WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolex S.A. v. Mr. Peter Kaeppeli
Case No. D2003-0569
1. The Parties
The Complainant is Rolex S.A., Geneva, Switzerland, represented by Gros & Waltenspuhl, Switzerland.
The Respondent is Mr. Peter Kaeppeli, Manila, Philippines.
2. The Domain Names and Registrar
The disputed domain names are:
(the "Domain Names") are all registered with Network Solutions, Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2003. On July 23, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names at issue. On July 29, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contacts.
3.2 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").
3.3 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 August 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on August 27, 2003.
3.4 In an email dated August 27, 2003, in response to the Center�s notification of the Respondent�s default by email, the Respondent replied that he had not received any previous documents in relation to the proceedings. In subsequent email correspondence the Center explained that the notification of Complaint had been made by email and by Federal Express courier, to the addresses given by the Registrar. No indication had been received that either of these communications had not been delivered successfully, and in the case of the courier package, the Center identified to the Respondent the name of the individual who had signed for the package.
3.5 Under paragraph 2(a) of the Rules, the Center is required "to employ reasonable available means calculated to achieve actual notice to Respondent" of a complaint. As a preliminary matter, the Panel finds that, by sending the Complaint to the Respondent by email and by courier to the addresses provided by the Registrar, the Center discharged its responsibility. The Panel notes in this regard the decisions in AT&T Corp. v. Damian Macafee, WIPO Case No. D2001-1159 and AT&T Corp. v. WAP S.A., WIPO Case No. D2003-0497 in which the Panel held that the Center had discharged its responsibility under paragraph 2(a) in cases where an email sent to the email address provided by the Registrar "bounced back" with a message that the email had not been successfully delivered, and the postal copy of the complaint was returned to the Center undelivered.
3.8 In any event, paragraph 2(a) also provides that "achieving actual notice" of the complaint discharges the Center from its obligations. Since the Respondent did not continue his email correspondence with the Center following communication of the name of the individual who had signed for the courier package, whether to request the sending of another copy of the Complaint or to request an extension of time to obtain a copy of the Complaint, the Panel infers and finds as a matter of fact that the Respondent did receive actual notice of the Complaint, and that paragraph 2(a) is therefore satisfied in any case.
3.9 The Center appointed Matthew S. Harris, Peter G. Nitter and Beatrice O. Jarka (the "Panel") as panelists in this matter on September 16, 2003. 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 paragraph 7 of the Rules.
4. Factual Background
4.1 The Complainant is a corporation organised under the laws of Switzerland. It carries on business as a manufacturer and seller of watches and jewellery worldwide.
4.2 The Complainant has carried out these activities under the "ROLEX" mark for many years. The Complainant has provided several extracts from publications evidencing that the "ROLEX" mark is a well-known mark.
4.3 The Complainant is the owner of six examples of trade mark registrations in various classes and various jurisdictions for the "ROLEX" mark, both as a word mark and as a word in combination with a device. As follows:
- "ROLEX + crown device" No. 404,024 (Switzerland);
- "ROLEX" No. 459,962 (Switzerland);
- "ROLEX" No. 716,221 (international, designated jurisdictions Germany, Benelux, Spain, France, Italy, United Kingdom);
- "ROLEX + crown device" No. 252,976 (international, various designated jurisdictions worldwide);
- "ROLEX + crown device + arabesque" No. 681,844 (international, various designated jurisdictions worldwide);
- "ROLEX + crown device" No. 12,764 (Philippines).
4.4 The Respondent registered and on November 24, 1999, and registered , , and on May 17, 2000.
4.5 Legal advisers of the Complainant wrote to the Respondent at the addresses provided in the WHOIS database by email and letter dated January 23, 2003. In those communications, the Complainant requested that the Respondent transfer the Domain Names to the Complainant.
4.6 On the same day, the Respondent replied by email "would you purchase this domains?".
4.7 On January 28, 2003, Legal advisers to the Complainant wrote again to the Respondent by email and letter stating that the Complainant "is willing to compensate for reasonable costs relating to the registration and the transfer of these domain names only."
4.8 On January 29, 2003, the Respondent replied by email and asked "may he accept a reasonable offer of 10k USD for all domains in a bulk?".
4.9 As at the date of this decision, the Domain Names, when accessed, resolve to the Registrar�s holding web page.
5. Parties� Contentions
A. Complainant
5.1 The Complainant asserts as follows:
(a) The "ROLEX" mark is integrated into the Domain Names in its entirety and the Domain Names are confusingly similar to the "ROLEX" mark; the addition of the generic term "group" is not sufficient to prevent such confusing similarity.
(b) Internet users will most likely believe that a website available under the Domain Names are at least sponsored by or affiliated with the Complainant�s trade marks.
(c) The Respondent has not received a licence or consent to use the "ROLEX" mark in any manner, and accordingly has no legitimate interest in respect of the Domain Names.
(d) The Respondent is a typical "cyber-squatter", registering domain names corresponding to famous trade marks for the purpose of transferring such domain names to a party with an interest in the trade mark for valuable consideration. This is evidenced by the fact that he is or was also the holder of several other domain names corresponding to famous trade marks, these being:
.
(e) Accordingly, the Respondent has registered and used the Domain Names in bad faith.
5.2 In support of its assertion of bad faith the Complainant relies upon the decision in Swatch Ltd. v. Peter Kaeppeli, WIPO Case No. D2002-0956 in which the panel concluded that the Respondent had registered and used the domain name in bad faith.
5.3 The Complainant requests that the Administrative Panel issue a decision that the Domain Names be transferred to the Complainant.
B. Respondent
5.4 The Respondent has made no formal substantive reply to the Complainant�s contentions.
6. Discussion and Findings
Introduction
6.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint, notwithstanding the circumstances considered at paragraph 3.4 above. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.
6.3 It is incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the Complaint". Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate".
Identical or Confusingly Similar
6.4 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Names are identical or confusingly similar to a trade mark in which it has rights.
6.5 The Complainant relies upon several registered trade marks. Two of these are word marks for "ROLEX", the priority date for both of which fell prior to the date of the registration of the Domain Names. These word marks are together referred to hereafter in this decision as the "Trade Marks".
6.6 The Domain Names comprise the Trade Marks and differ solely to the extent of the addition of the word "group" and (in some cases) a hyphen.
6.7 The word "group" is a generic term often used in business to refer to a number of companies which have common ownership or are otherwise related to one another. In its decision in relation to the Swatch complaint referred to at paragraph 5.2 above, the panel held that the addition of the suffix "group" did not "prevent the confusing similarity between Complainant�s trade mark and the contested domain name". The Panel in the instant case adopts that reasoning, and also holds that neither the use of a hyphen between "rolex" and "group" in some of the Domain Names, nor the differing top level domain extensions of the Domain Names, affect the question of confusing similarity.
6.8 The Panel therefore finds that the Domain Names are confusingly similar to the Trade Marks.
6.9 Given the Panel�s finding in relation to the Trade Marks, it is not necessary for the Panel to consider the question of confusing similarity in relation to the four remaining registered trade marks relied upon by the Complainant.
Rights or Legitimate Interests
6.10 Under Paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Names.
6.11 There is no evidence before the Panel that the Respondent had any legitimate basis to register the Domain Names or any intent to use them in any manner unconnected with the Complainant�s business. Neither does a visit to the web pages at the Domain Names suggest that this is the case.
6.12 In his email of August 27, 2003, to the Center (referred to at paragraph 3.4 above), the Respondent stated that his intention in relation to the Domain Names was to "safe it for SWISS ownership". The language of his statement is unclear, but it could be argued that this statement contains an implied assertion that he had authority from the Complainant to register the Domain Names.
6.13 However, the Complainant has asserted that the "ROLEX" mark is a coined term that functions solely as the Complainant�s famous trade mark, and that the Respondent has not received any licence or consent to use the "ROLEX" mark. Other than the ambiguous statement in the Respondent�s email of August 27, 2003, the Panel has not been presented with any evidence that this is not the case, nor does it find that there is any reason to disagree with the assertion.
6.14 The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the Domain Names. In the absence of evidence to the contrary, the Panel is entitled to find, and does so, that the Respondent does not have any rights to or legitimate interest in the Domain Names.
Registered and Used in Bad Faith
6.15 Paragraph 4(a)(iii) of the Policy requires that the Domain Names were registered by the Respondent, and has been used, in bad faith.
6.16 A non-exclusive list of circumstances that are evidence of registration in bad faith are set out in paragraph 4(b) of the policy. The Complainant does not make clear which particular part of paragraph 4(b) it relies on. However, the circumstances point to paragraphs 4(b)(i) and (ii) of the Policy being potentially applicable in this case.
6.17 Paragraph 4(b)(i) refers to:
"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".
6.18 The Domain Names were registered on 24 November 1999, and 17 May 2000. The Panel accepts the Complainant�s contention that the Trade Marks enjoy a substantial international reputation and goodwill and holds that it is more likely than not that the Respondent was aware of that reputation when he or she registered the Domain Names. In coming to its conclusion the Panel considers of particular importance (a) the Complainant�s uncontested contention that the Trade Marks belong "to the most famous trademarks in the world, including the Philippines", (b) the fact that, so far as the Panel is aware, the word "Rolex" has no meaning in any language other than as the Complainant�s trade mark, and (c) the contents of the Respondent�s email of August 27, 2003, to the Center (referred to at paragraphs 3.4 and 6.12 above), which is highly suggestive that the Domain Names were registered with kowledge of the Complainant�s interest in the name "Rolex".
6.19 When the Complainant first contacted the Respondent regarding the Domain Names, the Respondent in his email of January 23, 2003, offered the Domain Names for sale ("would you purchase this domains?").
6.20 In his email of January 29, 2003, the Respondent offered to transfer the Domain Names for USD10,000 "compensation". Clearly this was more than the "documented out-of-pocket costs directly related to the domain name[s]".
6.21 In the circumstances the Panel finds that the circumstances required under paragraph 4(b)(i) of the Policy have been successfully made out.
6.22 Paragraph 4(b)(ii) of the Policy refers to a situation where:
" you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct".
6.23 The Complainant cites the Respondent�s registration of other domain names comprising famous trade marks belonging to Swiss watch manufacturers in support of its assertion of the Respondent�s bad faith. In particular, in the Swatch decision referred to at paragraph 5.2 above, the panel has previously found one such registration to be in bad faith. The Panel therefore finds that the circumstances required under paragraph 4(b)(ii) of the Policy have also been successfully made out.
6.24 Taking all of the foregoing into account, the Panel is persuaded that the Domain Names have been registered and used in bad faith.
7. Decision
7.1 For all of the foregoing reasons, the Panel finds that the Complainant has sufficiently proved that:
7.1.1 the Domain Names are confusingly similar to the Trade Mark;
7.1.2 the Respondent does not have any rights to or legitimate interest in the Domain Names; and
7.1.3 the Domain Names were registered and have been used in bad faith.
7.2 Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names , , , , and be transferred to the Complainant.
Matthew S. Harris
Presiding Panelist
Peter G. Nitter
Panelist
Beatrice O. Jarka
Panelist
Dated: September 30, 2003
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