|Complainant||Mäurer + Wirtz GmbH & Co. KG|
|Date of Decision||27.08.2008|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mäurer & Wirtz GmbH & Co. KG v. 4711 Society
Case No. D2008-1022
1. The Parties
Complainant is Mäurer & Wirtz GmbH & Co. KG, of Germany, represented by Dominik Eickemeier, Germany.
Respondent is 4711 Society, of Sweden.
2. The Domain Name and Registrar
The disputed domain name <4711.net> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2008. On July 7, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 7, 2008, Network Solutions, LLC 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 July 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 4, 2008.
The Center appointed Lone Prehn as the sole panelist in this matter on August 13, 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
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 Muelhens GmbH & Co. KG, a subsidiary of Procter & Gamble. Amongst others, the trademarks “4711” were transferred to Complainant, including:
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, registered in Sweden in 1930, with registration No. SE 37,748 for goods in class 3;
4711, registered in Sweden in 1903, with registration No. SE 8544, for goods in class 3;
4711, registered in Sweden in 1925, with registration No. SE 29,498, for goods in classes 3, 4, 5, 6, 8, 10, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30, and 32;
4711, registered in Thailand in 1931, with registration No. TH 470 996, for goods in class 3;
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;
5. Parties' Contentions
In July 2007, Complainant became aware that a “4711 Society” of Sweden had registered the Domain Name. The mere content of the “www.4711.net” website is the phrase “Phuket Internet Solutions Co. Ltd – Your internet and e-commerce partner”. On August 22, 2007, Complainant sent the “4711 Society” a warning letter and required them to cease and desist from using the Domain Name and to transfer it to Complainant. The letter was returned unopened (unknown address). The Complainant then sent the warning letter via email but did not receive any answer.
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 .net 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. It 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 has no content apart from the words “Phuket Internet Solutions Co. Ltd – Your internet and e-commerce partner”. The site does not contain any links or contact details which makes it likely that the website is just a “fake” website. The website was not even in use until after Complainant sent its warning letter in August 2007. Complainant asserts that Respondent has registered the Domain Name for the sole purpose of selling it to Complainant or a third party.
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's address in Sweden does not exist, and it is not possible to find a “4711 Society” in a Swedish telephone book, and the phone number provided by Respondent is also wrong. The 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.
As stated by the panel in Veuve Clicquot Ponsardin, Maison Fondée 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. By using the Domain Name many Internet users will be attracted by the Domain Name and many of them will assume that Respondent offers to sell products related to “4711”.
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 Respondent to: Respond specifically to the statements and allegations contained in the complaint and include any and all bases for 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 there from 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
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 .net 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 Name.
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 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 that any other circumstance is present in its favor.
In fact, the only information available about Respondent is the WhoIs information 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 ordinary mail addressed to Respondent is returned 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 or legitimate interests in respect of a domain name to provide plausible reasons as to why it hides its location. Furthermore, based on the record, it appears that “4711 Society” does not exist.
Currently, the website associated to the Domain Name does not contain any other information than the words “Phuket Internet Solutions Co. Ltd – Your internet and e-commerce partner”. There is no contact information or any links. The content of this website suggests that the Domain Name may have been registered with the purpose of selling it to Complainant. The Panel thus concludes that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
The finding of the lack of rights or legitimate interests of Respondent in the Domain Name is further supported by its conduct in providing incorrect contact details to the Registrar.
Therefore, as the evidence supports the contentions of Complainant, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant's trademark 4711 and the Eau de Cologne produced under this trademark is widely popular and known among consumers. Respondent acquired the Domain Name, having no rights or legitimate interests in it. This supports a finding, uncontroverted by any evidence in the case file, that Respondent had knowledge of Complainant's trademark and associated goodwill. In the light of this finding, and taking into account the 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 possible intent to sell it to Complainant. 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 Panel finds bad-faith registration and use of the disputed Domain Name.
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.net> be transferred to Complainant.
Dated: August 27, 2008