Complainant is Montblanc-Simplo GmbH, Germany, represented by SILKA AB, Sweden.
Respondent is Domain Protection Services, Inc., United States of America (“United States” or “US”) / lee rose, China.
The disputed domain name <montblancpens.co> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2021. On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 30, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on October 4, 2021.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on November 10, 2021. 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.
Complainant is one of the world’s leading designers, manufacturers, and sellers of luxury writing instruments, watches, jewelry, leather goods, fragrances, and eyewear. Complainant owns valid and subsisting registrations for the MONTBLANC trademark in numerous countries, including the trademark for MONTBLANC (US Reg. No. 776,208) in the United States, registered on December 24, 1964 with the earliest first use priority dating back to 1913.
Respondent registered the disputed domain name on July 2, 2015. At the time this Complaint was filed, the disputed domain name resolved to a website ostensibly offering discounted MONTBLANC products for sale. Complainant’s MONTBLANC logo appears repeatedly on Respondent’s website, as does the copyright notice “Copyright © 2012-2015 All Rights Reserved.”
Complainant asserts ownership of the MONTBLANC trademark and has adduced evidence of trademark registrations in numerous jurisdictions around the world including in the United States, with earliest priority dating back to 1913. The disputed domain name is confusingly similar to Complainant’s MONTBLANC trademark, according to Complainant, because it fully incorporates the MONTBLANC trademark with the inclusion of the industry term “pens”, which only adds to the confusing similarity.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any evidence that Respondent is known by the disputed domain name or made a bona fide offering of goods or services; and Respondent’s use of the disputed domain name to collect sensitive information from online consumers and sell presumably counterfeit products.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Complainant’s widespread reputation, including in the jewelry industry and in the United States; Respondent’s addition of the term “pens” to specifically target Complainant; Respondent’s use of the disputed domain name to sell presumably counterfeit pens purporting to be official MONTBLANC products; and Respondent’s unauthorized website use of Complainant’s MONTBLANC logo.
Respondent did not reply to Complainant’s contentions.
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
(i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true […] UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); see also The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
In addition to the evidence submitted by Complainant, because the WhoIs information revealed by the Registrar suggests that China is Respondent’s country of residence, the Panel has confirmed that Complainant registered its MONTBLANC trademark in China. A panel may undertake limited factual research into matters of public record where it considers such information useful to assessing the case merits and researching a decision. This includes visiting the website linked to the disputed domain name in order to obtain more information about respondent or its use of the disputed domain name, consulting historical resources like the Internet Archive, reviewing dictionaries, encyclopedias, or accessing trademark registration or other governmental databases. WIPO Overview 3.0, Section 4.8.
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the MONTBLANC trademark has been registered in numerous jurisdictions (with priority dating back to 1913, over a century before the disputed domain name was registered by Respondent). Thus, the Panel finds that Complainant’s rights in the MONTBLANC trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s MONTBLANC trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s MONTBLANC trademark because, disregarding the “.co” country code Top-Level Domain (“ccTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). In regards to ccTLDs, such as “.co” in the disputed domain name, they are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
The combination with the term “pens” does not prevent a finding of confusing similarity between Complainant’s MONTBLANC and the disputed domain name. WIPO Overview, section 1.8 (“Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity under the first element”); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”); OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam, WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”).
In view of Complainant’s registration of the MONTBLANC trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview, section 2.1. It is evident that Respondent, identified by WhoIs data for the disputed domain name as “lee rose”, is not commonly known by the disputed domain name or Complainant’s MONTBLANC trademark.
Furthermore, UDRP panels have categorically held that use of a domain name for illegal activity - including the sale of counterfeit goods, phishing, and other types of fraud - can never confer rights or legitimate interests on a respondent. Circumstantial evidence can support a credible claim made by Complainant asserting Respondent is engaged in such illegal activity, including that Respondent has masked its identity to avoid being contactable, or that Respondent’s website has been suspended by its hosting provider. WIPO Overview 3.0, section 2.13. See e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 (“Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives”) see also The Commissioners for HM Revenue and Customs v. Name Redacted, WIPO Case No. D2017-0501 (“In addition, the disputed domain names … have had their web hosting suspended as a result of fraudulent activities. This is evidence of bad faith registration and use of the disputed domain names.”) To this end and as detailed below, the second and third elements of the Policy may be assessed together where clear indicia of bad faith suggests that there cannot be any Respondent rights or legitimate interests. WIPO Overview 3.0, section 2.15.
In view of the absence of any evidence supporting any claim to rights or legitimate interests in the disputed domain name, and Complainant’s credible assertion that Respondent’s website offers counterfeit goods for sale and seeks sensitive information from online consumers, the Panel concludes that Complainant has established the second element of the Policy.
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
(i) Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (particularly where no conceivable good faith use could be made). WIPO Overview 3.0, Section 3.1.4. Complainant has adduced evidence of recognition of the MONTBLANC trademark and the Panel notes several UDRP panel determinations in agreement that Complainant’s MONTBLANC trademark is considered to be “well-known” or “famous.” See e.g., Montblanc-Simplo GmbH v. Hongsen Qiao, WIPO Case No. D2020-0932 (“On the balance of probabilities from the evidence, the Panel accepts that the trademark MONTBLANC is well known for the purposes of the Policy.”). As such, the Panel finds that in all likelihood Respondent registered the disputed domain name with knowledge of Complainant’s MONTBLANC trademark, with the intention to benefit from confusion with Complainant’s MONTBLANC trademark. Respondent’s addition of the term “pens” to the trademark MONTBLANC must have been intended to create confusion and attract interest in the products ostensibly sold through Respondent’s website.
UDRP panels have categorically held that registration and use of a domain name for illegal activity - including sale of counterfeit products, phishing, and other types of fraud - is manifestly considered evidence of bad faith within paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.4. Use of the disputed domain name by Respondent to pretend that it is associated with Complainant “brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows Respondent registered the domain name primarily for the purpose of disrupting the business of [ ] Complainant.” Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017; see also GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357 (concluding that respondent’s use of the disputed domain name to disrupt complainant’s business by using it to impersonate complainant for commercial gain was evidence of respondent’s bad faith registration and use of the disputed domain). Circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity, including evidence that: (i) goods are offered disproportionately below market value; (ii) goods are ordinarily only sold with Complainant’s authorization; (iii) images of the goods used by a respondent suggest they are not genuine; (iv) the respondent has misappropriated copyrighted images from the complainant; (v) the goods at issue are extremely rare; (vii) the goods at issue have prompted consumer complaints; (viii) the respondent has masked its identity to avoid being contactable; and (ix) so-called “trap purchases” demonstrate illegal respondent activity. WIPO Overview 3.0, section 2.13.2. Here, Complainant has submitted evidence that: (i) Complainant has not authorized Respondent’s replete website uses of the MONTBLANC trademark and logo; (ii) Respondent’s ostensible product offerings are made at deep discounts, generally sixty percent or more, below market value; and (iii) Respondent has masked its identity through the use of Domain Protection Services, Inc.
Where, as in this Complaint, it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, UDRP panels tend to find that this supports an inference of bad faith. WIPO Overview section 3.6. Use of a privacy or proxy registration service to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates bad-faith use and registration of a disputed domain name. See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive, illegal, or irresponsible conduct).
In view of multiple UDRP panel determinations recognizing the well known nature of Complainant’s MONTBLANC trademark, Respondent’s evident opportunistic bad faith targeting Complainant with the addition of the term “pens” in the disputed domain name, and Complainant’s credible argument that Respondent’s website offers counterfeit MONTBLANC goods for sale and seeks sensitive information from online consumers, the Panel concludes that Complainant has established the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <montblancpens.co> be transferred to Complainant.
Phillip V. Marano
Sole Panelist
Date: December 3, 2021