WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mäurer + Wirtz GmbH & Co. KG v. Colonial Drug / Domains by Proxy, Inc.
Case No. D2008-1291
1. The Parties
1.1 The Complainant is Mäurer + Wirtz GmbH & Co. KG, of Stolberg, Germany, represented by Heuking Kühn Lüer Wojtek, of Germany.
1.2 The Respondent is Colonial Drug of Cambridge of Massachusetts, the United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name <4711cologne.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2008. At this time “Domains By Proxy Inc” was listed as the registrant in the Respondent's WhoIs database and accordingly was named as the Respondent in the Complaint. On August 25, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name.
3.2 On August 25, 2008, the Registrar transmitted by email to the Center its verification response, in which it informed the Center that the registrant of the Domain Name was different from that identified in the Complaint. It identified “Colonial Drug” as the Registrant and provided contact details. For reasons unknown to the Panel, the Registrar failed to provide billing contact details as required by paragraph 2(a)(i)(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
3.3 The Center sent an email communication to the Complainant on August 29, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 10, 2008. The Center verified that the Complaint as amended satisfied the formal requirements of 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”).
3.4 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 September 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 4, 2008.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 15, 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.
4. Factual Background
4.1 The Complainant and its predecessors in business have been engaged in the business of perfumes and perfumeries for more than 150 years. Currently the Complainant is controlled by the 5th generation of the Wirtz family to have been involved in this business.
4.2 In January 2007, the Complainant acquired the “4711” perfume business from Muelhens GmbH & Co. KG, a subsidiary of Proctor & Gamble. As a consequence of that acquisition the Complainant became the owner of a large number of registered trade marks that comprise or incorporate the term “4711”. They include:
(i) Registered Community trade mark No. 603217 for the text “4711” in class 3 and dated August 20, 1997 and
(ii) Registered United Stated trademark No. 71001241 for the text “4711” in classes 3 and 5 and dated April 12, 1905.
4.3 The Respondent appears to be an individual or other entity that trades under the name “Colonial Drug” from premises in Cambridge, Massachusetts.
4.4 The Domain Name was registered on July 12, 2006. As of August 15, 2007 a website operated from the Domain Name that took the form of a domain name parking page operated by the Registrar. The page displayed various advertisements for the Registrar's services, together with “Sponsored Links” and “Popular Searches”. The “Sponsored Links” were predominantly perfume related but there were also other links such as “Cheap Cologne Hotels”. The “Popular Searches” covered a large range of goods and services, none of which appeared to relate to perfumes or similar products.
4.5 On August 22, 2007 the Complainant's lawyers sent a letter before action to “Domains by Proxy”, the entity then recorded as the registrant of the Domain Name, claiming that the then use of the Domain Name infringed the Complainant's trade mark rights.
4.6 On August 28, 2007, “Domains by Proxy” sent an email to the Complainant's lawyers explaining that it provided a proxy registration service that allowed individuals to register a name while maintaining their anonymity. It claimed that whilst it might appear to operate or have an interest in sites operating from the Domain Name, this was not the case. It claimed to be neither a registrar nor a hosting provider. However, it stated that it was forwarding the Complainant's lawyer's letters to its customer and giving that customer three business days to respond. It also stated that if its customer did not respond it could “further address the issue upon receiving a properly served subpoena or a copy of a legal complaint”.
4.7 On August 31, 2007, “Domains by Proxy” sent a further email to the Complainant's lawyers stating that they had “forwarded [their] complaint to the customer” and stating that as they had not received a response “within the allotted timeframe” they were “considering the matter closed”.
4.8 On or about this time the website operating from the Domain Name changed. Internet users typing in the Domain Name were redirected to a website operating from the domain name <colonialdrug.com>. This website advertises the “Colonial Drug” business in Massachusetts. It states that the business “specialize[s] in Hard-To-Find Scents” and that it “stock[s] over 1000 for Ladies and Gents” as well as various other products.
5. Parties' Contentions
5.1 The Complainant explains how “4711” perfume obtained its name, it is said that the name can be traced back to the French occupation of Cologne in the late 18th Century.
5.2 The Complainant contends that the “4711” is one of “the most famous trademarks in Germany, Europe and world wide”. However, the evidence provided in this respect appears to be limited to the perception of the brand in Germany.
5.3 It claims that the Domain Name is confusingly similar to all its registered trade marks. The dominant element of the Domain Name is said to be the term “4711”. The “cologne” element is said to be secondary, being a mere geographical term and one that has also become a generic term for perfume.
5.4 The Complainant states that the Respondent is not commonly known by the Domain Name and does not make any legitimate use of the Domain Name. Reference is made to the fact that the Domain Name was used in connection with a domain name parking service and this is said not to provide a right or legitimate interest.
5.5 On the issue of bad faith registration and use the Complainant contends that 4711 is so obviously associated with a well known product that its use by someone with no connection with the Complainant's product suggests opportunistic bad faith. This is said to be supported by the combination of “4711” with the term “cologne” in the Domain Name. Reference is also made to the fact that the Respondent used a domain name privacy service to “to hide its identity”.
5.6 The Complainant contends that the domain name was “registered not only to generate revenue from a sponsored links website but also for the purpose of attracting, for commercial gain, Internet users to [the Respondent's] website, by creating a likelihood of confusion with [the] Complainant's mark”.
5.7 The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name can only sensibly be understood as a combination of the terms “4711” and “cologne”. The Complainant owns Community and United States trade marks for the word “4711” in respect of perfume products and the term “cologne” is a well known generic term for perfume. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to at least two trade marks in which the Complainant has rights.
6.5 The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Complainant contends and the Panel accepts, that the Respondent has not been authorised to use the term “4711cologne” by the Complainant and that the Respondent is not known by the name.
6.7 Further, the Panel also accepts that until recently the Respondent has had no interest in the Domain Name other than to use it to generate “click-through” revenue. The website operating from the Domain Name bore the hallmarks of being generated by a domain name “parking service” and the Respondent has not denied the Complainant's allegations in this respect.
6.8 The way in which these services operate is explained in greater detail in Owens Corning v. NA, WIPO Case No. D2007-1143. Whilst there is nothing per se illegitimate in the use of a domain parking service, it is quite different when a domain name is chosen on the basis of the similarity to a name in which a complainant has an interest, in the expectation that Internet users searching for products or services related to the complainant will instead be drawn to the domain name parking page. Such use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three person panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.9 In this case the distinctive nature of the term “4711” and its combination with a word that is a synonym for perfume lead the Panel to the conclusion that the Respondent has deliberately used the Domain Name in connection with a domain name parking page with precisely that knowledge and intent.
6.10 There is also the more recent use of the Domain Name to divert Internet users to the Respondent's website operating from the <colonialdrug.com> domain name. It would appear that the current use of the Domain Name is to divert Internet users to a business that sells various products, many of which are unrelated to or in direct competition with the Complainant's 4711 product. This does not provide a right or legitimate interest.
6.11 The Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.12 There is little doubt that the Domain Name has been registered and has been used in bad faith. As has already been described under the heading of rights or legitimate interests, the Domain Name was used in connection with a domain name parking site in order to generate click through revenue. Subsequently it was used to draw Internet users to the Respondent's own website.
6.13 The Respondent must at all times have been aware of the Complainant's 4711 mark. The Domain Name itself suggests that this is so. The 4711 mark is distinctive and has been combined with a term that is a synonym for perfume. It is not credible that the Respondent might have chosen that combination by chance. There is also the fact that the more recent use of the Domain Name suggests that the Respondent is familiar with the world of perfumes. It is operating a business with a website that claims to specialise in “hard-to-find” scents.
6.14 Therefore, the only reasonable conclusion in each case is that the Respondent has registered and used the Domain Name in the hope and expectation that the similarity between the 4711 mark and the Domain Name would confuse Internet users and thereby draw those users to the websites that have been described. Such activity falls within the scope of paragraph 4(b)(iv) of the Policy.
6.15 Whilst not determinative of the Panel's conclusions, the Panel also accepts the Complainant's claim that the use of a domain name privacy service in this case is indicative of bad faith registration and use (see Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909 for an explanation of why this is the case).
6.16 The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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, <4711cologne.com> be transferred to the Complainant.
Matthew S. Harris
Dated: October 22, 2008