The Complainant is Jowissa Watch Ltd. of Bettlach, Switzerland, represented by Feldman Gale, P.A., United States of America.
The Respondent is Don Nichols of Wheatland, Wyoming, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2011. On January 17, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 17, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. 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 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2011. The Response was filed with the Center on February 7, 2011.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on February 20, 2011. 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.
On February 7, 2011, the Complainant transmitted an email to the Center requesting to file a supplemental reply responding to the submissions filed by the Respondent. On February 8, 2011, the Center responded to the Complainant informing it that in accordance with paragraphs 10 and 12 of the Rules, it is at the discretion of the Panel as to whether to accept further submissions from the parties.
On March 2, 2011, the Panel issued an Order, having considered the Complainant’s request to submit a supplementary filing, decided in accordance with Paragraphs 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, to accept the additional submissions of the Complainant until March 9, 2011. The Panel would then accept the additional submissions of the Respondent until March 16, 2011. Accordingly, the Panel stated that a decision shall be rendered on or before March 30, 2011
On March 9, 2011, the Complainant filed additional submissions with the Center and on March 11, 2011, the Respondent filed its additional submissions with the Center. 4. Factual Background
The Complainant is a family-owned Swiss watch company, which has been operating since 1951. The Complainant sells watches bearing the trade mark JOWISSA and has sold its watches in the United States of America (“U.S.”) since 1963. The Complainant is the owner of numerous trade mark registrations for JOWISSA in relation to watches in various jurisdictions, including the United States of America, Switzerland, the People’s Republic of China and Egypt, the earliest of which dates back to 1969.
The Respondent is an individual resident of the United States (“U.S.”). The Respondent’s company, Cable West Inc ("CWI"), is a former sales agent of the Complainant’s goods in the United States and began selling watches for the Complainant in 1988. The Respondent registered the Disputed Domain Name on December 11, 1997. CWI registered the trade mark JOWISSA in the U.S. on March 31, 2009, covering wristwatches, which the Complainant claims was done without its authority. The Complainant filed a cancellation action for the JOWISSA trade mark registration in the U.S., on the basis that CWI was not the rightful owner of the trade mark. The Respondent subsequently agreed to assign the trade mark registration to the Complainant in December 2009; and has offered to sell the Disputed Domain Name to the Complainant for USD 50,000.00.
As at the date of the Complaint, the Disputed Domain Name resolved to a website advertising watches for sale bearing the JOWISSA trade mark (the "Website"). 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is identical to the Complainant’s JOWISSA trade mark;
(b) The Respondent does not have legitimate rights or interests in the Disputed Domain Name. The Respondent is a former sale agent of the Complainant in the United States. The Respondent's company, CWI, registered the JOWISSA trade mark without the authority or consent of the Complainant. After starting cancellation proceedings in respect of the U.S. trade mark JOWISSA, the Respondent agreed to assign the trade mark to the Complainant;
(c) The Respondent refused to transfer the Disputed Domain Name to the Complainant for the fees and costs associated with the registration and maintenance of the Disputed Domain Name. The Respondent offered to sell the Disputed Domain Name to the Complainant for USD 50,000.00;
(d) At no time, did the Respondent or his company have legitimate business interest in registering the Disputed Domain Name since the registration was made without the consent and/or authority of the Complainant;
(e) The Disputed Domain Name was registered in bad faith and is being used in bad faith. The Respondent registered the Disputed Domain Name without the authorisation of the Complainant knowing that the JOWISSA mark was owned by the Complainant. In doing so, the Respondent breached the distribution agreement between the parties;
(f) The statement on the Website that watches on the Website originate from the Complainant, can mislead the public into thinking that the Respondent is the authorised distributor of the Complainant. The Respondent is intentionally interfering with the Complainant’s watch business and is creating a likelihood of confusion as to the source of the advertised goods;
(g) The offer to sell the Disputed Domain Name for USD 50,000.00 far exceeds the Respondent’s out of pocket costs directly related to the Disputed Domain Name; and
(h) In offering for sale competing watch brands via the Website, the Respondent is misleading consumers and damaging the JOWISSA brand. B. Respondent
The Respondent’s contentions can be summarised as follows:
(a) The Respondent is not the only one that offers JOWISSA brand watches on the Internet and the Complainant has not filed domain name complaints against any others offering JOWISSA watches;
(b) The Complainant encouraged the Respondent to build a website for JOWISSA watches;
(c) The Website is not used to sell JOWISSA watches, but rather other watch brands; the pictures of the JOWISSA watches on the Website are to show customers the watches that the Respondent can repair;
(d) The Respondent registered JOWISSA trade mark in the United States in order to prevent third parties from registering the said trade mark. The Respondent informed the Complainant twice that third parties were attempting to register the trade mark and when it did not receive a response, the Respondent applied to register the JOWISSA trade mark;
(e) The Complainant has not filed any domain name complaint in twenty four years the Parties did business and rather encouraged, supported and approved the Respondent's use of the Disputed Domain Name. This constitutes implied consent; and
(f) The Respondent's offer to sell the Dispute Domain Name for USD50,000.00 is legitimate insofar that the Respondent has been trading under this Disputed Domain Name for many years and has helped increasing sales of JOWISSA watches and has incurred costs in doing so. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the JOWISSA trade mark on the basis of the international trade mark registrations owned by the Complainant for JOWISSA dating back to 1969, designating numerous jurisdictions, including Switzerland, China and Egypt; as well as on the basis of its use of this trade mark in the U.S. in relation to watches since 1963, and its U.S. registration for the JOWISSA mark.
The Disputed Domain Name incorporates the Complainant's JOWISSA mark in its entirety. It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the JOWISSA mark in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent may demonstrate that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that while the Respondent was its authorised distributor for many years, that it never authorised the Respondent to use of the JOWISSA trade mark in connection with the Disputed Domain Name, and that the Respondent did not at any time have a legitimate business interest in registering the Disputed Domain Name.
Further, the Complainant contends that the distributorship came to an end shortly after it became aware that the Respondent applied to register the JOWISSA trade mark in the United States in 2008, after which time the Respondent presumably lost any right to use the JOWISSA mark, in any fashion.
Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interest in the Disputed Domain Name, and the Respondent has the burden of persuasion, in that he possesses such rights or legitimate interests.
The Panel finds that the evidence submitted by the Respondent is insufficient to show that the Respondent has rights in any trade marks or service marks which are identical, similar or related to the Disputed Domain Name. Therefore, the Panel will assess the Respondent's rights and/or legitimate interests in the Disputed Domain Name (or lack thereof) based on the Respondent's use of the Disputed Domain Name in accordance with the available record.
The Respondent contends that the as part of the commercial agreement with the Complainant, the Complainant authorised the use of the JOWISSA trade mark in connection with the Disputed Domain Name. The Complainant denies that it provided any such approval or authorisation to use the JOWISSA mark. The Panel has not been provided with a copy of the distribution agreement between the parties, so it is unable to comment on whether the Respondent was authorised to use the JOWISSA trade mark during the term of the distribution agreement.
While the Panel can not comment on whether the Respondent had such rights while the above-reference agreement was in place, the Panel notes that the relevant time for determination of whether the Respondent has rights or a legitimate interest in the Disputed Domain Name is the time that the complaint is fined. See for example Safiag Lepeltier Demarchi and Assurexia v. Salesrep,WIPO Case No. D2007-0382.
While there is some disagreement between the parties as to when the distributorship was terminated (the Complainant states that it was shortly after the Complainant learned that the Respondent applied to register the JOWISSA trade mark in the United States in 2008, and the Respondent contends that it was some time after this), the statements of both parties confirm that the distributorship has now ceased.
Based on this, the Panel accepts that the Complainant has not currently authorised the Respondent to use the JOWISSA trade mark and that any connection that once existed between the Complainant and the Respondent by virtue of the distributorship has now ceased.
While the Respondent arguably may have had a legitimate interest in the Disputed Domain Name at one time (as distributor of the Complainant's watches), the Panel finds that any such legitimate interest ceased when the distributorship came to an end. See Finlandia-Uistin Oy v. Juha P. Raatikainen, WIPO Case No. D2007-0570; Maree Gaye Miller v. Peter Horner,WIPO Case No. D2008-1492; and Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877.
Accordingly, the Panel finds that the Respondent does not have a right or legitimate interest in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) The Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in Bad Faith (the "conjunctive requirement"). There are conflicting views expressed by Panels as to whether a complaint should be successful when it can prove bad faith use in the absence of bad faith registration.
The panel in the UDRP Case of Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716, discussed the conjunctive requirement issue in great depth (including an analysis of many previous decisions). In particular the panel looked at decisions, which found that the wording of paragraph 4(b)(iv) of the Policy is such that it is not necessary to prove registration and use in bad faith; and that the type of use described in this paragraph is to be taken as evidence of bad faith registration as well as bad faith use. However, the panel in the Camon case did not agree with this approach and favoured the stricter, conjunctive requirement approach. See also Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011.
The Panel agree with the approach taken by the panel in the Camon case, supra., and is of the view that the requirement under paragraph 4(a)(iii) is cumulative: a complainant must prove bad faith registration and bad faith use in order to satisfy the requirements of paragraph 4(a)(iii).
The Panel does not consider that the Complainant has discharged this burden in the present case. While the Complainant alleges that the Disputed Domain Name was registered without the authorisation of the Complainant, it does not provide any evidence supporting this contention. Further, it seems unlikely that the Complainant would not be aware of the Disputed Domain Name given that it was registered in 1997, and that the Complainant was doing business with the Respondent for many years after the Disputed Domain Name was registered. The Respondent claimed that the Complainant authorised it to set up a website to sell JOWISSA watches, and the Complainant did not deny this. In the UDRP case of Seoul Laser Dieboard System Co., Ltd. v. SDS USA, Inc.,WIPO Case No. D2008-0306, it was held that voicing objection to a domain name registered by an authorised distributor ten years after registration (and only after the affiliation ended) amounted to implied acquiescence to the registration of the domain name. Accordingly, the complainant did not satisfy the requirement of bad faith registration and the complaint was denied.
The Panel finds that in the absence of any evidence to the contrary, that it can be implied that here the Complainant acquiesced to the Respondent's registration of the Disputed Domain Name, and therefore the Disputed Domain Name was not registered in bad faith.
Despite this, the Panel finds that the Respondent's current use of the Disputed Domain Name constitutes bad faith, due to the fact that the Respondent is now using the Disputed Domain Name to offer competitors' goods for sale, as well as the fact that the Respondent offered to sell the Disputed Domain Name to the Complainant for USD 50,000.00 (an amount which far exceeds the Respondent's out of pocket expenses in registering and maintaining the Disputed Domain Name). In addition, the Website clearly purports to be operated by the Complainant (including statements such as "Jowissa Watch, Ltd. is a Swiss watchmaker using natural elements of wood, stone, silk, shell, gold, silver, titanium, ceramic, sapphire crystal, and customized 18k gold to produce the widest variety of highest quality watches."; "Download our catalogue"; "Email us: Jowissa U.S.A."; and "Thank you for shopping at Jowissa Watch Ltd.". By including such statements, the Respondent is clearly creating the impression that it is a U.S. operator of the trade mark owner.
It is unfortunate, in the face of such bad faith use that the Panel has arrived at the decision that the complaint should be denied. However, the Panel must render its decision within the confines of the Policy, which clearly requires that the Disputed Domain Name must be registered and used in bad faith.
As was discussed in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Policy is designed to prevent cyber-squatting, and is not equipped to resolve all disputes relating to domain names. In certain circumstances, it may be more appropriate to seek recovery of a domain name via a trade mark infringement action.
In the circumstances, the Panel finds that the Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Sole Panelist
Dated: March 31, 2011
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