WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Desco Von Schultess AG v Daniel Fernandez
Case No. D2001-1140
1. The Parties
The Complainant is Desco Von Schultess AG, 2 Brandschenkestrasse, 8039 Zurich, Switzerland.
The Respondent is Daniel Fernandez, La Matillia, 28035 Madrid, Spain.
2. The Domain Name and Registrar
The Domain Name is .
The Registrar is CORE Internet Council of Registrars.
3. Procedural History
The Complaint was received by WIPO by email on September 18, 2001, and in hardcopy form on September 19, 2001. Following a request from WIPO the Complainant amended the Complaint and submitted the Amended Complaint ("the Complaint") by email on September 21, 2001, and in hard copy form on September 25, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). CORE Internet Council of Registrars has confirmed that ("the Domain Name") was registered through CORE Internet Council of Registrars and that Daniel Fernandez is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name. The Registrar has further confirmed that the Registration Agreement is in the English language.
On September 20, 2001, the Respondent emailed WIPO in Spanish indicating that he did not understand written English very well.
On September 27, 2001, WIPO replied in Spanish informing the Respondent that the language for these administrative proceedings would be English because English is the language of the Registration Agreement.
On October 3, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was October 23, 2001. No Response was received.
The Panel was properly constituted. The undersigned Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence".
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel�s Decision is, November 22, 2001.
It is convenient to deal here with the issue as to the language of these proceedings, the Respondent having raised the issue in his correspondence with WIPO referred to above.
Paragraph 11(a) of the Rules reads:-
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Panel sees no reason to vary the rules in this case. It is to be noted in this regard that the Respondent�s email to the Complainant�s Belgian distributor offering the Domain Name for sale was worded in English. It is also relevant that even when the Complainant�s attorney wrote to the Respondent (see below) in Spanish, the Respondent still failed to reply.
4. Factual Background
The Complainant is the proprietor of the Maurice Lacroix brand of watch.
The Complainant and its predecessors in title have been producing and selling Maurice Lacroix watches for over 25 years.
The Complainant is the proprietor of various trade mark registrations of, or including, the name Maurice Lacroix. One such registration is international registration number 409837 dated October 9, 1973 for Maurice Lacroix (words) in Class 14 for, inter alia, "horlogerie et autres instruments chronométriques".
The Complainant is the proprietor of a large number of domain names featuring the name Maurice Lacroix, including the domain name .
On July 24, 2000, the Respondent registered the Domain Name.
On July 28, 2000, the Respondent sent an email to the Complainant indicating that the Domain Name was for sale. Rodania is the authorized distributor of Maurice Lacroix watches in Belgium.
On August 3, 2000, the Complainant�s attorney wrote to the Respondent drawing attention to the Complainant�s rights and demanding transfer of the Domain Name. A �chaser� was sent on August 16, 2000. The Respondent did not reply.
The Respondent renewed the Domain Name on July 10, 2001. On August 15, 2001, the Complainant�s attorney wrote to the Respondent (by email, fax and registered mail) referring to the previous correspondence, referring to the Respondent�s renewal of the Domain Name, reiterating the Complainant�s trade mark rights and demanding transfer of the Domain Name.
On August 15, 2001, the Respondent emailed the Complainant�s attorney in Spanish indicating that he does not speak English and asking for the attorney�s telephone number. On August 16, 2001, the Complainant�s attorney spoke to the Respondent by telephone. According to the Complainant the Respondent explained that:-
1. he had no intention of answering in writing to the Complainant�s claim;
2. the Domain Name was his own property and he had no intention of giving it away for nothing;
3. he knew that the Maurice Lacroix trade marks are for watches; and
4. he was awaiting a purchase proposal from the Complainant.
On August 23, 2001, the Complainant�s attorney wrote again to the Respondent, a repeat of the letter of August 15, but this time in Spanish. The letter gave the Respondent 10 days within which to provide a satisfactory reply. The Respondent did not reply.
5. Parties� Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant'� trade mark Maurice Lacroix.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has not granted to the Respondent any licence to use the Complainant�s name or trade mark. So far as the Complainant is aware, the Respondent is not known as Maurice Lacroix. His name is Daniel Fernandez. So far as the Complainant is aware the Respondent does not trade or carry on any other activity under or by reference to the name Maurice Lacroix. The Domain Name is not connected to an active website and notwithstanding that the registration was made some 16 months ago.
The Complainant contends that the Domain Name was registered in bad faith and is being used in bad faith. The Complainant points to the fact that within a few days of registering the Domain Name the Respondent emailed the Complainant�s Belgian distributors to inform them that the Domain Name was for sale.
The Complainant contends that the Respondent clearly registered the Domain Name knowing that it was the name of the Complainant and with the intention of selling it to the Complainant or one of its distributors.
The Complainant says that after the initial correspondence referred to above, it decided to wait until July this year to see if the Respondent allowed the registration to lapse.
The Complainant also points to the telephone conversation between the Respondent and the Complainant�s attorney, which is referred to in paragraph 4 above.
B. Respondent
The Respondent has not responded.
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, 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; 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.
Where a Respondent who has been properly notified of the Complaint fails to respond, the Panel is entitled to draw such inferences as it considers appropriate (Rule 14(b)).
Given the irrefutable background facts it is not necessary for the Panel to draw any particular inferences from the Respondent�s failure to respond. However, in the absence of any denial, the Panel has no hesitation in accepting as accurate the Complainant�s account of the Complainant�s attorney�s telephone conversation with the Respondent on August 16, 2001.
Identical or Confusingly Similar
The Complainant has demonstrated that it is the proprietor of the trade mark MAURICE LACROIX for, inter alia, watches. The Domain Name comprises the Complainant�s trade mark and the generic .net suffix.
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
Rights of the Respondent
Under this head the task of the Panel is to assess:-
1. whether the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name; and then
2. whether for the reasons set out in paragraph 4(c) of the Policy or for any other reason, the Respondent can reasonably be said to have any rights or legitimate interests in respect of the Domain Name.
The Complainant has clearly made out a prima facie case. The Domain Name comprises in essence the Complainant�s trade mark. The Respondent�s email of July 28, 2000, makes it clear that the Respondent has at all material times been aware that Maurice Lacroix is a trade mark for the Complainant�s watches. By that same email, the Respondent makes it clear that sale of the Domain Name was in the forefront of his mind.
The Respondent has come forward with no explanation as to why he might be said to have any rights or legitimate interests in respect of the Domain Name. The Panel can think of no reason why the Respondent might reasonably be said to have any rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if shown to be present, shall constitute evidence of registration and use in bad faith. It is unnecessary to read beyond the first example. Paragraph 4(b)(i) reads as follows:-
"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".
Given the facts as set out above, the Panel is in no doubt that the Respondent selected the Domain Name because it was the Complainant�s trade mark and with the intention of selling the Domain Name to the Complainant or one of its distributors. The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
7. Decision
In light of the foregoing findings, namely that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Panel direct that the Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: November 22, 2001
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