WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Richemont Holdings AG v. Andy Bebe Case No. D2010-0492 1. The Parties
The Complainant is Richemont Holdings AG of Zug, Switzerland, represented by Edwards Angell Palmer & Dodge UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Andy Bebe of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2010. On March 31, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 2, 2010, GoD, Inc. 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” 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 April 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 28, 2010.
The Center appointed Torsten Bettinger as the sole panelist in this matter on May 5, 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. 4. Factual Background
The Complainant is part of a group of companies commonly referred to as “Richemont”, one of the world's largest luxury goods groups with an operating profit exceeding EURO1 billion for the 2009 financial year. The Richemont group owns and operates a number of luxury maisons marketing a wide range of luxury goods, including handbags, jewellery, watches, clothing, and accessories.
The Complainant owns a number of trademark registrations for RICHEMONT (the “RICHEMONT Marks”), inter alia:
- Community Trademark registration no. 003009131 RICHEMONT, registered on October 6, 2004 in class 41;
- Community Trademark registration no. 000308965 RICHEMONT, registered on March 30, 1999 in classes 35, 36 and 42; and
- United Kingdom trademark registration no. 1515206 RICHEMONT, registered on February 11, 1994 in classes 35, 36, 42 and 45.
The Complainant is also the registrant of the domain name which provides information on the Complainant's business and products.
The Respondent registered the disputed domain name on September 28, 2008. The disputed domain name is used in connection with a website providing information on various designer handbags (including products of the Complainant and the Complainant's direct competitors) as well as links to third parties' websites offering inter alia replica handbags and replica watches. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant contends that the disputed domain name is confusingly similar to the Complainant's RICHEMONT Marks as the disputed domain name fully incorporates the Complainant's RICHEMONT Marks and the inclusion of the letters “cn” does not distinguish the domain name from the Complainant's mark.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent, as an individual, business, or other organization, has never been commonly known by the disputed domain name, as the Complainant has not granted any other third party the right to use the RICHEMONT Marks within a domain name and that the Respondent therefore neither can be a licensee of the Complainant nor otherwise authorized to use the RICHEMONT Marks for any purpose but uses the disputed domain name to divert consumers to third parties' websites offering and/or selling counterfeit goods.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant contends that the disputed domain name was registered and has been used in bad faith.
With regard to bad faith registration, the Complainant contends that the Respondent could not have independently devised the term “richemontcn” to be used to divert to websites selling counterfeit luxury goods, without reference to the Complainant's trademarks because the RICHEMONT Marks are unique and distinctive when applied to luxury goods.
With regard to bad faith use, the Complainant contends that:
- the Respondent 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;
- the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; and
- the Respondent's acts constitute bad faith under paragraph 4(b)(iv) of the Policy as the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's RICHEMONT Marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website at the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the RICHEMONT Marks, which are used in connection with various luxury products.
The fact that the letters “cn” are added to the RICHEMONT Marks does not eliminate the similarity between trademarks and the disputed domain name, as “cn” is a descriptive component of the disputed domain name referring to China, whose ccTLD is “.cn”. In numerous cases, it has been held that a domain name that wholly incorporates a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of geographical identifiers to such marks (See Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al., NAF Case No. FA 117876 – ; NBC Universal, Inc. v. XC2, Gary Lam,WIPO Case No. D2008-0962 - ; Starwood Hotels & Resorts Worldwide, Inc. v. Domaincar,WIPO Case No. D2006-0136 - et al.).
It is also well-established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the trademark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent has no connection or affiliation with the Complainant, that the Respondent has not received any license, authorization, or consent to use the RICHEMONT Marks in a domain name or in any other manner and that the Respondent is not commonly known under the disputed domain name or a name corresponding to the disputed domain name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent registered and is using the disputed domain name in bad faith.
The RICHEMONT Marks are globally recognized and well-established. The Respondent registered a domain name that consists of the highly distinctive RICHEMONT Marks and the letters “cn”, a geographical identifier for China. As the Respondent offers information on the Complainant's products on his website, it is inconceivable that the Respondent registered the disputed domain name without being aware of the Complainant's RICHEMONT Marks.
The Panel is also convinced that the Respondent used the disputed domain name in bad faith. The use of the disputed domain name in connection with a website providing information on the Complainant's products and linking to third party websites where consumers can purchase counterfeit products clearly indicates that the Respondent's intents to redirect Internet users to his website and thus tries to capitalize on the goodwill of the Complainant's trademark. This qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent's use of the domain name attempts to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Respondent's default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that it acquired the disputed domain name in good faith, and had good faith bases for using the disputed domain name, it should have asserted them.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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.
Torsten Bettinger
Sole Panelist
Dated: May 18, 2010
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