this trademark is widely popular among consumers. Respondent acquired the Domain Name, having no rights or legitimate interests in it, and only days after its previous registrant received the cease and desist letter by Complainant. These facts support a finding, uncontroverted by any evidence in the case file, that Respondent had knowledge of Complainant’s trademark and associated goodwill, as well as of Complainant’s claims in relation to the Domain Name at the time of its acquisition from Mr. Kovacs-Nies. In the light of this finding, and taking into account the commercial nature of the website linked to the Domain Name and the lack of any relation of this content to Complainant, as well as the incorrect WhoIs information provided by Respondent, the Panel finds that Respondent acquired the Domain Name in knowledge of Complainant and with the intent to secure it from the claims of Complainant. Taking into account the content of the website linked to the Domain Name and the usual practices in the Internet such links to be provided against payment, the Panel finds that Respondent’s other purpose in acquiring and using the Domain Name was to attract, for commercial gain, Internet users to this website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website and the products on this website. This constitutes bad-faith registration and use of the disputed Domain Name under Policy, paragraph 4(b)(iv). Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xingdong, WIPO Case No. D2003-0408.
Therefore, the Panel concludes that Complainant has established the third element of the test under Policy, paragraph 4(a).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <4711.org> be transferred to the Complainant.
Dated: February 5, 2008