The Complainant is LVMH Swiss Manufactures SA , LVMH Moet Hennessy - Louis Vuitton of La Chaux-de-Fonds, Switzerland and Paris, France, respectively, represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States of America (“U.S.”).
The Respondent is TagHeuerW of Los Angeles, California, U.S. and New York, New York, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 7, 2011, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the disputed domain name. On October 10, 2011, CSL Computer Service Langenbach GmbH dba J 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 October 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2011.
The Center appointed James A. Barker as the sole panelist in this matter on November 9, 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. 4. Factual Background
The Complainant is the owner of a number of registered marks for TAG HEUER, including a number of marks registered in the U.S. since 1988. Tag Heuer, a company with its principal place of business in Switzerland, is a division of the Complainant. Tag Heuer was founded in 1860 and has sold its watches since that time. The Complainant points to various innovations and awards it has received during its history. The Complainant points out that Tag Heuer watches are promoted with global advertising campaigns and feature “ambassadors” from the world of sport and entertainment. Tag Heuer has also developed a world-wide retail distribution network. From this, the Complainant states that Tag Heuer is exceedingly well-known world-wide.
The Complainant has been active on the Internet since 1995 and owns numerous domain names, including registered in July 1995 as well as other country code variants of the same. 5. Parties’ Contentions A. Complainant
The Complainant says that the Respondent uses the disputed domain name to sell counterfeit watches – cheap “knock-offs” of the Complainant’s products. The Complainant says that the Respondent’s website misappropriates the logo, look, feel and copyright-protected content of Tag Heuer’s own website, including wholesale reproduction of advertising copy and promotional material. The Complainant provides evidence of the website of one of its authorized on-line retailers and, by comparison, evidence of the Respondent’s website. The Complainant provides an undated screenshot of the Respondent’s website, which prominently features the Complainant’s trademark and photographs of various of the Complainant’s watches. The Complainant says that the Respondent’s conduct is intentional and in bad faith.
The Complainant says that the Respondent has “attempted a classic shell game to avoid this UDRP action”. The Complainant asserts that the disputed domain name was registered three times with three different registrars for this purpose. The Complainant provides evidence that the disputed domain name was first registered in August 2009 with D, listing the registrant as “Domain Admin”. Ten days after being emailed a cease and desist letter from the Complainant, the disputed domain name was then registered with HiChina Zhicheng Technology LTD providing the same registrant name. The Complainant sent a second cease and desist letter in December 2010 and, in February 2011, the disputed domain name was re-registered to the Respondent with the current Registrar.
The Complainant says that the Respondent uses a fictional address. (This is supported by evidence in the case file that delivery of the hard copy Complaint to that address from the Center was unsuccessful. The UPS tracking details indicate that “a correct street number is needed”.) The Complainant also provides evidence that the Respondent’s billing contact (“Edward Andrews”) and address is fictitious and that no such person lives or works at the address supplied.
The Complainant says that the registration of the disputed domain name was done without its permission, and has not been used in connection with a bona fide business. The Complainant provides evidence that it purchased a watch from the Respondent’s site, and the watch was a fake. The Complainant’s efforts to track down the Respondent through a series of fake companies was also unsuccessful.
Against this background, the Complainant makes the allegations in paragraph 4(a) of the Policy. The Complainant alleges that the disputed domain name is identical or confusingly similar to its TAG HEUER mark, and refers to previous decisions under the Policy which found that its mark is distinctive. The Complainant’s mark is entirely incorporated in the disputed domain name and there are a series of decisions under the Policy which indicate that such an incorporation is evidence of confusing similarity. The word “watches” is plainly descriptive and only serves to emphasize the connection in the public mind with the Complainant’s mark. The Complainant also provides evidence of at least one case of actual confusion.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. The sale of counterfeit watches is not legitimate. The Complainant points to the Respondent’s fabrication of contact details and its pattern of shifting names and addresses.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant says that its marks are among the strongest in the world for luxury watches, and that the Respondent was clearly aware of the Complainant’s marks when the disputed domain name was registered. The Complainant says that the Respondent’s purpose in registering the disputed domain name was to disrupt the Complainant’s business, goodwill and brand strength by selling counterfeits at a fraction of the retail price of the genuine product. The Complainant also says that such conduct tarnishes its brand, as it is likely that many consumers will identify the shoddy quality of the Respondent’s watches with the Complainant’s genuine timepieces. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows. A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trademark. However, the Panel finds that it is confusingly similar for the following reasons.
Firstly, the Complainant’s mark is well-known. As pointed out by the Complainant, a previous UDRP decision has accepted that the Complainant’s mark is distinctive. See TAG HEUER S.A. v. JBlumers Inc./Jerald Blume,WIPO Case No. D2004-0871.
Secondly, the Complainant’s mark is entirely incorporated in the disputed domain name. As the Panel noted in TAG HEUER S.A., supra, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.
Thirdly, the disputed domain name adds the descriptive term “watches” to the Complainant’s mark, separated by a hyphen. That term is strongly and obviously associated with the products to which the Complainant’s mark is applied. As such, the addition of that term in the disputed domain name only serves to increase the risk of confusion with the Complainant’s mark. The addition of the word “watch” to a complainant’s mark in similar circumstances has previously been found to increase the likelihood of confusion. See Glashütter Uhrenbetrieb GmbH and Omega SA v. Alexei Doicev,WIPO Case No. D2011-0593. The addition of the plural “watches” makes no relevant difference.
Fourthly, the Complainant provides evidence of one instance of actual confusion – in which an Internet user expressed some confusion as to whether the Respondent’s website was genuine. While this consumer’s comments appeared primarily directly to the Respondent’s website, the disputed domain name itself is clearly an important part of reinforcing the confusion. While such evidence of actual confusion by consumers is not, by itself, necessary for a finding under this ground, the evidence of consumer confusion in this case lends support to a finding against the Respondent.
For these reasons, the Panel finds that the Complainant has established this first element. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent on this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270.
In this case, the Complainant has presented a strong prima facie case against the Respondent. The Complainant provides evidence of its own rights, and a detailed trail of evidence against the Respondent. The Respondent has chosen not to respond to this evidence and the arguments made by the Complainant. In the Panel’s view, there is no evidence in the case file which contradicts the case made by the Complainant.
For these reasons, the Panel finds that the Complainant has established this second element. C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trademark rights and reputation. See, e.g., SingTel Optus Pty v. Xnet,WIPO Case No. D2004-0734.
The Respondent’s website gives the appearance of being a legitimately authorized retailer of the Complainant’s watches. The website itself contains the Complainant’s logo under the heading “authorized”. However, the Complainant presents strong evidence to the contrary. The Complainant avers that it, as the trademark owner, has not authorized the Respondent to use its mark. The Complainant also provides evidence that the watches sold via the Respondent’s website are counterfeit copies of the authentic products of the Complainant. Among other matters, in relation to bad faith, the evidence in the Complaint indicates that:
1. The registration of the disputed domain name was repeatedly transferred in response to cease and desist letters from the Complainant;
2. The Respondent’s website, despite appearing to be a legitimately authorized website, has no authorizations from the Complainant;
3. A watch purchased by the Complainant from the Respondent’s website is not authentic;
4. The Respondent provided false contact details in the WhoIs record.
Taken together, these are strong indicators that the Respondent registered the disputed domain name to falsely present an appearance of being an authorized reseller and, by so doing, to trade on the value of the Complainant’s mark. Under paragraph 4(b)(iv) of the Policy, bad faith may be found where there is evidence that, “by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The evidence presented by the Complainant strongly demonstrates such evidence. The disputed domain is being used for commercial gain – namely, the on-line retailing of products purporting to be those of the Complainant. The Respondent’s website indicates that some effort has been expended on seeking to present the Respondent’s website as legitimate. However the Complainant provides evidence that the Respondent has no authorization to use its mark and the Respondent offers counterfeit products for sale. The dispute domain is, for the reasons set out above, confusingly similar to the Complainant’s mark. The entire “get up” of the Respondent’s website appears designed to mislead Internet users as to the source, sponsorship, affiliation and endorsement of the Respondent’s website.
These circumstances are clearly indicative of bad faith as described in paragraph 4(b)(iv) of the Policy. A finding of bad faith in these circumstances is consistent with recent decisions under the Policy in similar circumstances. See, e.g., Omega SA v. Domain Admin,WIPO Case No. DME2011-0001 (involving an allegation of registration of a mark to sell counterfeit watches and, for that purpose, a domain name incorporating the then complainant’s mark and the word “watch”); Richemont International SA v. Dominic Spoon,WIPO Case No. D2008-1893.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
James A. Barker
Sole Panelist
Dated: November 23, 2011
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