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FMTM Distribution Limited v. Frnack Muller [2005] GENDND 1440 (24 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FMTM Distribution Limited v. Frnack Muller

Case No. D2005-0708

1. The Parties

The Complainant is FMTM Distribution Limited, Tortola, British Virgin Islands and Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Mr. Yvan Merlotti and Mr. Jean-Marc Vuithier of Cabinet Juridique Merlotti, Switzerland.

The Respondent is Frnack Muller, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <franckmuller.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2005. On July 6, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 7, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2005.

The Center appointed David Williams QC as the sole panelist in this matter on August 17, 2005. 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

The Complainant asserted, and provided evidence in support of the following facts. The Panel finds these facts established.

Complainant’s Trademarks

The Complainant is the owner of the FRANCK MULLER trademark, which is registered, especially in international class 14, in eighty-one countries. This trademark was first registered in Switzerland on February 21, 1992. Of relevance to this case, the trademark was also filed on June 14, 1994, in the United States of America.

Complainant’s Activities

The Complainant has granted a license for the FRANCK MULLER trademark to Franck Muller Watchland SA, a Swiss Corporation. Under this license Franck Muller Watchland SA manufactures Franck Muller watches. These watches have an international reputation.

The Complainant and Franck Muller Watchland SA are both members of the Franck Muller Group, formed in 1991, by Mr. Franck Muller and Mr. Vartan Sirmakes. The FRANCK MULLER trademark has rapidly gained a wide reputation due to the popularity of Franck Muller watches worldwide. In 2002, global turnover passed CHF 300 million and has remained above this level since then.

Respondent’s activities

The domain name <franckmuller.com> was registered on January 27, 2004. The Registrant was indicated as Diamondstore Inc, George Ouzounian, Los Angeles, California, USA, and the Administrative Contact, “worldofdiamond, Kevin kev”, with the same address as the Registrant.

On November 11, 2004, the Complainant wrote to the both the Registrant and Administrative Contact, confirming that the Complainant was the legitimate owner of the FRANCK MULLER trademark and requesting the transfer of the disputed domain name. The letter to Diamondstore Inc. was returned as undeliverable.

By March 23, 2005, the Registrant and Administrative Contact had been changed to Factory Tom Sorrato, Los Angeles, California, USA. The contact phone number remained unchanged.

On March 24, 2005, Complainant’s lawyer wrote to “Factory Tom Sorrato” requesting the transfer of the domain name to the Complainant. UPS could not deliver the letter to the address given for registration. However, the letter was successfully transmitted by facsimile.

The Respondent became the Registrant and Administrative Contact for the disputed domain name on April 14, 2005. The Respondent still has the same contact phone number as the first and second registrants.

5. Parties’ Contentions

A. Complainant

The Complainant submits that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the disputed domain name.

In relation to element (i) of paragraph 4(a), the Complainant submits that the domain name is confusingly similar to the FRANCK MULLER registered trademark.

In relation to element (ii) of paragraph 4(a), the Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating its trademark.

The Complainant submits that the Respondent has not been using the disputed domain name in connection with a bona fide offering of goods and services. The Complainant further asserted that the Respondent has not been commonly known by the domain name and has not made any legitimate non-commercial or fair use of the domain name. In fact, the domain name has been used for commercial gain, without authorization from the Complainant, by misleadingly diverting consumers to websites of on-line retailers that are not authorized dealers of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent has not replied to any correspondence from the Center. The Panel notes paragraph 5(e) of the Rules, which states, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.”

6. Discussion and Findings

To succeed in its request for the transfer of the disputed domain name, the Complainant must establish, that with respect to the domain name in question:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

These matters are dealt with consecutively.

A. Identical or Confusingly Similar

The Complainant has alleged that the disputed domain name is confusingly similar to its FRANCK MULLER trademark.

The disputed domain name <franckmuller.com> is substantially similar to the Complainant’s trademark. The only difference being the space between the two words and the addition of the suffix “.com”. The lack of a space does not create any difference since the public are accustomed to seeing two words run together for the purposes of forming a domain name. Likewise, the suffix “.com” is not significant when identifying the domain name, since it is a generic “.com” domain suffix (see Gianfranco Ferre S.p.A v. Unasi Inc. WIPO Case No. D2005-0622).

The Panel finds that the domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has filed no response to the Complaint, and so has made no assertion of interest in the disputed domain name as for provided for in paragraph 4(c) of the Policy. The failure to file a Response or to otherwise assert any such rights or interests leads to a presumption the Respondent is unable to establish any such rights or interests. (See Cornell Trading, Inc. v. Web-Interactive.com Inc., WIPO Case No. D2000-0887; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004). As stated by the panel in Cornell Trading, the burden of proof shifts where the Complainant presents a prima facie showing, as has occurred in the instant case.

The Complainant has submitted that the Respondent has no rights or legitimate interests in the FRANCK MULLER mark. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark.

The Complainant submitted that the Respondent has not been using the domain name in connection with a bona fide offering of goods and services. The Respondent was indicated as the Registrant and Administrative Contact for the disputed domain name on April 14, 2005. However, the history of registration of the domain name strongly suggests a link between the Respondent and the previous two registrants. In particular, they all share the same phone number.

From at least March 23, 2005, a website has been operated in relation to the disputed domain name. This website contains a series of links. Prominent amongst these is a category called “Popular Categories”, which lists a number of famous watch brands including Franck Muller. The Franck Muller link leads to a number of third party websites advertising the sale of Franck Muller watches. None of these third parties are licensed by, or authorized dealers for the Complainant. The website also contains a number of other links under categories of business such as Travel, Money Savers, Gambling, Services, Leisure and Learn More.

The case of Société des Hotels Méridien v. LaPorte Holdings Inc., WIPO Case No. D2004-0849, states that “the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.” The Respondent’s conduct in using the Complainant’s trademark to redirect Internet traffic to third party websites is done with the intention of misleading consumers for the purpose of commercial gain. There is no other inference that can be drawn from the use of the disputed domain name, given the lack of any connection between the Respondent and the disputed domain name. This is not a legitimate non-commercial or fair use of the domain name pursuant to paragraph 4(c)(iii) of the Policy nor is the Respondent commonly known by the domain name. Given the registration history for the disputed domain name the Panel gives no weight to the fact that the Respondent’s name is the same as the Complainant’s trademark, albeit misspelt. This is further reinforced by the fact the Respondent has not filed any response.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, if found by the Panel to be present, the following activities undertaken by the Respondent shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

…

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your websites 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 your websites or location or of a product or service on your website or location.”

Bad faith in registration

The Panel notes that there is a real likelihood that the Respondent is the same person as the first and second registrants. The phone number of the contact details has remained unchanged for all three and the content of the related website has also remained the same. The changes of registrant have also occurred shortly after the Complainant has written and notified the registrant that it considers its trademark is being infringed. Previous panels have found that such behaviour is a sign of bad faith (See British Sky Broadcasting Group plc v. Mr. Pablo Merino and Skyservices S.A., WIPO Case No. D2004-0131).

Bad faith in use

The Complainant submitted that the Respondent’s use of the disputed domain name and related website was an “attempt to attract, for commercial gain, Internet users to the Respondent’s website or other on-line locations, by creating a likelihood of confusion with the Complainant’s trademark 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’s trademark is known worldwide and the Respondent could not have failed to have been aware of the Complainant’s trademark. Such awareness is reinforced by the fact the Franck Muller watches feature prominently on the website. This is a clear infringement of paragraph 4(b)(iv) of the Policy.

The Complainant also submitted that paragraph 4(b)(i) of the Policy had been infringed by the fact that the website is built on “Domain Sponsor”, a service offered by “www.domainsponsor.com” that includes a “domain name offer service”. Given the Panel’s finding above in relation to paragraph 4(b)(iv) of the Policy it considers it unnecessary to decide on this point.

The Panel finds that the domain name has been registered and used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <franckmuller.com> be transferred to the Complainant.

David Williams QC
Sole Panelist

Dated: August 24, 2005