WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Cartier International N.V. v. xue qiang aka qiang xue Case No. D2009-1749 1. The Parties
The Complainant is Cartier International N.V. of Curaçao, Netherlands Antilles, represented by Edwards Angell Palmer & Dodge UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is xue qiang aka qiang xue of Yuncheng, Shanxi, the People's Republic of China. 2. The Domain Names and Registrar
The disputed domain name is registered with eNom Inc. and the disputed domain name is Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2009. On December 21, 2009, the Center transmitted by email to eNom and Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On December 21, 2009 and December 24, 2009, eNom and Xin Net Technology Corp. respectively transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On December 29, 2009, the Center transmitted by email to the parties in Chinese and English regarding the language of proceedings of the disputed domain name . On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date stipulated by the Center. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 8, 2010. 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 notes the Complainant's request that English be the language of the proceeding, and further that the Respondent, although provided with copies of the Center's case-related documents in both English and Chinese, has not elected to respond to either this request or to the Complaint. Based on the evidence in the case file, the Panel also notes that the Respondent at one time used English exclusively to operate the websites at the disputed domain names. In addition, the disputed domain name was registered pursuant to an English registration agreement. In view of the above, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render its decision in English. 4. Factual Background
The Complainant, Cartier International N.V. (hereinafter, “the Complainant”), is a world famous company, which engages, inter alia, in the design, manufacture and sale of jewelry, watches and eyewear throughout the world.
The Complainant's predecessor in title was founded in Paris in 1847 by Louis-François Cartier. Since then the CARTIER mark was continuously used in relation with the manufacture and sale of the Complainant's accessories, among which are eyewear.
The Complainant expended significant resources throughout the years in promotion and advertisement worldwide. The Complainant efforts were fertile. For example, in the “Best Global Brands 2009” report the Cartier brand was rated at number 77 of the biggest brands in the world.
The Complainant is the owner of multiple trademark registrations for the mark CARTIER around the world. For example: United Kingdom (hereinafter, “UK”) trademark registration No. 642791 – CARTIER, with the filing date of December 10, 1945; International trademark registration, designating Austria, Benelux, the Czech Republic, Germany, Croatia, Hungary, Italy, The Democratic People's Republic of Korea, Liechtenstein, Morocco, the former Yugoslav Republic of Macedonia, Romania, Serbia, Slovenia, and Vietnam No. 262426B – CARTIER, with the registration date of November 22, 1962; UK trademark registration No. 1031560 – CARTIER, with the filing date of June 25, 1974; UK trademark registration No. 1205843 – CARTIER, with the filing date of October 25, 1983; CTM registration No. 2433415 – CARTIER logo, with the registration date of March 30, 2004; and many others.
The CARTIER trademark is well-known and well-recognized by the general public, and has generated significant goodwill. As a result of extensive use and publicity, the CARTIER trademark become famous and is solely associated with the Complainant.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names that contain the name “cartier”. For example: , , , and others. The Complainant is using these domain names in connection with its activities.
The Respondents registered the disputed domain names on the following dates:
- was registered on September 7, 2005;
- was registered on February 16, 2008.
The disputed domain name used to resolve to a website, which promoted the sale of eyewear. The website operating under this domain name led consumers to the other disputed domain name, , which used to resolve to a website that offered numerous goods for sale, including eyewear bearing the CARTIER mark.
Currently, the disputed domain name resolves to an error page, displaying the words “OOPS!!! Page Not Found”. The disputed domain name has resolved to a Google search page, displaying the posting “Oops! This link appears to be broken”. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the CARTIER trademark, owned by the Complainant, seeing that they incorporate the trademark as a whole.
The Complainant further argues that it has exclusive rights to the CARTIER trademark and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the CARTIER mark.
The Complainant further argues that the Respondent is not making a legitimate use of the CARTIER mark. Further, the Complainant argues that the Respondent has not demonstrated preparations to use the disputed domain names with the bona fide offering of goods or services.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Responded promoted goods under the disputed domain names, which bear the CARTIER trademark, without the Complainant's consent. The Complainant argues that this is evidence of the Respondent's bad faith.
The Complainant further argues that the Respondent was using the disputed domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its CARTIER mark and products at the time he registered the disputed domain names.
The Complainant further argues that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting the CARTIER mark in a corresponding domain name.
The Complainant further argues that the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear basis that the rights in the mark shown on the trademark certificate belong to its respective owner. The CARTIER trademark is registered in the name of the Complainant in various jurisdictions around the world. For example, UK trademark registration No. 642791 – CARTIER, with the filing date of December 10, 1945; International trademark registration, designating Austria, Benelux, the Czech Republic, Germany, Croatia, Hungary, Italy, the Democratic People's Republic of Korea, Liechtenstein, Morocco, the former Yugoslav Republic of Macedonia, Romania, Serbia, Slovenia, and Vietnam No. 262426B – CARTIER, with the registration date of November 22, 1962; UK trademark registration No. 1031560 – CARTIER, with the filing date of June 25, 1974; UK trademark registration No. 1205843 – CARTIER, with the filing date of October 25, 1983; CTM registration No. 2433415 – CARTIER logo, with the registration date of March 30, 2004; and many others.
The disputed domain name differs from the registered CARTIER trademark only by the additional hyphen, the word – “eyewear”, and the gTLD “.com”.
The disputed domain name differs from the registered CARTIER trademark only by the additional hyphen and word “sunglasses”.
The above captioned domain names integrate the Complainant's trademark CARTIER in its entirety, as a dominant element. The words “eyewear” and “sunglasses” do not serve sufficiently to distinguish or differentiate these disputed domain names from the Complainant's CARTIER trademark, especially as they represent accessories which are regularly sold under the CARTIER trademark by the Complainant.
Previous UDRP panels have ruled that the mere addition of a non significant element do not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain names and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain names.
The result is that the Complainant has shown that the above disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain names and the Respondent had failed to assert any such rights, or legitimate interests.
The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the CARTIER trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search preformed by the Panel, the Complainant owns registrations for its CARTIER trademark since the year 1945. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain names lead Internet users to websites, which promoted the sale of eyewear and sunglasses, some of which carry the CARTIER mark. The Respondent's use of the name “cartier” to promote similar or identical goods to the good being sold by the Complainant clearly evidences that the Respondent registered these disputed domain names with knowledge of the Complainant and of the use the Complainant is making in the mark CARTIER and subsequent intent do trade off the value of these. The Respondent's previous actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”. Indeed, the use the Respondent made in these disputed domain names for quasi identical goods to the ones the Complainant manufacture and produce (as well as Complainant's counterfeit's good) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The disputed domain names currently resolve to error pages. However, the fact that the Respondent has ceased the use of the domain name does not preclude the Panel from finding of bad faith, having taken regard to all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Based on the evidence presented to the Panel, including on the use of the CARTIER trademark, the previous use made by the Respondent in the domain names and the Respondent's current failure to use the disputed domain names in any meaningful way, the Panel draws the inference that the disputed domain names were registered and used in bad faith.
The Panel cites the following similar case with approval:
“The concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts” (World Wrestling Federation Entertainment Inc. (WWFE) .v. M. de Rooij,WIPO Case No. D2000-0290).
And also, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic' bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Further, the disputed domain names are virtually identical and confusingly similar to the Complainant's trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In light of the Complainant's distinctive registered trademark and the Respondent's previous use of the domain names, the Panel finds that the registration of the disputed domain names in a confusingly similar name of the Respondent's mark shows the Respondent intent to operate a website offering similar goods and by doing so, creating likelihood that Internet users would be confused and identify the Respondent as either associate affiliated by the Complainant.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain names 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 names and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: February 18, 2010
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