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Lexar Media, Inc. v. Michael Huang [2005] GENDND 72 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Voigtländer GmbH v. The Photo Village, Inc.

Case No. D2004-0872

1. The Parties

The Complainant is Voigtländer GmbH, Fürth, Germany, represented by Gramm, Lins & Partner, GbR, Germany.

The Respondent is The Photo Village, Inc., New York, New York, United States of America.

2. The Domain Names and Registrar

The disputed Domain Names <voigtlandershop.biz>, <voigtlandershop.com> and <voigtlandershop.net> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2004. On October 25, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the Domain Names at issue. On October 25, 2004, Wild West Domains, Inc. 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 October 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2004. At the request of the Complainant, the proceedings were suspended by the Center on November 19, 2004, for a period of thirty days, that is, until December 18, 2004, to enable the Respondent to cancel the Domain Names in question. The Respondent failed to do so, and, at the request of the Complainant, the proceedings were resumed on December 21, 2004. The Respondent did not file any formal Response.

The Center appointed Ian Blackshaw as the sole panelist in this matter on January 6, 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 is the owner of several trademark rights in the name “Voigtländer” in many countries. Furthermore, the name “Voigtländer” is used by the Complainant as a trade and company name. The Complainant has been using the name “Voigtländer” for many decades and has become a well-known trademark and company name for its photographic products, which are sold throughout the world.

The Respondent operates a shop selling photographic products, including those of the Complainant and also those of its competitors; and has registered the Domain Names in question linking two out of three to the Respondent’s own website of “www.photovillage.com”. The Complainant has not authorized such use of its trademarks, trade and company names by the Respondent. By these means, the Respondent attracts customers to its shop.

The Complainant holds various trademark registrations for the name “Voigtländer” in respect of “optical and photographical apparatus, instruments and utensils” in Germany and several other countries in Europe and others in the rest of the world, including Brazil, Hong Kong (SAR of China) and Japan. The Complainant has used the name “Voigtländer” for many years and also has the following registrations in the USA, where the Respondent is domiciled and carries on its business, as well as its neighboring countries of Canada and Mexico:

- USA Application Date: 24.07.1998 Application/Registration

No: 75/525,309;

- USA Application Date: 08.02.2001 Application/Registration

No: 78/047,268;

- Canada Application Date: 29.12.1959 Application/Registration

No: 123,437;

- Mexico Application Date: 08.01.2001 Application/Registration

No: 464 885;

- Mexico Application Date; 08.01.2001 Application/Registration No; 464 886.

The Complainant also holds several International Registrations covering the name “Voigtländer” and the above-mentioned products in various countries as follows:

- Application Date: 21.08.1950 Application/Registration No: 148 591;

- Application Date: 12.11.1974 Application/Registration No; 412 390;

- Application Date: 01.09.2000 Application/Registration No: 748 062;

- Application date; 15.12.2000 Application/Registration No: 750 212.

In order to protect its rights in its well-known trademarks, trade and company names, the Complainant has initiated these proceedings, requesting the cancellation of the Domain Names registered by the Respondent, following the Respondent’s failure to comply with the Complainant’s written request of March 2, 2004, to do so.

The Respondent registered the Domain Names on August 7, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names at issue are identical or confusingly similar to its trademark and company name on the following grounds.

VOIGTLÄNDER registered and used for photographic products, including cameras, in various countries around the world. The Domain Names are composed of the word “Voigtländer” and the word “shop”. The word “shop” has a clear meaning so far as internet users are concerned in that they expect to find a website where “Voigtländer” products are sold. As regards the word “Voigtländer”, as the English language is universally used on the internet, the German “ä” is not possible, so the name “Voigtländer” is rendered in its Anglicized form of “Voigtlander”. The Domain Name, if not identical, is still confusingly similar to the trademark and trade name of the Complainant. The addition of the word “shop” as part of the name does not make any difference; consumers are misled because they expect to get information from the owner of the trademark when contacting a website using a Domain Name which essentially consists of its trademark.

The Complainant further contends that the Respondent does not have any rights or legitimate interests in the Domain Names at issue on the following grounds.

The Respondent does not have any registered or unregistered trademark rights in the name “Voigtländer” or “Voigtlander”. Additionally, the Respondent lacks any legitimate interest since the Respondent uses the Domain Name <voigtlandershop.com> to sell “Voigtländer” products and also goods of other manufacturers who are in direct competition with “Voigtländer “. Moreover, the Domain Names <voigtlandershop.biz> and <voigtlandershop.net> directly link the Internet user to the homepage of “www.photovillage.com”, which is owned by Photo Village, Inc., the Respondent.

The Complainant also claims that the Respondent has registered and used the Domain Names in bad faith on the following grounds.

Internet users wishing to buy on line the Complainant’s well-known products by logging onto the Domain Names at issue, which incorporate the Complainant’s name “Voigtländer”, will be led to the Respondent’s website “www.photovillage.com”, which not only offers products of the Complainant but also those of its competitors. Furthermore, Internet users will also expect to obtain information on the Complainant’s products only on the websites operated by the Respondent, which are apparently authorized by the Complainant, since they incorporate the Complainant’s registered trademarks and trade name. And, finally, the use of the <voigtlandershop> Domain Names for sites that not only sell “Voigtländer” products but also its competitors’ products constitutes an improper use of the Complainant’s mark to attract internet users to the Respondent’s site for commercial gain. Additionally, the fact that the Respondent did not respond to the request by the Complainant of March 2, 2004, to cancel the Domain Name registrations suggests that these registrations and the use of them by the Respondent were made in bad faith.

B. Respondent

The Respondent, having been duly notified and kept informed of the proceedings by the Center, did not file a Response to the Complainant’s Complaint.

6. Discussion and Findings

To qualify for cancellation, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed 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 disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous cases in which the Respondent failed to file a Response, the Panel’s decisions were based upon the Complainant’s assertions and evidence, as well as inferences drawn from the Respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936. The failure by the Respondent to dispute the Complainant’s allegations allows the inference to be drawn by the Panel that they are true.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

The Domain Names at issue comprise the Complainant’s well-known registered trademark and trade name “Voigtländer” in anglicized form, that is, without the German umlaut over the letter “a”, with the addition of the generic word “shop”. It is established case law that where a domain name incorporates a Complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, in Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413, it was held that the domain name <chanelstore.com> was confusingly similar to the “Chanel” mark. And that the addition of the generic term “store” did not avoid any such confusion. On this point, see EAuto L.L.C. v. Triple S. Parts d/b/a Kung Fu Yea Enters, Inc., WIPO Case No. D2000-0047.

Likewise, in Nike Inc. v. Crystal International, WIPO Case No. D2001-0102, it was held that the domain name <nikeshop.net> would cause confusion with the Nike trademark and must be transferred to Nike Inc.

Accordingly, in the present case, the addition of the generic name “shop” does not make any difference, from a trademark infringement point of view.

It should also be added that the Complainant is already the owner of several “voigtlaender” domain names under, inter alios, the “.biz”, “.com”, and “.net” top-level-domains, under which the Complainant offers for sale its photographic products. And that in Voigtländer GmbH v. John Voigtlander, WIPO Case No. D2003-0095, the domain name <voigtlander.com>, registered by the respondent in that case, was held to be an infringement of the Complainant’s trademark and company name rights on the ground of its being “identical” and the Panel ordered such domain name to be transferred to the Complainant.

Thus, in the view of the Panel, the Domain Names at issue are identical or confusingly similar to the Complainant’s trademark and trade name.

B. Rights or Legitimate Interests

The Respondent does not have any trademark rights of any kind whatsoever – either registered or unregistered - or any other rights - by license or otherwise - in or regarding the use of the name “Voigtländer” or “Voigtlander” which forms an essential and integral part of the Domain Names at issue. The fact that the Respondent offers for sale the Complainant’s products does not per se entitle the Respondent to exploit the Complainant’s trademark and trade name for its own commercial gain.

Furthermore, the Respondent does not have any legitimate interest, as the Respondent uses the Domain Name <voigtlandershop.com> to sell “Voigtländer” products and also goods of other manufacturers, who directly compete with “Voigtländer”. Also, the Domain Names <voigtlandershop.biz> and <voigtlandershop.net> directly link the Internet user with the homepage of “www.photovillage.com”, which is owned by Photo Village, Inc., the Respondent. These links have been set up by the Respondent, without any authorization of the Complainant, the proprietor of the registered trademark and trade name “Voigtländer”, under which the Complainant’s products are sold and under which the Complainant conducts its business. This, the Respondent, is clearly not entitled to do; neither is it a legitimate activity on the part of the Respondent.

The issue of a respondent selling competing products as well as a complainant’s products through a domain name arose in Nikon, Inc. and Nikon, Corp. v. Technilab, Inc., WIPO Case No. D2000-1774, where it was held that: “…[the] Respondent lacks a legitimate interest…. because Respondent appears to have used at least the <nikoncamera.com> domain name to sell both Nikon products and goods of other manufacturers who compete directly against Nikon.” Reference should also be made to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and to the other cases cited in the Nikon decision, in particular, the US case of Mariah Boats, Inc. v. Shoreline Marina, LLC, Case No. FA 94392 (NAF May 5, 2000), which also held that there was no legitimate interest in the use of a mark in a domain name that also “sells competitive products of other manufacturers.”

The Panel concludes, therefore, that the Respondent does not have any rights or legitimate interests in the present case.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. This list is not exhaustive but merely illustrative. See Nova Banka v. Iris, WIPO Case No.D2003-0366.

Paragraph 4(b)(iv) of the Policy is relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the Domain Names, 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 its website or location.”

By incorporating the Complainant’s Name “Voigtländer” into the Domain Names at issue, Internet users wishing to buy on line the Complainant’s well-known products by logging onto the Domain Names at issue will be led to the Respondent’s website “www.photovillage.com”, which not only offers products of the Complainant, but also those of several of its competitors. The use of the <voigtlandershop>Domain Names for sites that not only sell “Voigtländer” products but also several of its competitors’ products constitutes an improper use of the Complainant’s trademark to attract internet users to the Respondent’s site for commercial gain.

In all these instances, in the absence of any justification or explanation to the contrary by the Respondent, of which none has been forthcoming, the clear impression emerges that the Respondent is creating confusion in the minds of consumers seeking information on the Internet about and wishing to purchase the products of the Complainant, with the sole purpose on the part of the Respondent of taking improper advantage of and exploiting unfairly and for its own commercial and financial gains the Complainant’s goodwill, reputation and investment over many years in its well-known and, therefore, commercially valuable trademark and trade name.

The fact also that the Respondent did not respond to the request by the Complainant of March 2, 2004, to cancel the Domain Name registrations, the grounds for which were explained to him by the Complainant’s representative, and also, having promised, after the proceedings had commenced to transfer the Domain Names at issue to the Complainant, but having failed to do so, are further evidence or indications of a lack of good faith on the part of the Respondent, or, at the very least, a reckless or irresponsible disregard by the Respondent of the Complainant’s rights in the present case.

The Panel, therefore, concludes, that the Respondent has registered and used the Domain Names at issue in bad faith.

And, in the wider context, the Panel further concludes that all of the requirements of paragraph 4(a) of the Policy have been satisfied.

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 Names, <voigtlandershop.biz> <voigtlandershop.com>, and <voigtlandershop.net> be cancelled.

Ian Blackshaw
Sole Panelist

Dated: January 10, 2005