The Complainant is Montblanc-Simplo GmbH, Germany, represented by SILKA Law AB, Sweden.
The Respondent is Hongsen Qiao, China.
The disputed domain name <discount-montblanc.com> (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 17, 2020, 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 April 28, 2020 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 in English on April 28, 2020.
On April 28, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On April 28, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment.
The Center verified that the Complaint together with the amended 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2020.
The Center appointed Kar Liang Soh as the sole panelist in this matter on June 4, 2020. 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.
The Complainant is a German company founded 1906. It is a leading manufacturer of luxury writing instruments, among other things, under the trademark MONTBLANC and operates in over 70 countries in the world through about 360 boutiques.
The Complainant has registered the trademark MONTBLANC in several jurisdictions including:
|
Jurisdictions |
Registration Number |
Registration Date |
|
International (designating China) |
670350 |
July 30, 1996 |
|
China |
3090475 |
April 14, 2003 |
|
China |
7205914 |
August 21, 2010 |
|
China |
7216507 |
October 28, 2010 |
The Complainant’s parent company has registered many domain names incorporating the trademark MONTBLANC including <montblanc.com>, <montlanc.us>, <montblanc.org> and <montblanc.cn>. The <montblanc.com> domain name was registered on January 1, 1995. At least both the <montblanc.com> and <montbalnc.cn> domain names resolve to a website. The Complainant has established significant social media presence on various social media platforms like Facebook, Instagram, Twitter, YouTube and Pinterest.
The Disputed Domain Name was registered on February 5, 2020. Before the date of the Complaint, the Disputed Domain Name resolved to a webpage containing explicit adult content and banners purportedly advertising gambling websites. It was not evident from the website that the string “discount-montblanc” was used in any manner. By May 4, 2020, the Disputed Domain Name no longer resolved to a website.
Other than the WhoIs information and Registrar verification, no other information about the Respondent is available in this proceeding. Attempts by the Center to deliver the Written Notice to the Respondent using the Respondent’s facsimile number and postal address provided by the Registrar were unsuccessful or inconclusive.
The Complainant contends that:
(a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of the registered trademark MONTBLANC in several countries including China, the Respondent’s country of residence. The Disputed Domain Name incorporates the trademark MONTBLANC in its entirety. The mere addition of the descriptive term “discount” and a hyphen only reinforces the false association between the trademark and the Disputed Domain Name. The “.com” generic Top-Level Domain (“gTLD”) should be disregarded when testing confusing similarity;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not own the trademark MONTBLANC and is not known by the name “Montblanc”. The addition of “discount” strengthens the impression of a connection between the website resolved from the Disputed Domain Name and the Complainant. The website redirected by the Disputed Domain Name is not a bona fide, noncommercial or fair use of the Disputed Domain Name. The Respondent is not known by the Disputed Domain Name; and
(c) The Disputed Domain Name is registered and is being used in bad faith. The Complainant’s trademark registrations predate the registration of the Disputed Domain Name. The Complainant’s searches did not find any registered rights for MONTBLANC in the Respondent. The Respondent has engaged in porno-squatting and is taking advantage of the Complainant’s well-known trademark to attract Internet users to a pornographic commercial website. Given the Complainant’s widespread reputation in the trademark MONTBLANC, the Respondent must have known about the Complainant at the time of registering the Disputed Domain name. The Respondent bears no relationship to the trademark.
The Respondent did not reply to the Complainant’s contentions.
To succeed in this proceeding, the Complainant must establish the three limbs of paragraph 4a) of the Policy on the factual circumstances before the Panel:
(a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) The Disputed Domain Name is registered and is being used in bad faith.
From the evidence tendered, the Panel does not doubt that the Complainant has rights in the trademark MONTBLANC. The Disputed Domain Name clearly incorporates the trademark MONTBLANC in its entirety. The addition of the prefix “discount-”, being essentially a descriptive word unequivocally conveying the impression that products are available at a cheaper than normal price, does not prevent the finding of confusing similarity between the Disputed Domain Name and the trademark MONTBLANC. It is a consensus of past UDRP panels culminating in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel sees no reason to justify a departure from this collective wisdom. Similarly, the Panel accepts the guidance of the WIPO Overview 3.0 that the “.com” gTLD of the Disputed Domain Name should be disregarded in considering confusing similarity. In the circumstances, the Panel holds that the first limb of paragraph 4(a) is established on the facts.
While the Complainant shoulders the overall burden of proof in this proceeding, the Complainant only has to make out a prima facie case under the second limb for the burden of production to shift to the Respondent. The Complainant has submitted that the Respondent does not own any trademark registration for the Disputed Domain Name has no relationship to the trademark MONTBLANC and is not known by the Disputed Domain Name. On the other hand, the Complainant holds rights in the trademark MONTBLANC including in China, the country in which the Respondent is based. The appending of the descriptive word “discount” to the trademark MONTBLANC in the Disputed Domain Name could only create an impression that the website resolved therefrom is somehow connected with the trademark MONTBLANC or the Complainant. Therefore, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The burden of production having shifted to the Respondent without the Respondent putting up any iota of suggestion that a bona fide, noncommercial or fair use of the Disputed Domain Name has even taken place, the Panel can only conclude that the Respondent has failed to discharge the same. Accordingly, the Panel determines that the Complainant has successfully established the second limb of paragraph 4(a) on the facts.
On the balance of probabilities from the evidence, the Panel accepts that the trademark MONTBLANC is well known for the purposes of the Policy. The Respondent should in all likelihood have known of the trademark MONTBLANC when the Disputed Domain Name was registered. The addition of the descriptive word “discount” to the trademark MONTBLANC must have been intended to attract interest in products which may be purveyed via the Disputed Domain Name.
In fact, paragraph 4(b)(iv) of the Policy non-exhaustively highlights the following common occurrence of bad faith registration and use under paragraph 4(a):
“by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 banner advertisements associated with explicit adult content and gambling services on the website resolved from the Disputed Domain Name can hardly be said to be for noncommercial purposes. The Panel finds it inconceivable that the Respondent would pick a well-known trademark like MONTBLANC, create the Disputed Domain Name by appending a commercial term like “discount”, set up a website under the Disputed Domain Name, and not have intended Internet users to be attracted thereto because of these composite elements. The Respondent’s purposeful association of the Disputed Domain Name and the trademark MONTBLANC clearly relied on the resulting likelihood of confusion to Internet users to innocently view the content of the website. Not surprisingly, the website had nothing to do with luxury-writing instruments but seek to promote its not-so-innocent content to these Internet users.
Not only is the Respondent redirecting interested Internet users to other products on the website, the Respondent is displaying Internet users with explicit content with potentially disparaging consequences to the reputation of the trademark MONTBLANC. Such instances of “porno-squatting” have been plaguing the domain name system since the early days of the Policy (e.g., Ty, Inc, Complainant v OZ Names, WIPO Case No. D2000-0370; Alessi SPA v Alexandr Gritsay, WIPO Case No. D2007-0176) and show no sign of relenting.
Based on the facts, the Panel is convinced that the Respondent has registered and is using the Disputed Domain Name in bad faith, with no plausible purpose other than to attract Internet users to the website resolved from the Disputed Domain Name for purposes of commercial gain by creating a likelihood of confusion with the trademark MONTBLANC. The apparent surreptitious behaviour of the Respondent providing questionably ineffective facsimile and postal contact particulars in relation to the registration of the Disputed Domain Name serves to reinforce this conclusion. The Panel holds that the third limb of paragraph 4(a) is established.
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 <discount-montblanc.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: June 29, 2020