The Complainants are Harry Winston, Inc. of New York, New York, United States of America and Harry Winston S.A. of Geneva, Switzerland, represented by Bricker & Eckler LLP, United States of America.
The Respondent is Novacek Martin of Brno, Czech Republic. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2010. On August 11, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On August 12, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on August 16, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on August 24, 2010.
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 the Respondent of the Complaint, and the proceedings commenced on August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2010.
The Center appointed Hariram Jayaram as the sole panelist in this matter on September 24, 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 Harry Winston, Inc. is incorporated under the laws of United States of America and the Complainant Harry Winston S.A. is incorporated under the laws of Switzerland and is a company related to and controlled by Harry Winston, Inc.
The Complainants have registered the following trade marks in the United States:
-Trade Mark Registration No. 848,629 WINSTON for jewelry and polished diamonds, registered on May 7, 1968;
-Trade Mark Registration No. 1,747,040 HW HARRY WINSTON for jewelry; namely crowns, necklaces, sets of jewels, brooches, bracelets, rings, earrings, cufflinks; horological and chronometric instruments; namely, wrist-watches, pocket watches, table watches, clocks, alarm-clocks, watch bracelets, bracelet fasteners, watch cases; jewel cases in precious metals, precious and semi-precious stones, registered on January 19, 1993;
-Trade Mark Registration No. 2,954,011 HW HARRY WINSTON THE AVENUE COLLECTION for luxury jewelry composed of precious gemstones or precious metals – luxury chronometric instruments; namely luxury watches and clocks composed of precious gemstones or precious metals; luxury watch bracelets, bracelet fasteners and watch cases composed of precious gemstones or precious metals, and luxury chronometers composed of precious gemstones or precious metals, registered on May 24, 2005;
- Trade Mark Registration No. 3,079,120 HARRY WINSTON AVENUE C for luxury jewelry composed of precious gemstones or precious metals; luxury chronometric instruments, namely, luxury watches and clocks composed of precious gemstones or precious metals; luxury watch bracelets, bracelet fasteners and watch cases composed of precious gemstones or precious metals, and luxury chronometers composed of precious gemstones or precious metals, registered on April 11, 2006; and
-Trade Mark Registration No. 3,355,622 HARRY WINSTON for jewelry and watches, namely, bracelets, earrings, rings, brooches, pendants, polished diamonds, precious and semiprecious gemstones, wrist-watches, pocket-watches, clocks, watch-bracelets, bracelets-fasteners, watch-cases and watch-movements, registered on December 18, 2007.
The disputed domain name was registered on August 22, 2009. 5. Parties’ Contentions A. Complainants
The Complainants contend that, founded by Harry Winston in 1932, the House of Harry Winston invented modern couture jewelry as it exists today. The Winston reputation was built on unparalleled quality, exquisite design and fine craftsmanship. Over the years, Harry Winston became known as the "Jeweler to the Stars." Harry Winston did business with royalty, famous families (such as the Rockefellers) and countless Hollywood stars. Although the prices of some original and one-of-a-kind Harry Winston jewelry creations often range in the millions of dollars, the Winston name has become well-known to the general public through its promotions at functions such as the annual Academy Awards of Motion Picture Arts and Sciences ("Oscars"), where Harry Winston loans millions of dollars worth of jewels to the celebrity attendees - a practice imitated by other major jewelers to this day. In addition to the design and manufacture of fine jewelry, Harry Winston is also well-known for acquiring important precious jewels. Over the years, the House of Harry Winston has held more of the world's most famous jewels than any entity other than the British Crown.
The Complainants are the owners of the trade marks WINSTON and HARRY WINSTON (the “Winston Marks”), all common law rights relating to the use of those marks, the United States Trade Mark Registrations thereof, and the goodwill symbolized by the trade marks and the registrations thereof for a variety of goods and services. The Winston Marks have been extensively and continually used, promoted and advertised by the Complainants within the United States and worldwide for many years prior to the Respondent’s registration of the disputed domain name. This includes use of the WINSTON mark for more than seventy (70) years on jewelry and polished diamonds. This also includes use of the HARRY WINSTON mark on jewelry, diamonds, watches, and related products for sixty (60) years. Over the past fifteen (15) years, sales of products bearing the Winston Marks have totaled over USD 2.4 billion. Substantial amounts of time, effort and money have been expended over those years in ensuring that the general public associates such marks exclusively with the Complainants and their products. From 2001 to the present, the Complainants have spent in excess of USD 155 million in marketing, advertising and promoting goods and services using their trade marks. The Winston Marks on fine jewelry, diamonds, and timepieces have acquired a worldwide recognition by virtue of the Complainants' use and efforts to promote and expand the use of the Winston Marks and through the Complainants' vigilance in policing the use of the Winston Marks.
The Complainant Harry Winston, Inc. is well-known for its luxury timepieces. Harry Winston, Inc. has long promoted its classic Winston watches, such as the Harry Winston Avenue Collection, in print media and online. A significant portion of the “” website is devoted to timepieces. The Winston Marks have acquired an extraordinary degree of consumer recognition in the minds of the public, and are now famous and serve uniquely to identify products and services provided by Harry Winston Inc. In 2006, Harry Winston, Inc. was acquired by Aber Diamond Corporation, and in November of 2007, Aber Diamond Corporation changed its corporate name to Harry Winston Diamond Corporation. Harry Winston Diamond Corporation is publicly traded on the New York Stock Exchange under the symbol HWD.
The Respondent is capitalizing on the Winston Marks by registering a domain name that incorporates, in its entirety, the famous Harry Winston name and then profiting from the resulting confused traffic that gets misdirected to that domain name. If a domain name incorporates a mark in its entirety, "it is confusingly similar to that mark despite the addition of other words." The disputed domain name incorporates the WINSTON and HARRY WINSTON marks in their entirety. The Complainants' trade mark rights in the Winston Marks date back over 70 years.
The Respondent has no legitimate interest in the disputed domain name. The Respondent is not a licensee of, or otherwise currently affiliated with the Complainants. The Respondent has no legitimate rights in these marks or the disputed domain name. The Respondent's use of the disputed domain name is likely to dilute the distinctiveness of the valuable Winston Marks, and to confuse consumers into believing that the disputed domain name is associated with, endorsed by or affiliated with the Complainants, which is false. The Respondent has no rights or legitimate interests in respect to its use of the disputed domain name. The Respondent clearly has no intention of making any legitimate use of the disputed domain name. Rather the Respondent is knowingly and flagrantly engaged in a transparent attempt to trade off of the Winston Marks. The Respondent is not using this domain name in connection with a bona fide offering of goods or services.
The Respondent has registered the disputed domain name in an effort to capitalize on the recognition of the Winston Marks. The main page of the website at the disputed domain name, contains several links to searches for other competitors of the Complainants, such as Chopard and Patek Phillipe, and also provides sponsored links to a medic alert watch sold by CVS, and several home shopping sites that sell watches. The Respondent makes money by luring consumers to the website in order to generate click through fees for sponsored links. Trafficking in domain names that contain the trade marks of others is the very definition of bad faith registration and use. The Respondent's use of the disputed domain name merely to capture consumers who are seeking information on the Complainants’ products and services and then to generate money from "click throughs" to other, often competitive, websites is neither a legitimate, nor good faith, use of this domain name. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant's mark is evidence of bad faith registration.
All of the content currently on the domain name is misleading and confusing to consumers. The domain name was registered and is being used in bad faith, with a clear intent to profit from confusion. The Respondent registered the disputed domain name long after the Winston Marks had become famous trade marks of the Complainants. It is inescapable that the Respondent registered the disputed domain name without any legitimate right or interest in using that domain name, and holds it in bad faith to profit from confused the Complainants’ customers, potential customers and investors who are seeking information on the Complainants’ products and services. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements to obtain an order for the disputed domain name to be transferred to them:
- The disputed domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint. A. Identical or Confusingly Similar
The disputed domain name consists of the words "harry” and “winston" followed by the word "watches". WINSTON and HARRY WINSTON are registered trade marks of the Complainants. The Complainants have been for several decades using their trade marks primarily for fine jewelry and watches. In the said circumstances, the mere addition of a descriptive/generic word such as “watches” to a well-known trade mark registered for goods such as watches will not diminish the confusing similarity of the disputed domain name to the WINSTON and HARRY WINSTON trade marks.
In Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219, the panel held that:
“Respondent's addition of [‘]-games[‘] to its domain name does nothing to reduce its confusing similarity with Nintendo's POKEMON® marks.”
The Panel agrees with the above decision and concludes that addition of the descriptive/generic word “watches” in the disputed domain name will not prevent the disputed domain name from being confusingly similar to the Complainant’s WINSTON and HARRY WINSTON trade marks.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants have made several allegations against the Respondent and they remain unchallenged: the Respondent is not a licensee of or affiliated to the Complainants. The Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and not making a legitimate noncommercial or fair use of the disputed domain name because the disputed domain name resolves to a website offering sponsored links mostly to the websites of the Complainants’ competitors.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainants have registrations of the trade marks bearing the words “winston” and “harry winston” in many countries. Since the Complainants’ trade marks are widely-known, the Respondent ought to have known of the trade marks in the industry in which the Complainants’ are trading in, at the time of the registration of the disputed domain name. The evidence of the Respondent’s knowledge of the Complainants’ existence and business can be inferred from the fact that the Respondent has incorporated the Complainants’ trade marks in its entirety with the addition of the descriptive/generic word “watches” and is using the disputed domain name for a website which offers links to websites of watch sellers mainly. Further, in the Panel’s view, this is an obvious attempt to capitalize on the Complainants’ trade marks and as alleged by the Complainants, to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. These factors prove that the Respondent’s registration and use of the disputed domain name is in bad faith.
The Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Complainants.
Hariram Jayaram
Sole Panelist
Dated: October 6, 2010
Full & Egal Universal Law Academy