C. Josef Lamy Gesellschaft M.B.H. v. Tran-Kien Cao
Case No. D2015-1761
1. The Parties
Complainant is C. Josef Lamy Gesellschaft M.B.H. of Heidelberg, Germany, represented by T&G Law Firm LLC, Vietnam.
Respondent is Tran-Kien Cao of Hanoi North, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name (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 October 2, 2015. On October 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 5, 2015, the Registrar 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” 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 proceeding commenced on October 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 2, 2015.
The Center appointed Grant L. Kim as the sole panelist in this matter on November 12, 2015. The sole panelist 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 C. Josef Lamy Gesellschaft M.B.H., a maker of fountain and ballpoint pens, as well as other writing supplies and stationery, based in Heidelberg, Germany. Complainant has asserted its ownership of several trademark registrations for the mark LAMY in various jurisdictions, including Germany, the European Community, and Viet Nam.
Respondent Tran-Kien Cao is the individual identified by the Registrar as the current owner of the Domain Name , which was registered on November 13, 2012. As of November 21, 2015, the Domain Name resolved to an active website that appears to be in the Vietnamese language and that displays photos and names of pens and other writing products, which links to what appear to be other Vietnamese language websites that sell those products.
5. Parties’ Contentions
Complainant states that it was founded by Josef Lamy in 1930 in Heidelberg, Germany, and that it is a pioneer in the use of composite molded plastic products in manufacturing pens. Complainant asserts that it produces a wide range of writing instruments including fountain pens, ballpoint pens, rollerball pens,
multisystem pens, mechanical pencils and inks. Complainant states that it sells six million writing instruments annually and is known worldwide, including in Viet Nam. Complainant further asserts that its sales in Viet Nam began in 2011, and have increased from USD 11,700 in 2011 to USD 126,000 in 2014. Complainant claims that it has rights in the LAMY mark, that it has spent significant sums promoting and developing this mark in the 84 years since the founding of the company, and that the mark has substantial inherent and acquired distinctiveness in connection with the goods for which it is used and registered.
In support of its claims, Complainant offers evidence that it owns numerous trademark registrations around the world, including International Registration No. 200513 for the mark LAMY in International Class 16, with the registration date of May 15, 1957, and subsequent designation to Viet Nam in 1977. Complainant also offers evidence that it owns International Registration No. 1047896 for the mark LAMY in International Classes 9, 16, 18, and 20, with the registration date of March 24, 2010. Complainant further offers evidence that it owns International Registration No. 1049563 for the stylized mark in International Classes 9, 16, 18, and 20, with the registration date of March 24, 2010.
Complainant contends that the Domain Name is confusingly similar to its registered trademarks because Respondent’s addition of the generic term “but” and the generic Top-Level Domain (“gTLD”) “.com” does not distinguish the Domain Name from Complainant’s mark. Complainant asserts that the term “bút” is the Vietnamese word for “pen”. Thus, Complainant contends that the intended audience of the Vietnamese language website to which the Domain Name resolves will interpret the domain as composed of “pen” and “lamy”.
Complainant also contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant states that Respondent has no registered trademarks or trade names corresponding to the Domain Name, and that there is no evidence suggesting that Respondent has used in any other way that would give it rights or legitimate interests in the name. Complainant further asserts that it has not granted any license or authorization to Respondent to use the LAMY mark. Moreover, Complainant submits that it has held rights in the LAMY mark long before Respondent registered the Domain Name in 2012. Complainant further contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(i) of the Policy because Respondent uses the Domain Name to sell and advertise products for the company named “Bisu Jsc” and because Respondent also sells goods bearing the PELIKAN trademark which belongs to Complaint’s competitor.
Finally, Complainant contends that the Domain Name was registered and is being used in bad faith. Complainant argues that its LAMY mark has considerable value and goodwill, and that Respondent is improperly using the Domain Name to intentionally attempt to attract Internet users to its website for commercial gain, as evidenced by the prominent display of Complainant’s LAMY trademark on the website. Complainant submits that Respondent knew or should have known of the third-party’s rights in the trademark prior to registration given that the registration of the Domain Name in November 2012 occurred long after the LAMY mark became famous and after Complainant had registered its mark in Viet Nam. Further, Complainant asserts that Respondent’s use of the LAMY mark in connection with providing links to domain names such as ,
, , , , , and to direct Internet traffic to other websites demonstrates bad faith. Additionally, Complainant contends that Respondent offers products of a major competitor of Complainant, Pelikan, at the website to which the Domain Name resolves. Accordingly, Complainant alleges that Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel finds that it was properly constituted pursuant to the Rules and that it has authority to decide this dispute. The Panel notes that the Registrar confirmed by email dated October 5, 2015, that the Policy applies to the Domain Name and that the language of the Registration Agreement is English. The Panel also finds that notification of the Complaint and the default was properly sent to Respondent’s physical and email addresses under paragraph 2(a) of the Rules, including both the address of Respondent provided by the Registrar’s WhoIs record and the address provided by the Registrar for the Domain Name. The Panel further notes that notwithstanding Respondent’s failure to respond to the Complaint, the Panel has reviewed the record to determine whether or not Complainant is entitled to the relief requested under the Policy, the Rules, the Supplemental Rules, and applicable substantive law.
The Policy is addressed at resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a/ The Power Tool Store, WIPO Case No. D2002-0774. The Panel has reviewed the record in light of the three requirements set forth in paragraph 4(a) of the Policy, which entitle Complainant to a transfer or cancellation of the Domain Name if Complainant demonstrates:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
To satisfy this element under paragraph 4(a), the Panel must find that (1) Complainant has demonstrated its rights in the LAMY mark; and (2) the Domain Name is identical or confusingly similar to Complainant’s mark.
Complainant has adequately demonstrated its rights in the LAMY mark. Complainant has submitted uncontested evidence that it owns LAMY trademark registrations in multiple jurisdictions, with a first registration date of May 15, 1957. Complainant’s ownership and use of the registered LAMY mark satisfies the initial requirement that Complainant has valid rights in the asserted mark. See, e.g., Micro Electronics, Inc. v. Strateks Corporation, WIPO Case No. D2005-0129 (“[t]he existence of the registered trademarks satisfies the threshold requirement of having rights in the mark”).
Complainant has also demonstrated that the Domain Name is identical or confusingly similar to Complainant’s LAMY mark. Complainant submits uncontroverted evidence in Annex 4 that “bút” is the Vietnamese word for the generic word “pen”. Complainant further submits uncontroverted evidence that the Domain Name resolves to a Vietnamese-language website, which contains links to other Vietnamese-language websites; therefore, the Panel finds that it is directed to a Vietnamese-speaking audience. It is well settled that the addition of a generic term does not defeat a finding of confusing similarity. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 (finding that addition of the generic name “condoms” does not avoid confusion between and the ANSELL mark); Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (finding domain name is confusingly similar to the TAMIFLU mark); Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 (finding confusingly similar to DIXONS); Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 (finding confusingly similar to BLACKBERRY).
Moreover, it is established that the translation or transliteration of a word does not alter the meaning for the confusing similarity analysis. See Compagnie Generale des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279 (finding that is confusingly similar to Complainant’s LE GUIDE ROUGE mark); Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408 (finding that is confusingly similar to the TOSHIBA mark because it is the phonetic equivalent of the Complainant’s 东芝 mark in China and the transliteration of 东芝 mark into Latin script).
Further, it is well settled that adding a gTLD such as “.com” to a domain name does not defeat a finding of confusing similarity. See, e.g., TCN, Inc. v. 3v Networks, WIPO Case No. D2008-0134. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s LAMY mark.
With respect to the second element, Complainant must make at least a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Once Complainant has made a prima facie case, the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests. See Gerd Petrik v. Johnny Carpela, WIPO Case No. D2004-1043 (“Complainant has made the necessary assertions regarding any rights or legitimate interests of the Respondent in the disputed domain name. While not shifting the ultimate burden of proof, these assertions make it incumbent on Respondent to come forward with evidence refuting Complainant’s assertions and establishing Respondent’s rights or interests in the disputed domain name […]”); Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (“[T]he element of possible rights or legitimate interests of Respondent in the disputed domain name involves Complainant proving matters, which are peculiarly within the knowledge of Respondent”, and that requiring the Complainant to make more than a prima facie showing would impose “the often impossible task of proving the negative.”).
Complainant has presented uncontested evidence that it has not licensed or otherwise authorized Respondent to use Complainant’s mark, or to register a domain name reflecting the mark. Furthermore, Respondent has not refuted Complainant’s claim that before notice of the dispute, Respondent did not use the Domain Name in connection with an offering of any goods or services that would support Respondent’s rights or legitimate interests in the Domain Name. In contrast, Complainant has established that it has held rights in the LAMY mark since as early as May 15, 1957, long before Respondent registered the Domain Name in 2012.
The Panel notes, however, that most of the products listed on the website to which the Domain Name resolves appear to be writing products of Complainant. Thus, the Panel needs to consider whether Respondent has a right or legitimate interest in the Domain Name because it is using it to sell trademarked goods of Complainant. While there is a minority view that no such legitimate interest can exist unless the trademark owner expressly authorizes such use, most UDRP panels have held that a reseller has a legitimate interest in using the manufacturer’s mark in a domain name if it meets all four of the following conditions:
(a) the reseller actually offers goods or services associated with the mark;
(b) the reseller uses the domain name to sell only goods or services associated with the mark;
(c) the reseller accurately discloses its relationship with the mark holder; and
(d) the reseller refrains from “cornering the market” on relevant domain names.
Compare Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (legitimate interest found because all four factors met); with Intex Recreation Corp. v. RBT, Inc., Ira Weinstein, WIPO Case No. D2010-0119 (no legitimate interest because not all four factors met). See also paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (summarizing views on this issue and listing exemplary cases).
The Panel need not decide whether to adopt the majority or minority view here, because Respondent does not have a right or legitimate interest in the Domain Name under either view. There is no legitimate interest under the minority view because Complainant has stated that it has not granted authorization to use its trademark, and Respondent has submitted no rebuttal.
There is also no legitimate interest under the majority view because Complainant has submitted evidence that Respondent uses the website to sells products of Pelikan, which is a competitor. See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 (no right or legitimate interest in the domain name where respondent was using to trade on the fame of complainant’s mark to sell products of complainant’s competitors). In addition, there is no evidence that Respondent has accurately disclosed its relationship with Complainant on the website. See Intex Recreation Corp. v. RBT, Inc., Ira Weinstein, supra (no legitimate interest where respondent used its website to sell competing products and did not disclose its relationship with complainant).
The Panel finds that Complainant has presented a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not submitted a reply. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a showing that Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy offers non-exclusive examples of what may constitute evidence of bad faith, including:
(iv) circumstances indicating that Respondent intentionally is using the Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.
Respondent’s website prominently displays both the registered LAMY word mark and the LAMY stylized mark as shown below:
Respondent’s use of the LAMY mark is identical to the stylized mark shown in International Registration No. 1049563 as described in Section 5.A above. Respondent’s use of the LAMY mark in the Domain Name and as a prominent design element on its commercial website constitutes an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
It is well established that where a respondent “knew or should have known” of the existence of complainant’s trademark rights, knowing use of complainant’s mark constitutes bad faith. See The Nasdaq Stock Market, Inc. v. H. Pouran, WIPO Case No. D2002-0770 (finding bad faith in registration of and domain names where the NASDAQ mark is widely publicized globally and featured on the websites at issue); Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 (finding bad faith in registration of where respondent should have been aware of complainant’s worldwide reputation, and presence on the Internet); The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113 (finding bad faith in registration of where complainant’s worldwide reputation, and presence on the Internet, indicates that respondent was or should have been aware of its marks).
Here, Complainant has established that Respondent is aware of its trademark rights because Respondent sells numerous LAMY products. In addition, Complainant has established that it owns International Registration No. 200513 for the mark LAMY with a subsequent designation to Viet Nam in 1977, substantially prior to the registration of the Domain Name in 2012. Complainant also contends that it is widely known in Viet Nam, and it has been selling its products in Viet Nam since 2011. The fact that Respondent registered the Domain Name in November 2012, after Complainant began selling its products in Viet Nam, further confirms that Respondent knew or should have known of the existence of Complainant’s trademark rights and registered the Domain Name in bad faith.
Moreover, Complainant has asserted that Respondent’s website includes advertising of other sites, including ,
, , , , , and . The diversion of consumers searching for Complainant’s website to websites of advertisers supports the Panel’s view that Respondent has sought to profit from the goodwill of Complainant’s LAMY mark in bad faith. See Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson, WIPO Case No. D2006-1585 (use of parking websites to generate click-through fees from links to competitors qualifies as bad faith, because it intentionally capitalizes on the goodwill of trademark owner); AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 (use of a well-known mark in connection with website that offers advertising to other sites is calculated to “free-ride” on and profit from the complainant’s reputation in its mark).
The conclusion that Respondent’s website seeks to divert Internet users looking for Complainant’s products is further supported by the strength and arbitrary nature of the LAMY mark. Respondent’s use of the arbitrary mark LAMY, which is associated strongly with Complainant and has no other meaning, suggests that Respondent was motivated by an improper purpose in registration and use of the Domain Name. See Laboratoire Nutergia v. Jeongyong Cho, WIPO Case D2007-1582 (“Registration of an arbitrary trademark with an exclusive connection to a commercial product and limited potential utility as a common conveyor of information supports an inference of bad faith.”); see also Pharmacia & Upjohn Company v. Xanax Advocates, WIPO Case No. D2000-0817.
Considering all these factors together, the Panel concludes that Complainant has submitted sufficient evidence to support the conclusion that Respondent likely registered and is using the Domain Name in reliance upon Complainant’s well-known and established mark LAMY in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Moreover, Respondent has offered no reply or rebuttal to the Complaint. Therefore, the Panel finds that Complainant has established Respondent’s bad faith registration and use of the Domain Name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Grant L. Kim
Date: November 25, 2015