|Complainant||Mäurer + Wirtz GmbH & Co. KG|
|Respondent||Belize Domain WHOIS Service Lt|
|Date of Decision||08.09.2008|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Murer + Wirtz GmbH & Co. KG v. Belize Domain WHOIS Service Lt
Case No. D2008-1107
1. The Parties
Complainant is Murer + Wirtz GmbH & Co. KG, Stolberg, Germany, represented by Heuking Khn Ler Wojtek, Germany.
Respondent is Belize Domain WHOIS Service Lt, City of Belmopan, Belize.
2. The Domain Name and Registrar
The Disputed Domain name <4711cologne.org> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2008. On July 23, 2008, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Name. On July 23, 2008, Intercosmos Media Group d/b/a directNIC.com 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 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 20, 2008.
The Center appointed Lone Prehn as the sole panelist in this matter on August 25, 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 an established reputation in Germany. Currently Complainant is led by the fifth generation of the Wirtz family.
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:
- 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, inter alia perfumeries;
- 4711, Community trademark with registration No. CTM 681 270, registered on May 11, 1999, inter alia perfumeries;
- 4711, registered in the USA with registration No. US 45617, registered on August 22, 1905, for goods in classes 3 and 5:
- 4711, registered in Belize with registration No. 672, registered on June 15, 1951, for goods in class 3.
5. Parties’ Contentions
In August 2007, Complainant became aware that Respondent had registered the Domain Name and that the Domain Name was being used in connection with a domain parking site where Respondent offered links to competitors of Complainant. On August 22, 2007, Complainant sent Respondent a warning letter and required it to cease and desist from using the Domain Name and to transfer it to Complainant. Respondent did not react to this letter.
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 <4711cologne.org> contains Complainant’s trademark 4711 and the descriptive term “cologne” which may either designate the English version of the name of the German city where Complainant produces 4711 Eau de Cologne or the product itself, (eau de) cologne. The top level domain “.org” is of mere generic character.
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 was only registered to generate revenue from a click-through site and enabling competitors of Complainant to disrupt the business of Complainant.
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), when 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 seeks the transfer of the Domain Name to reflect its business worldwide and to fight dilution of its famous trademarks by third party’s use of the trademarks.
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, Complainant must prove each of the following:
(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That 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 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 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 factual 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 registrations of its 4711 trademark in many countries around the world. As a result of their long and continuous use for the famous Eau de Cologne, Complainant’s trademarks have gained wide popularity and goodwill.
Thus, Complainant has established its rights in the trademark 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 Complainant’s trademark 4711 with the addition of the descriptive word “cologne” which may either be perceived as the German city where Complainant’s 4711 Eau de Cologne is produced, or as the commonly used abbreviation of “eau de cologne”, the product for which 4711 is famous. Therefore, the Panel has no difficulties in finding that the Domain Name is confusingly similar to the trademark 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 not presented 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 inferences that the Panel may draw from the fact of a default (Rules, paragraph 14). If Respondent had any justification for registering or using the disputed Domain Name, it could have provided it, but it did not. 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 on the present record 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 the registrant of the latter.
The content of the website makes it evident that the Domain Name has been registered with the purpose of gaining revenue from a click-through site. The Panel thus concludes that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
Complainant has made a substantial showing that 4711 is a popular and widely known mark in many countries and is clearly connected to the Eau de Cologne product. Respondent has no legitimate interest in using the 4711 trademark as part of a domain name that directs Internet users to a website without any real contents. 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. See also Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; Amphenol Corporation v. Applied Interconnect, Inc., WIPO Case No. D2001-0296.
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 has made a substantial showing that Complainant’s trademark 4711 and the Eau de Cologne produced under this trademark is widely 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 in all likelihood had knowledge of Complainant’s trademark and associated goodwill. 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, the Panel finds that Respondent acquired the Domain Name with knowledge of Complainant.
Respondent, by using the disputed Domain Name, is intentionally misleading the consumers and confusing them so as to lure them to its website, apparently seeking to make them believe that the website is associated with or recommended by Complainant. As a result, Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. Respondent is, therefore, illegitimately capitalizing on the 4711 trademark. Such finding indicates Respondent’s bad faith in the registration and use of the disputed Domain Name. See Philip Morris Incorporated v. r9.net, WIPO Case No. D2003-0004.
In light of all the above findings, the Panel resolves that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likehood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of the products or services posted on or linked to Respondent’s website.
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 <4711cologne.org> be transferred to Complainant.
Date: September 8, 2008