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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Die Marlene Dietrich Collection GmbH v. Johan Duplesis Du Plesis
Case No. D2007-1306
1. The Parties
The Complainant is Die Marlene Dietrich Collection GmbH, of Munich, Germany, represented by Rechtsanwдlte Dr. Roth & Kollegen, Germany.
The Respondent is Johan Duplesis Du Plesis, of Pretoria, South Africa.
2. The Domain Name and Registrar
The disputed domain name, <marlenedietrich.com>, (the “Domain Name”) is registered with Blue Razor Domains (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2007. On September 5, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 5, 2007, the Registrar’s parent company transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 12, 2007 (September 18, 2007 in hardcopy form).
The Center verified that the Complaint (together with the amendment to 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 September 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2007.
The Center appointed Tony Willoughby, Thomas M. Legler and Charnй Le Roux as panelists in this matter on October 29, 2007. The Panel finds that it was properly constituted. Each member of 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 registered proprietor of German trademark registration number 300 64 710 dated August 29, 2000 for the word mark MARLENE DIETRICH in a large number of classes for a very wide range of goods and services.
The Domain Name was registered on December 21, 2004.
On August 2, 2007 the Complainant’s representative wrote to the Respondent stating that he was writing on behalf of Marlene Dietrich’s daughter and sole heir and three associated companies including the Complainant. The letter drew attention to his clients’ trademark and personality rights and demanded inter alia transfer of the Domain Name by no later than August 10, 2007.
In the course of June and July there was correspondence between the parties, but inexplicably the Complainant has provided the Panel only with the emails emanating from the Respondent’s side.
The Domain Name does not appear to be in use, nor has any evidence been put before the Panel as to any previous use.
5. Parties’ Contentions
The Complainant points to its German registered trademark, MARLENE DIETRICH (words), and contends that, absent the generic domain suffix, the Domain Name is identical to a trademark in which it has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has not been granted any rights in respect of the trademark MARLENE DIETRICH and that name is not the Respondent’s name. The Complainant claims that the Respondent cannot have chosen the Domain Name “for any other reason than in order to seek to create an impression of an association with the Complainant, so that one must find that the Respondent has no rights or legitimate interests in the Domain Name”.
Finally, the Complainant contends that the Domain name was registered and is being used in bad faith. The Complainant contends that Marlene Dietrich’s fame is still such that the Respondent when registering the Domain Name must have known of her. The Complainant contends that the failure of the Respondent to respond to the cease and desist letter is an indication of the Respondent’s bad faith.
The Complainant also refers to the Respondent’s “passive holding” of the Domain Name and refers to a previous decision in which that doctrine is articulated. The Complainant contends that this case is just such a case where the Respondent’s passive holding of the Domain Name should be seen as an indication of bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy. The Complainant contends that the inference has to be that the Respondent registered the Domain Name “either ultimately to sell the Domain to the trademark owner or to exploit the goodwill associated with the mark while taking following criteria into account”, namely an alleged attempt to sell the Domain Name to the Complainant for Ј7,000.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(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 in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it is the registered proprietor of a German trademark registration of the word mark, MARLENE DIETRICH.
Accordingly, ignoring for this purpose the generic domain suffix (as the Panel is entitled to do), the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant asserts that its trademark is world famous and that it has not granted the Respondent any rights in respect of the Domain Name. The Complainant points out that the Respondent is not known by the Domain Name or any name corresponding to the Domain Name; moreover, the Respondent has not made any use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy. In other words there is a case for the Respondent to answer.
The Respondent has not seen fit to provide an answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name with a view to selling it to the Complainant. In support, the Complainant exhibits an email dated June 13, 2007 from a domain name broker to one of the Complainant’s directors (Marlene Dietrich’s grandson) indicating that the price for the Domain Name is Ј7,000.
While that might have appeared strong evidence in support of the Complainant’s contention, the email in question is clearly a response to an enquiry from the Complainant’s director. The earlier email is not exhibited.
There is then another exhibited email from the broker dated July 6, 2007, which appears to have been in response to an intervening communication from the Complainant’s director, but that intervening communication is not exhibited. The July 6, 2007 email includes the following passage:
“I have spoken with our client and he has agreed to allow us to transfer it this [sic] domain to you but if you agree, that will be the end of the story …. If this is acceptable we will send you the login details for the domain and you can take immediate control. We are prepared to do this at our own admin and time related expences [sic].”
The Complaint does not relate how (if at all) this negotiation progressed.
Suffice it to say that the Panel does not regard this incomplete correspondence as conclusive of anything.
However, (a) the name of Marlene Dietrich is world famous, (b) it is highly probable that the Respondent, when he registered the Domain Name, appreciated that it was a registered trademark — a very high proportion of such names are registered as trademarks, (c) accordingly, he will have appreciated from the outset that the Domain Name will have had a substantial commercial value and (d) he will be likely to have known that anyone (other than the Complainant or a licensee of the Complainant) making commercial use of the Domain Name would be likely to be infringing the Complainant’s rights.
The Respondent had the opportunity in this administrative proceeding to demonstrate that he had rights or legitimate interests in respect of the Domain Name, but elected not to take up that opportunity. The Complainant’s contentions are unchallenged.
Taking all the above circumstances into account and taking into account, in addition, the fact that the list of examples of bad faith registration and use in paragraph 4(b) of the Policy is a non-exhaustive list, the Panel concludes that the Respondent registered the Domain Name with the intention of exploiting, in one shape or form, the goodwill associated with the Complainant’s widely known trademark, a trademark in which the Respondent has no rights or legitimate interests.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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, <marlenedietrich.com>, be transferred to the Complainant.
Thomas M. Legler
Charnй Le Roux
Dated: November 12, 2007