WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fabergé Ltd. v. Management Services Case No. D2009-0425 1. The Parties
Complainant is Fabergé Ltd., George Town, Grand Cayman, United Kingdom of Great Britain and Northern Ireland, represented by Clifford Chance, LLP, United Kingdom and Northern Ireland.
Respondent is Management Services, of Panama. 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 April 1, 2009. On April 2, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On April 2, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and disclosing registrant contact information, which differed from the information in the Complaint. The Center sent an email communication to Complainant on April 9, 2009 providing the registrant's contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 9, 2009. 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on April 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2009.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on May 18, 2009. 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.
Copies of the Complaint were sent to Respondent by courier at the post office box address shown in the Whois for the domain name and electronically to each of the e-mail addresses shown for Respondent and the Administrative and Technical Contacts for the domain name. The courier delivery could not be effected. The Panel is satisfied that the Center employed all reasonably available means to achieve actual notice to Respondent of the Complaint. 4. Factual Background
Complainant is a Cayman Island company which is the successor in title, via extended chain, to Gustav Fabergé and his son Peter Carl Fabergé the creator of the famous Imperial Faberge eggs. Complainant includes amongst its members two great-granddaughters of Peter Carl Fabergé.
Complainant is the owner of an extensive portfolio of registered trademarks and pending applications for registration of trademarks consisting of, or including the word “Fabergé”. Complainant promotes and licences the FABERGÉ trademark as a brand for a range of exclusive luxury goods. Complainant is also the owner of the domain name and over 50 other domain names consisting of, or including the word “Fabergé”.
In February 2009 Complainant, through its legal director attempted to contact Respondent by telephone and by email seeking to discuss the matter of the disputed domain name, but received no response. Respondent
Nothing is known of Respondent save for that which is shown at the website to which the disputed domain name resolves (“the website”).
The website resolves to 40 pages of information and illustrations of ornaments, time pieces jewelled eggs and other objects of art which are purported to be Fabergé items. The display of items commences with a page depicting a Fabergé egg and bearing the text:
“Treasures of Imperial Russia – We sell our private art collection. Click here to enter the gallery. - We are private art collectors from Switzerland. As we do not have the time and space any more to keep all our collections we decided to dissolve our collection of Imperial Russian and Fabergé art. We do not trade commercially, if you are interested in pieces of our collection please contact us by email or phone anytime.” 5. Parties' Contentions A. Complainant
Complainant contends that as a result of the use of the Fabergé mark by its predecessors and licensees the Fabergé mark has acquired a meaning that is associated by consumers and the public with luxury jewellery and other luxury goods. Complainant points also to its registered trademarks in many countries including Switzerland. Complainant contends that the addition of the word “elegance” to the Fabergé mark in the disputed domain name does not serve to distinguish it from the Fabergé trademark but rather serves as an indicator of the nature of the activity being conducted under the brand. Complainant therefore contends that the disputed domain name is confusingly similar to Complainant's trademark.
Complainant contends that Respondent has no rights or legitimate interest in respect of the disputed domain name. Complainant asserts that it has not licensed or otherwise permitted Respondent to use its trademark or to incorporate it into a domain name. According to Complainant, the pieces of jewellery designed by Fabergé are extremely rare and expensive and traditionally sold through prestigious auction houses. According to the witness statement of Tatiana Fedorovna Fabergé, of 50 Fabergé Imperial eggs ever completed only 42 survived. She therefore regards it as extremely unlikely that the 11 eggs offered for the sale at the website are genuine. She asserts that any serious dealer in genuine items would provide more details as to their provenance and a certificate of authenticity. She further asserts that her opinion is confirmed by a number of experienced dealers in Fabergé jewellery with whom she has consulted. Complainant contends that it is incredulous that so many Fabergé items could be for sale at the same time and on the Internet. Such items are extremely rare and expensive and are typically sold in prestigious auction houses. Complainant cites the 2007 sale by Christie's auction house of a Fabergé egg for nine million pounds. Complainant contends that the objects being offered at the website are counterfeit and cites prior panel decision in Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552 for the proposition that “there can be no legitimate interest in the sale of counterfeits”.
Complainant contends that the offering of counterfeit products through the website under the disputed domain name is prima facie evidence of bad faith citing again the Wellquest International Case, supra and other authorities. Complainant also submits that if, in the alternative, which it denies, the products offered are replicas, Internet users will inevitably assume that the website is in some way endorsed or otherwise connected to Complainant or its licensees and that the use of the disputed domain name is clearly an attempt to misrepresent an association with Compliant and create the likelihood of confusion. Complaint asserts that its trademark is among the best known in the world and it is inconceivable that Respondent would not be aware of that fact. Complainant also refers to Respondent's failure to respond to its telephone and email attempts to contact Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The name Fabergé is of world renown. It is a name associated with extremely expensive luxury art objects since the time of Imperial Russia. Complainant has shown evidence that it is the successor to that reputation and to many trademark registrations incorporating the Fabergé trademark. The disputed domain name comprises the word Fabergé with the addition of the word “elegance”, a word apt to describe the goods with which the name Fabergé is associated. It serves therefore not to distinguish the disputed domain name from Complainant's trademark, but rather to accentuate the connection with it and the likelihood, if not the certainty, that the disputed domain name would be confused with the Fabergé trademark and its rightful owners.
The Panel therefore concludes that the disputed domain name is confusingly similar with a trademark in respect of which Complainant has rights. B. Rights or Legitimate Interests
Complainant asserts that it has not licensed or authorised Respondent to use its trademark as part of the disputed domain name or otherwise. Complainant has made a strong prima facie showing, documented by evidence from Respondent's website and otherwise, that the goods being offered at the website by reference to the Fabergé trademark are counterfeit or at the very least unauthorised and unacknowledged replicas. Respondent has had ample opportunity to rebut Complainant's contentions and to produce contrary evidence but has failed to do so. The Panel is entitled in the circumstances to draw the conclusion that Complainant's contentions cannot be rebutted.
The disputed domain name was registered on November 11, 2008. By that time the Fabergé brand had at a history of over 120 years and had received further publicity as a result of the establishment of Complainant in 2007 and the record price of £9 million paid for a Fabergé egg later in the same year. The Panel concludes therefore, absent any contrary evidence from Respondent, that at the time of registering the domain name, Respondent was well aware of Complainant's trademark and reputation. The Panel therefore finds that Respondent's use of the domain name was not a bona fide use in the sale or offering for sale of goods and services. There is no evidence that Respondent was commonly known by the domain name and on the evidence produced by Complainant, its use was neither legitimate, non-commercial nor fair.
The Panel therefore finds that Respondent has no legitimate rights or interests in the domain name. C. Registered and Used in Bad Faith
As discussed above, the Panel concludes that at the time of adoption of the disputed domain name Respondent must have been aware of the reputation of the trademark Fabergé and the rights of Complainant or its predecessors in relation to that trademark. Accepting as it does, that the goods being offered on the website are in all likelihood counterfeit, Respondent's activities in offering those goods for sale by reference to the domain name is, as stated in the Wellquest International Case, supra, “paradigmatic bad faith”. Respondent has failed to respond to Complainant's attempts to discuss this dispute and has used the domain name to point to a website clearly designed to give rise to an assumption that the goods offered are Fabergé goods. The Panel therefore concludes that Respondent is intentionally attempting to attract Internet users to the website, for commercial gain, by creating a likelihood of confusion with Complainant's mark as to the source of the product offered at the website, or of an affiliation or other relationship with Complainant.
The Panel therefore concludes that Respondent's registration and use of the domain name has been in bad faith. 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 Complainant.
Desmond J. Ryan
Sole Panelist
Dated: June 1, 2009
Full & Egal Universal Law Academy