WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Patek Philippe S.A. v. Kupfer Jewelry Inc.
Case No. D2008-1193
1. The Parties
The Complainant is Patek Philippe S.A., of Switzerland, represented by IC-Agency, Switzerland.
The Respondent is Kupfer Jewelry Inc., of the United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2008. On August 6, 2008 , the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On August 6, 2008 , Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details . 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 August 15, 2008 . In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2008. An informal Response was filed with the Center on September 5, 2008.
The Center appointed Edoardo Fano as the sole panelist in this matter on September 16, 2008. 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.
The Panel has decided to take the late reply of the Respondent into consideration.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainant is Patek Philippe S.A., one of the world’s most famous watch manufacturers.
Among others, the Complainant is the owner of the following trademark registration:
- International Registration for PATEK PHILIPPE No. 394802, in respect of watches and jewellery among other goods, dating back to 1972.
The Complainant provided evidence in support of the above-mentioned trademark registration.
The Respondent’s domain name was registered on August 11, 1997. It presently points to an “under construction” webpage. As evidenced by Annexes to the Complaint, at the time of the filing of the Complaint, on July 31, 2008, the website displayed advertising links to websites mainly promoting and/or offering watches.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its trademark PATEK PHILIPPE.
Moreover, the Respondent has no rights or legitimate interests in respect of the disputed domain name since it is neither an authorized retailer, nor a distributor of the Complainant, nor otherwise authorized to use the trademark PATEK PHILIPPE. Nor does the Respondent’s name relate to the trademark or domain name.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith.
It is not likely that the Respondent was unaware of the Complainants’ trademark PATEK PHILIPPE at the time of the registration of the disputed domain name.
The Respondent is using the disputed domain name to divert Internet users to third party websites as the Respondent’s website displays sponsored links which redirect traffic and potential sales of the Complainant’s watches away from the Complainant toward unauthorized retailers or distributors of watches.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent submits that it registered the disputed domain name more than 10 years ago and never used it or gave anyone permission to use it in any way.
The Respondent claims that it was unaware of doing anything wrong when it purchased the disputed domain name as it was unaware of the links that appeared in the webpage.
The purpose of registering the disputed domain name was for the Respondent one day to become an authorized retailer of the Complainant or a partner of an authorized dealer of the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark PATEK PHILIPPE both by registration and acquired reputation and that the disputed domain name is identical to this trademark.
As far as the first of these elements is concerned, it is well accepted that a top-level domain, in this case “.net”, is to be ignored when assessing identity of mark and domain name (See, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Complainant has therefore met the burden of proving that the disputed domain name is identical or confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its trademark PATEK PHILIPPE as domain name or otherwise. Moreover, on the record, the Respondent does not appear to be known by the domain name, and has shown any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
The Complainant has therefore established a prima facie case that the Respondent has no right or legitimate interest in the domain name.
The prima facie case presented by the Complainant is enough to shift the burden of proof to the Respondent to demonstrate that it has a right or legitimate interest in the domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in using the disputed domain name, e.g., under the Policy paragraph 4(c).
The Respondent does not appear to be using the disputed domain name for a legitimate non commercial or fair use or in connection with a bona fide offering of goods or services. As evidenced by an Annex to the Complaint, the Respondent’s website is redirecting Internet users to third party retailers’ websites.
Furthermore, the Respondent is not an authorized retailer of the Complainant, according not only to the Complaint but also to the Respondent’s reply to the Complaint.
Although depending on the circumstances, it may not be a trademark infringement to resell or promote for resale genuine trademarked products by making reference to the trademark without the authorization of the trademark owner, any such offering of goods or services should meet some minimum requirements (See, e.g., Oki Data Americas Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), which stated:
- Respondent must use the site to sell only the trademarked goods; otherwise it could be using the trademark to bait Internet users and then switch them to other goods (bait and switch is not legitimate);
- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner or that the website is the official site if, in fact, it is only one of many sales agents.
In the present case the Respondent’s website does not indicate the registrant’s relationship with the trademark owner and through some of the links it is possible to have access to the offer of goods (i.e., watches) of some of Complainant’s competitors.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location.
The trademark PATEK PHILIPPE is a well-known mark, and the Respondent was clearly aware thereof, since in its reply to the Complaint the Respondent is stating that its purpose for registering the disputed domain name was to become an authorized reseller of the Complainant.
The Panel is of the opinion that the disputed domain name was registered and is used in bad faith. Specifically, the domain name was registered and is used by the Respondent in order to divert Internet users to other websites.
Even if, according to its reply, the Respondent was unaware of the existence of links aimed to divert Internet users to other websites, it wharehoused the disputed domain name during more than 10 years without posting an actual webpage thereunder.
It would have therefore consisted of “passive holding” of the disputed domain name, considered as use in bad faith by the Panels deciding on the vast majority of similar cases, as set forth in the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith. The Panel therefore finds that the Policy, paragraph 4(a)(iii) has 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 name be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: September 30, 2008
Full & Egal Universal Law Academy