WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Staatliche Porzellan-Manufaktur Meissen GmbH v. James Garrett

Case No. D2013-1742

1. The Parties

1.1 The Complainant is Staatliche Porzellan-Manufaktur Meissen GmbH, of Meissen, Germany, represented by LS-IP Loth & Spuhler GbR Intellectual Property Law, Germany.

1.2 The Respondent is James Garrett, of Fountain Inn, South Carolina, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <meissenporcelain.com> (the “Domain Name”) is registered with Go Canada Domains, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2013. On October 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

3.2 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”).

3.3 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 October 16, 2013.

3.4 Subsequent to the filing of the Complaint the Respondent engaged in email correspondence with the Center and the Complainant. On November 1, 2013 the Respondent set an email to the Complainant’s lawyer, copied to the Center, in the following terms:

“Mr. Geitz, did you receive my response on October 14th as follows:

‘Mr. Geitz, thanks for the response. I don't really have any issue giving up the domain name. However, I paid $2,000 for it. I don't want to walk away from that investment. Could I get a copy of the complaint or issue? I am jumping to the conclusion that you represent Meissen and that they have an issue with me using the domain name www.meissenporcelain.com.’

I have now read the complaint and obviously I don't really have a defensible position other than that the domain name was available for registration as a premium domain name, so I assumed should Meissen have any interest in the name that they would have bought it. Furthermore, I think it is clear that my site is not trying to deceive anyone as I don't sell anything and I clearly represent myself as a collector and buyer.

With that said I would be happy to transfer the domain name to Meissen, but I would like to have my cost of $2,000 reimbursed. I would also like to move the content of the site to another domain name. Another collector uses the domain name www.meissencollector.com? Would a name similar to that be acceptable?”

3.5 In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2013. The Respondent did not submit a formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on November 6.

3.6 On November 8, 2013, the Complainant’s lawyer responded to the Respondent’s email of November 1, 2013. He stated that his client was considering the Respondent’s offer but informed the Respondent that his client “[would] not tolerate any domain including the trademark Meissen.”

3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 12, 2013. 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.

4. Factual Background

4.1 The Complainant is incorporated under German law. It can trace its origins over 300 years back to the early 18^th Century, when a porcelain manufactory was first set up in the German town of Meissen. Meissen porcelain is well known around the world and continues to be manufactured by the Complainant to this day. The Complainant is able to manufacture a range of 175,000 different porcelain products.

4.2 The term “Meissen” has been used together with a cross swords symbol to designate this business since 1722. The Complainant is also the owner of various registered trade marks around the world that comprise or incorporate the terms “Meissen” or “Meissen Porcelain”. They include:

(i) German registered trade mark no. 39964330 for the word mark MEISSEN in classes 21 and 37 with an application date of October 15, 1999; and

(ii) European Community registered trade mark no. 010295384 for the word mark MEISSEN PORCELAIN in classes 14, 21, 35 and 41 with a filing date of September 27, 2011

4.3 The Complainant also operates a website in respect of its activities from various domain names including <meissen.de> and <meissen.com> and <meissen-porcelain.com>.

4.4 The Respondent is an individual in the United States.

4.5 The Domain Name was registered on October 25, 2010, although it appears to have come into the hands of the Respondent at a later date.

4.6 The Domain Name has been used by the Respondent for a website in relation to the Complainant’s Products. As at the date of the filing of the Complainant and the date of this decision the home page on the website operating from the Domain Name carries the following banner:

4.7 The page then provides information about the history and nature of the Complainant’s products and provides details to anyone wanting to sell Meissen Porcelain to the Respondent as to how they can do so.

4.8 The name of the Respondent does not (as far as the Panel can tell) appear on any page of the website. The only contact detail provided is the email address “[email protected].” Further, the website displays a copyright notice that takes the form “©2003 - 2012 Meissen China.”

5. Parties’ Contentions

A. Complainant

5.1 The Complaint describes at length the Complainant’s history and marks and puts forward various legal arguments in relation to the Domain Name. It is supported by no less than 21 annexes. However, there is a lack of description or evidence as to how the Domain Name has been or is actually being used.

5.2 Nevertheless there are in places allusions to the content of the website operating from the Domain Name. For example, in one part of the Complaint the Complainant asserts:

“The site under the [Domain Name] has not accurately disclosed the relationship of the Respondent with the Complainant. Rather, it falsely suggests that the website is an official or at least endorsed site of the Complainant. This is not considered as bona fide use (cf. WIPO Case No. 2001-0903, Oki Data Americas Inc. v ASD Inc.)”

B. Respondent

5.3 The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.

6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”.

A. Identical or Confusingly Similar

6.4 The only sensible reading of the Domain Name is as the words “Meissen” and “Porcelain” in combination with the “com” generic Top Level Domain (“gTLD”). The Complainant is the owner of at least one trade mark for the term “Miessen Porcelain.” In the circumstances, the Domain Name is identical or confusingly similar to at least one trade mark in which the Complainant has rights. The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.5 The Complaint has failed to explain or evidence how the Domain Name has been used. However, the Panel is prepared to assume that the way in which the Domain Name has been used is as it continues to be used at the date of the decision, i.e. as a website operated by someone who is a purchaser of Meissen porcelain. This is consistent with the Respondent’s statement in an email to the Complainant and the Center on November 1, 2013 that he is a collector and buyer of Meissen.

6.6 In that same email the Respondent denies that he sells anything. Nevertheless the Panel considers that when it comes to assessing whether the Respondent has a right or legitimate interest in the Domain Name, similar considerations arise as would have been the case if the Respondent used the Domain Name to sell Meissen porcelain products.

6.7 The issue of whether a reseller might have a legitimate interest in a Domain Name that incorporates the trade mark used to describe the products being offered for sale is addressed at paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the "WIPO Overview 2.0"). This states as follows:

“Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.

However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>). [See further View 1 in paragraph 2.4 below regarding impersonation.]”

6.8 The fact that this analysis and the Oki Data principles might apply in the circumstances of the case is something that the Complainant appears to recognise by its citation of the Oki Data decision in the Complaint. It claims that these principles are not satisfied in this case because the Respondent does not accurately and prominently disclose the registrant's relationship with the trademark holder.

6.9 The Panel accepts that the website does not make it sufficiently clear that the Respondent is unconnected with the Complainant. No individual or company is named on the website, and the email address put forward and the copyright notice on the site essentially mask rather than reveal who is actually behind the site. Further nowhere on the site is it otherwise made clear that the Respondent is unconnected with the Complainant.

6.10 Further, even had the Respondent done this in this case, the Panel doubts this would save the Respondent. The reason is that the Panel considers this to be a “<trademark.tld>” case of the sort mentioned in the WIPO Overview. Where a registrant deliberately incorporates in a domain name the trade mark of another and fails also to incorporate some distinguishing term that makes it clear on its face that the domain name has not been registered by the trade mark owner, then in the opinion of this Panel there is unlikely to be a right or legitimate interest. The reasoning of this Panel is set out in some detail in its decision in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.

6.11 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy so far as the Domain Name is concerned.

6.12 However, it does not follow that it would be impossible for the Respondent to legitimately choose a domain name that incorporates the term Meissen with a distinguishing term, and to operate a website from that domain name that complies with the Oki Data principles.

C. Registered and Used in Bad Faith

6.13 Given the Panel’s findings on the issue of rights and legitimate interests, the Panel also finds that the Domain Name was registered and used in bad faith as those terms are understood under the Policy. The bad faith resides in the fact that the Respondent has deliberately chosen and used a Domain Name that incorporates the trade mark of the Complainant without any distinguishing term and thereby impersonates the Complainant. There is also the fact that the website operating from the Domain Name fails to adequately identify that the operator of that website is unconnected with the Complainant.

6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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 <meissenporcelain.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: November 17, 2013