The Complainant is Staatliche PorzellanManufaktur Meissen GmbH of Meissen, Germany, represented by LS-IP Loth & Spuhler GbR Intellectual Property Law, Germany.
The Respondent is Peter Hillbricht of Kirkland, Washington, United States of America.
The disputed domain name <meissencollector.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2014. On January 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2014, 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 the Complainant on January 28, 2014 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 (hereafter the “Complaint”) on January 31, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2014. The Response was filed with the Center on February 17, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 27, 2014. 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.
Established in 1710 in the town of Meissen in Germany, the Complainant is one of the oldest and most well-known manufacturers of porcelain in the world. The Complainant is able to produce more than 175,000 different porcelain products, each made in the Complainant’s manufacturing site by trained craftsman.
The Complainant is the owner of a number of trade marks consisting of the word “Meissen” (the “MEISSEN Mark”), in jurisdictions across Europe, including in Germany, where the MEISSEN Mark was registered in 1972 for “All kinds of products or goods made out of porcelain”. The MEISSEN Mark is used by the Complainant in its advertising activities and as part of the Complainant’s website, located at “www.meissen.de” and “www.meissen.com”.
The Domain Name <meissencollector.com> was registered on December 26, 2010. The Domain Name resolves to a website (the “Respondent’s Website”), which provides information about Meissen porcelain products. The Respondent’s Website contains nearly 900 photos of the Complainant’s products arranged by category.
The Respondent’s Website does not display any advertising, although it does contain a link to a book about the Complainant’s products. This book, on the face of it, does not appear to have any connection to the Respondent. The Respondent’s Website also displays a disclaimer stating “This is a non-commercial website intended as a free reference for anyone interested in antique Meissen figurines. This web site is neither authorized by nor affiliated in any way with Staatliche PorzellanManufaktur Meissen GmbH. Their web site can be visited at meissen.com.”
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s MEISSEN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the MEISSEN Mark. It owns trade mark registrations for the MEISSEN Mark in various jurisdictions around Europe. The MEISSEN Mark, as a result of its long-running use by the Complainant, is a well-known and famous trade mark.
The Domain Name consists of the MEISSEN Mark and the word “collector” which is a descriptive element. The Domain Name is confusingly similar to the MEISSEN Mark as the dominant part of the Domain Name is the Complainant’s MEISSEN Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register the MEISSEN Mark or to seek the registration of any domain name incorporating the MEISSEN Mark. The Respondent is using the Domain Name to operate a site which displays pictures of the Complainant’s products and makes reference to the Complainant’s products without permission from the Complainant. The Respondent is not engaging in any business activities using the Domain Name nor is engaged in a legitimate noncommercial or fair use of the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with full knowledge of the MEISSEN Mark. The Respondent appears to have intentionally attempted to attract Internet users to the Respondent’s Website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, affiliation, or endorsement of the Respondent’s Website and of the porcelain products offered on the Respondent’s Website or location.
The Respondent disagrees with the Complainant’s contention that the MEISSEN Mark is a well-known and famous trade mark. Furthermore the Domain Name is not identical or confusingly similar because the Domain Name describes a collector of the Complainant’s products, not the Complainant itself.
The Respondent has been a private collector of Meissen products for over 40 years and has acquired what is one of the largest and finest collections in the entire world. He does not have any business associated with Meissen. The Respondent registered the Domain Name and created the Respondent’s Website for the purposes of sharing his hobby of collecting Meissen products with the world.
To the extent that the Respondent’s Website refers to the MEISSEN Mark, such use amounts to nominative fair use, because there is no other way to describe the products advertised on the site. Reference is made to the United States case of Toyota Motor Sales v. Tabari 610 F.3d 1171. Thus the Respondent has rights and legitimate interests in the Domain Name.
The Complainant has failed to show that the Respondent has registered and used the Domain Name in bad faith. The Respondent is not using the Domain Name for any commercial gain. Furthermore the Respondent has not engaged in a pattern of conduct, nor was the Domain Name registered for the purpose of disrupting the business of a competitor; the Complainant and the Respondent are not competitors.
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the MEISSEN Mark, having registrations for the MEISSEN Mark as a trade mark in the European Union, and in particular Germany.
The Domain Name consists of the MEISSEN Mark and the word “collector”. As noted in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the addition of common or descriptive terms typically does not prevent a finding of confusing similarity. As such the addition of the word “collector” does not distinguish the Domain Name from the MEISSEN Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s MEISSEN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”.
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the MEISSEN Mark or a mark similar to the MEISSEN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
The Respondent claims that he has used the Domain Name for the purpose of developing and launching a noncommercial fan site. This argument is supported by the content of the website, which contains a very detailed inventory of the Complainant’s products, none of which are for sale, nor is there any advertising on the site. The Respondent’s Website does contain a link to a book about the Complainant’s products however, given that the book is published in a different country and by a different author to the Respondent, the Panel accepts the Respondent’s statement that the link is there because the Respondent thought other collectors would find the book useful, and that the Respondent does not receive any financial gain from the Respondent’s Website.
Given the circumstances and also the Panel’s finding under the bad faith element, the Panel is not satisfied that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The requirements of paragraph 4(a)(iii) of the Policy are conjunctive, and a complainant bears the burden of proof on each. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If any required element is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the domain name because the Complainant failed to prove bad faith registration).
The Complainant has failed to make any coherent and relevant submissions that the Respondent has registered and used the Domain Name in bad faith. Not only that, the submissions that the Complainant has made on this point are internally inconsistent or factually incorrect.
The Complainant initially makes the submission that the Respondent is engaged in passive holding of the Domain Name. The concept of “passive holding” refers to a situation where a respondent has registered a Domain Name and is not using it for any purpose; the respondent being inactive. In the present proceeding the Respondent is maintaining and active and detailed website at the Domain Name so he cannot be passively holding the Domain Name.
The Complainant then alleges that the Respondent intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Complainant also submits that the Respondent uses the Domain Name to divert web traffic from the Complainant to his own business and to profit from his goodwill.
However, not only is there no evidence that the Respondent has made or is making any commercial gain out of the Respondent’s Website or operates a business, the Complainant itself states that “the Respondent is not engaged in any business activities that utilize the domain name ‘meissencollector.com’.”
The Complainant then alleges that the Respondent’s Website has not accurately disclosed the relationship of the Respondent with the Complainant, rather the Respondent’s Website suggests that it is an official or at least endorsed site of the Complainant. The Respondent’s Website prominently displays a disclaimer that states “This is a non-commercial website intended as a free reference for anyone interested in antique Meissen figurines. This web site is neither authorized by nor affiliated in any way with Staatliche PorzellanManufaktur Meissen GmbH. Their web site can be visited at Meissen.com.” While the Panel accepts that it is possible that such a disclaimer was placed on the Respondent’s Website after the commencement of the proceedings, the Complaint contains no sample of the Respondent’s Website that supports its assertion that no disclaimer exists.
There is no evidence that the Respondent has engaged in a pattern of conduct of registering domain names to prevent trade mark owners from registering a corresponding domain name. There is no evidence that the Respondent has ever registered a domain name other than the Domain Name. Nor is there any evidence that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor: the Complainant and the Respondent are not competitors.
There are no circumstances that indicate that the the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant. There is no evidence that the Respondent has ever attempted to sell the Domain Name.
There is no evidence that the Respondent registered the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. There is no evidence that the Respondent has sought or made any commercial gain from the Respondent’s Website. The Respondent’s Website contains no advertising, nor is there anything for sale on the website. There is no evidence to suggest that the Respondent’s Website is anything other than what it purports to be; a noncommercial fan site created by a collector of the Complainant’s products.
The onus is on the Complainant to prove that the Respondent registered and used the Domain Name in bad faith. The Complainant has made little or no attempt to prove that the Respondent registered and used the Domain Name in bad faith, indeed its submissions are little more than a series of assertions that are factually incorrect and/or internally contradictory. The Respondent has provided a plausible good faith reason for registering and using the Domain Name, supported by the content of the Respondent’s Website. The Respondent’s conduct in holding the Domain Name for 3 years, operating a noncommercial fan site without attempting to sell the Domain Name supports its submission that it did not register and does not use the Domain Name in bad faith.
The Panel finds that the Complainant has not established that the Respondent registered and used the Domain Name in bad faith.
For the foregoing reasons, the Complaint is denied.
Nicholas Smith
Sole Panelist
Date: March 3, 2014