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Thierry Mugler S.A.S v. John Mugler [2005] GENDND 27 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thierry Mugler S.A.S v. John Mugler

Case No. D2004-0951

1. The Parties

The Complainant is Thierry Mugler S.A.S, Paris of France, represented by Shield Mark B.V., Netherlands.

The Respondent is John Mugler, Paphos of Cyprus.

2. The Domain Name and Registrar

The disputed domain name <mugler.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2004. On November 12, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On November 18, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com 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 November 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2004. The Response was filed with the Center on December 9, 2004.

The Center appointed Peter G. Nitter as the sole panelist in this matter on December 17, 2004. 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.

On January 4, 2005, the Panel issued an Administrative Panel Procedural Order, requesting that the Respondent provide the Panel with additional documented proof of his assertions. On January 17, 2005, the Center notified the Parties and the Panel that it had received no response from the Respondent to the Panel’s request for more information, and that the Panel therefore was free to make its decision on the information provided to it in the case file. On January 17, 2005, the Panel re-issued the above-mentioned Administrative Panel Procedural Order in text form without attachments order in to ensure that the Respondent had a fair opportunity to respond to the Order, as the Panel was not entirely sure whether Respondent had received the initial Administrative Panel Procedural Order. On January 25, 2005, the Center informed the Parties that the Respondent had not forwarded a submission to the Center in response to the re-issued Administrative Panel Procedural Order.

4. Factual Background

Complainant has documented that it is the holder of trademark registrations dating back to 1989, for THIERRY MUGLER and MUGLER in several countries.

5. Parties’ Contentions

A. Complainant

The domain name at issue is identical to complainant’s trademark registrations.

Complainant owns a great number of trademark registrations for THIERRY MUGLER and MUGLER around the world for perfumes and thereto related products as well as fashion, and said marks have become internationally well-known marks, as concluded in Thierry Mugler v. New York Link, WIPO Case No. D2001-0713.

Respondent has no rights or legitimate interests in respect of the domain name.

There is no evidence that respondent’s use of, or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. A search on “www.archive.org” shows that in the period from December 6, 2000, to May 19, 2001, the domain name has been offered for sale through domain name brokers. After this date, the web site corresponding to the domain name has had the following text:

“Welcome to the Mugler family web site!

If you are one of thousands of people worldwide whose family

name is Mugler and you would like to be included on this web site

then please contact med (John Mugler) at

[e-mail address]@mugler.com

We aim to “go live” very soon so please be patient!”

Having a personal name identical to a famous trademark does not under all circumstances give legitimate interest in the domain name, see Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141.

Based on conducted searches and token actions, Complainant comes to the conclusion that the Respondent does not exist, or cannot be found under the name stated.

On June 16, 2004, a search was conducted by Dr. K. Chrysotomides & Co. on behalf of Complainant, and from this search it appears that the telephone and telefax numbers as mentioned in the registration is listed to a company named Tritonia Developers Ltd.

Search in the company register does not reveal any connection between Respondent and said Tritonia Developers Ltd.

The address of Tritonia Developers Ltd. is different from the address mentioned in the registration of the Respondent.

A search conducted on July 19, 2004, by Focus Forensic Investigations Ltd. on behalf of Complainant, confirmed not only the above but gave also more information on the address. The postal box, no. 1082, is not in the name of Respondent. This belongs to Avanti Hotel, which hotel is not located on the street address indicated in the registration, i.e. Poseidon Avenue.

An e-mail sent on August 19, 2004 and September 20, 2004, to Respondent’s e-mail address was not replied to.

On October 12, 2004, a telefax was sent to the telefax number of the Respondent. This telefax has been responded by mail by an individual from Tritonia Developers Ltd. informing that there is no relation with the website.

B. Respondent

Respondent has asserted that his family name is Mugler, and that the domain name in question is used for a family web site, both for his own family and also for other Mugler-families.

Respondent holds that he does not know about Complainant and its business.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has documented that it is the owner of registered trademarks for MUGLER, and the Panel thus finds that Complainant’s trade mark and the domain name in question are identical.

B. Rights or Legitimate Interests

Respondent has not claimed any rights or legitimate interests in the domain name except from the fact that his family name is Mugler.

Despite the fact that the Panel has offered Respondent ample opportunities of documenting his case through the issuance of a procedural order, the Respondent has not provided the Panel with any documentation of his assertion that his family name is Mugler.

As a result of the fact that it is generally difficult for Complainant to prove the negative that respondent does not have Mugler as a family name, or have any other rights or legitimate interests in the domain name at issue, and that it would be correspondingly easy for respondent to provide evidence of his family name or other rights, the Panel finds that, in accordance with previous panel decisions under the Policy, it is sufficient for complainant to make a prima facie showing that Respondent lacks rights or legitimate interests in the domain name, in the present case where Respondent has not made use of its opportunity to document his assertions after the Panel has made requests for such documentation through Administrative Panel Procedural Orders.

Complainant has carried out and documented extensive investigations into whether Respondent’s family name is in fact “Mugler”. Complainant’s findings shows however that the contact information provided by Respondent, hereunder Respondent’s family name, is incorrect.

In light of the above, the Panel concludes that Complainant has made a prima facie showing that Respondent does not have any rights or legitimate interests in the disputed domain name, and that he therefore has satisfied the condition set out in the Policy, paragraph 4(c).

C. Registered and Used in Bad Faith

Complainant’s documented findings in relation to the contact information provided by Respondent, showing that the contact information is incorrect, is, in the view of the Panel, an indication of bad faith on the part of Respondent. Also Respondent’s failure to respond to the Administrative Panel Procedural Order as well as the re-issued Administrative Panel Procedural Order, requesting documentation of his assertions, is in the opinion of the Panel an indication of bad faith. Finally, the fact that Respondent spent 18 months offering the domain name for sale is a strong indication that the domain name was registered and used in bad faith.

In light of the above, the Panel concludes that Complainant has met its burden of proving bad faith, set out in the Policy paragraph 4(b).

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, <mugler.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: January 26, 2005