Maurer + Wirtz GmbH & Co. KG v. ROMFAB
c/o Alf Temme
Claim Number: FA0902001246453
PARTIES
Complainant is Maurer + Wirtz
GmbH & Co. KG,
(“Complainant”) represented by Nina
Bliesner, of Heuking Kuhn Luer
Wojtek,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4711.us>,
registered with Moniker Online Services,
LLC.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
James A Crary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on February 6, 2009; the Forum received a hard
copy of the Complaint on February 13, 2009.
On February 9, 2009, Moniker Online Services, LLC confirmed by e-mail
to the Forum that the <4711.us>
domain name is registered with Moniker Online Services, LLC and that
Respondent is the current registrant of the name. Moniker Online Services, LLC has verified
that Respondent is bound by the Moniker Online Services, LLC registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On February 16, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 9, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On March 17, 2009, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed James A Crary as
Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <4711.us> domain name is identical to Complainant’s 4711 mark.
2.
Respondent does not have any rights or
legitimate interests in the <4711.us> domain name.
3.
Respondent registered and used the <4711.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Maurer + Wirtz GmbH & Co.
KG, obtained the 4711 business from a subsidiary of Procter & Gamble in
2007. Complainant has been active in the
market of perfumes for more than 150 years.
Complainant has registered the 4711 mark with numerous governmental
trademark authorities worldwide, including the United States Patent and
Trademark Office (“USPTO”) (i.e. Reg. No. 45,617 issued August 22, 1905).
Respondent registered the <4711.us>
domain name on March 9, 2003. The
disputed domain name resolves to a website that displays unrelated third-party
commercial links. Furthermore,
Respondent has been the respondent in prior UDRP proceedings in which the
disputed domain names were transferred from Respondent to the respective
complainants in those cases. See, e.g., Register.com, Inc. v. ROMFAB c/o Alf Temme, FA 690841 (Nat. Arb.
Forum June 8, 2006); see also Internet
Movie Database, Inc. v. Alf Temme, FA 449837 (Nat. Arb. Forum May 24,
2005).
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) 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
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds that Complainant’s long-standing registration of the 4711 mark with the United States Patent and Trademark Office (“USPTO”) adequately confers sufficient rights in the mark upon Complainant pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to [UDRP] ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant argues that <4711.us> domain name is identical to its 4711 mark. The Panel may find that the addition of the country-code top-level domain (“ccTLD”) “.us” is irrelevant under Policy ¶ 4(a)(i), and that the disputed domain name is identical to the mark under Policy ¶ 4(a)(i). See Future Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum Mar. 15, 2004) (“The <steelmaster.us> domain name is identical to the STEEL MASTER mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the disputed domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Moreover, nothing in the record
suggests that Respondent is commonly known by the disputed domain name. The
WHOIS information lists Respondent as “ROMFAB
c/o Alf Temme.” Therefore, the
Panel finds that Respondent lacks rights and legitimate interests pursuant to
Policy ¶ 4(c)(iii).
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name to resolve to a
parked website that features links to unrelated third-party websites. Respondent presumably receives referral fees
from the advertisers listed on its website.
Thus, the Panel finds that Respondent’s use of the disputed domain name
does not constitute a bona fide offering of goods and services pursuant
to Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of
Respondent and for Respondent's benefit is not a bona fide offering of goods or
services under [UDRP] Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use under [UDRP] Policy ¶ 4(c)(iii).”); see also Wells Fargo &
Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding
that using a domain name to direct Internet traffic to a website featuring
pop-up advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under UDRP ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Respondent has been the respondent
in prior UDRP proceedings in which the disputed domain names were transferred
from Respondent to the respective complainants in those cases. See,
e.g., Register.com, Inc. v. ROMFAB
c/o Alf Temme, FA 690841 (Nat. Arb. Forum June 8, 2006); see also Internet Movie Database, Inc. v.
Alf Temme, FA 449837 (Nat. Arb. Forum May 24, 2005). The Panel finds that Respondent has engaged
in a pattern of preventing trademark owners from registering corresponding
domain names that reflect their mark.
Therefore, the Panel finds that Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo
Fashions Ltd. v.
Respondent’s use of Complainant’s mark within the disputed
domain name creates a likelihood of confusion as to the source and affiliation
of Respondent’s website and the disputed domain name. Further, Respondent is presumed to have
sought out commercial benefit through the accrual and receipt of click-through
referral fees. Therefore, the Panel
finds that Respondent engaged in bad faith registration and use of the disputed
domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v.
Bond, FA 680624
(Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under
UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for
the complainant to its own website and likely profiting); see also DatingDirect.com
Ltd. v. Aston, FA 593977
(Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is
appropriating the complainant’s mark in a confusingly similar domain name for
commercial gain, which is evidence of bad faith registration and use pursuant
to [UDRP] ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <4711.us> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: March 31, 2009
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page