WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Harry Winston, Inc. and Harry Winston, S.A. v. h Case No. D2008-1266 1. The Parties
The Complainants are Harry Winston, Inc., of the United States of America, and Harry Winston, S.A., of Geneva, Switzerland, represented by Bricker & Eckler LLP, of the United States of America.
The Respondent is h, of the United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. On August 19, 2008, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name at issue. On August 20, 2008, Melbourne IT Ltd 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 Complainants filed an amendment to the Complaint on September 3, 2008. 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 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2008.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on October 8, 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. 4. Factual Background
Complainants are the owners of the well-known marks WINSTON and HARRY WINSTON for fine jewelry and watches, with use dating back to 1932. The WINSTON and HARRY WINSTON marks are especially associated in the minds of the public with fine diamonds. Complainants provided proof of several trademark registrations, including one for WINSTON, registered May 7, 1968, and one for HARRY WINSTON with a logo, registered January 19, 1993, both in the U. S. Patent and Trademark Office (“USPTO”).
Respondent registered the domain name on September 21, 2005. The corresponding website has a notice stating “This site is under construction”, yet provides links to websites which compete with Complainants. 5. Parties' Contentions A. Complainants make the following assertions:
1. Respondent's domain name is confusingly similar to Complainants' HARRY WINSTON mark.
2. Respondent does not have any rights or legitimate interests in the name.
3. Respondent registered and used the domain name in bad faith. B. Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Case No. 95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (In the absence of a response, it is appropriate to accept as true all allegations of the complaint.).
Paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent 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 domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainants have established rights in the WINSTON and HARRY WINSTON marks under Policy paragraph 4(a)(i) through registration of the marks with the USPTO. See Metropolitan Life Insurance Company v. Robert Bonds, NAF Case No. 873143 (finding that a trademark registration adequately demonstrates a complainant's rights in a mark under Policy paragraph 4(a)(i)); see also Microsoft Corporation v. Stephan Burkes d/b/a MicrosoftZone.Com, NAF Case No. 652743 (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent's domain name is confusingly similar to Complainants' HARRY WINSTON mark. Respondent's domain name features Complainants' mark in its entirety, adds the term “diamond”, descriptive of Complainants' business, and adds the top-level domain (“gTLD”) “.com”. Such additions do nothing to distinguish the disputed domain name from Complainants' mark, and no doubt add to the confusion. See Space Imaging LLC v. Stephen J. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent's domain name combines the complainant's mark with a generic term that has an obvious relationship to the complainant's business); see also Brambles Industries Limited v. Geelong Car Company Pty. Ltd., trading as Geelong City Motors,WIPO Case No. D2000-1153 (finding that the domain name is confusingly similar because “[t]he combination of the two words ‘brambles' and ‘equipment' in the domain name implies that there is an association with the Complainant's business.”); see also Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (finding that the “top level of the domain name such as [“.net” or “.com”] does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.”).
The Panel finds that Policy paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Complainants contend that Respondent lacks rights and legitimate interests in the domain name. In instances such as this, where Complainant has made a prima facie case under Policy paragraph 4(a)(ii) based on the facts of record in Section 4 supra, the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624 (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”).
Complainants contend that Respondent is using the domain name to operate a website containing various links to websites featuring jewelry and other competing products. The Panel infers from Respondent's use of the disputed domain name that it is collecting click-through fees for each Internet user redirected to competing commercial websites. The Panel finds that this use is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, NAF Case No. 888651 (rejecting the respondent's contention of rights and legitimate interests in the domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii)); see also Black & Decker Corporation v. Clinical Evaluations, NAF Case No. 112629 (holding that the respondent's use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Respondent has submitted no evidence that it is either commonly known by the disputed domain name or authorized to register domain names featuring Complainants' HARRY WINSTON mark. In the absence of such evidence, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy paragraph 4(c)(ii). See Ian Schrager Hotels, L.L.C. and Beach Hotel Associates Limited v. Jay Taylor, NAF Case No. 173369 (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage, Inc, NAF Case No. 830934 (finding that the respondent failed to establish rights or legitimate interests in the domain name as the respondent was not authorized to register domain names featuring the complainant's mark and failed to submit evidence that it was commonly known by the disputed domain name).
The Panel finds that Policy paragraph 4(a)(ii) has been satisfied. C. Registered and Used in Bad Faith
Respondent is using the domain name to operate a website that provides Internet users with links to various websites that offer competing goods. The Panel finds that Respondent's use of the disputed domain name constitutes a disruption of Complainant's business and evidences bad faith pursuant to Policy paragraph 4(b)(iii). See Paul Barnett Puckett, Individually and d/b/a Nature's Window v. Christopher D. Miller,WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor's website in violation of Policy paragraph 4(b)(iii)); see also EBAY, Inc. v. MEOdesign and Matt Oettinger,WIPO Case No. D2000-1368 (finding that the respondent registered and used the domain name in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent's use of the domain name will likely cause confusion as to Complainant's sponsorship of and affiliation with the resulting website. The Panel finds that use of a confusingly similar domain name for Respondent's own commercial gain is additional evidence of Respondent's bad faith registration and use pursuant to Policy paragraph 4(b)(iv). See Perot Systems Corporation v. P, NAF Case No. 95312 (finding bad faith where the domain name in question is obviously connected with the complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gables Licensing Authority, Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy paragraph 4(b)(iv) because the respondent admittedly used the complainant's well-known mark to attract users to the respondent's website).
Respondent's bad faith is further evidenced by its intentional hiding of its true identity by providing false and incomplete contact information. Respondent and its address are listed as “h” in the U.S. Respondent's administrative contact is listed as “hh” in the U.S., with a telephone number of “10000000000”. See Symplicity Corporation v. Bob Gately, WIPO Case No. D2000-0425 (finding bad faith where Respondent did not provide any contact information).
The Panel finds that 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 Harry Winston, Inc.
Sandra J. Franklin
Sole Panelist
Dated: October 22, 2008
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