The Complainant is Rolex Watch U.S.A., Inc. of New York, United States of America, represented by Gibney, Anthony & Flaherty, LLP, United States of America.
The Respondent is artworks of Florida, United States of America / Franck Roth Mashayekhi a/k/a Franck Mas of Paris, France. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , are registered with GoD, LLC. 3. Procedural History
The Complaint and the amended Complaint were filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2012. On July 4, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain names. On July 5, 2012, GoD LLC. 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 and the amended 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 July 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2012.
The Center appointed Angela Fox, Jacques de Werra and Terrell C. Birch as panelists in this matter on August 16, 2012. The Panel finds that it was properly constituted. Each member of 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 August 28, 2012, the Respondent emailed the Center, stating that he did not speak English well and asking for someone to contact him in French.
On August 29, 2012 the Center notified the parties that the Panel had extended the due date for the Decision to September 6, 2012. The Respondent replied by email to the Center on the same date, stating:
“I just saw all your message, because it s a email adresee i don’t use often, the email adresse is old and i dont check it every week, perhaps 1 time per month only
and I was in hollydays ! That s i the raison why i contact you know
i didnt receive any letter my mail for this process, i should receive a official letter to informe me this case !!
anyway I disagree with this request to take me the names domains because it s Rolex and because they have more money and more power
those domains were available , and I bougth them !
If Rolex wante them they should bought them before , it s too easy to let other people to buy the name and come to take them by force
i need more time to defend myself, i didnt receive a official letter by mail to let me know this case,
please contact me to let me know
sorry for my English is not the best
i am French
Best regard
Franck Mash”
[sic] 4. Factual Background
The Complainant, Rolex Watch U.S.A., Inc., is the exclusive distributor of ROLEX-branded watches in the United States. It is responsible for marketing and selling ROLEX-branded watches, watch bracelets and related products in the United States and for maintaining control over the quality of ROLEX-branded products and services. The ROLEX brand has been in use for watches and jewelry for decades and is internationally famous as denoting the Complainant’s high-end, luxury timepieces.
The Complainant is the owner of the following U.S. trademark registrations, details of which were annexed to the Complaint:
- United States Registration No. 101,819 for ROLEX granted on January 12, 1915;
- United States Registration No. 1,960,768 for ROLEX DAYTONA granted on March 5, 1996;
- United States Registration No. 2,331,145 for DAYTONA granted on March 21, 2000;
- United States Registration No. 2,953,542 for AIR-KING granted on May 17, 2005;
- United States Registration No. 674,177 for DATEJUST granted on February 17, 1959;
- United States Registration No. 831,652 for DAY-DATE granted on July 4, 1967;
- United States Registration No. 3,703,603 for ROLEX DEEPSEA granted on October 27, 2009;
- United States Registration No. 2,518,894 for EXPLORER granted on December 18, 2001;
- United States Registration No. 683,249 for GMT-MASTER granted on August 11, 1959;
- United States Registration No. 875,616 for MILGAUSS granted on August 26, 1969;
- United States Registration No. 239,383 for OYSTER granted on March 6, 1928;
- United States Registration No. 520,309 for PRESIDENT granted on January 24,1950;
- United States Registration No. 1,782,604 for SUBMARINER granted on July 20, 1993; and
- United States Registration No. 1,749,374 for YACHT-MASTER granted on January 26, 1993.
The disputed domain name, (“the First Disputed Domain Name”), was registered on November 28, 2011. The remaining disputed domain names were registered variously on December 22, 23 and 27, 2011.
Printouts of the web pages linked to all the disputed domain names were annexed to the Complaint, showing that they have been used to host parking sites hosting links to third-party commercial websites, many relating to watches or jewelry.
On December 20, 2011 counsel for the Complainant sent a cease and desist letter to the Respondent by first class mail and by email to the Respondent’s address as given in the WhoIs record for the First Disputed Domain Name, notifying the Respondent of the Complainant’s rights and requesting transfer of the First Disputed Domain Name to the Complainant.
On December 22, 2011 the Respondent replied by email from the address to which the cease and desist letter had been directed, stating,
“Hello
so what I can do ?
i have to transfert the domain ? to who ? who do it ?
let me know what i have to do exactly , I will do
best regards”
[sic]
Counsel for the Complainant replied by email on the same date explaining the process for transfer, whereupon the Respondent sent an immediate reply, stating, “How much you pay for that?”
On December 27, 2011 Counsel for the Complainant advised the Respondent by email that the Complainant was willing to reimburse the Respondent for verified registration costs. The Respondent replied on the same date, stating,
“I prefere to use this domaine
I you want to buy it from me , you need to make me a offer
Thank you”
[sic]
Counsel for the Complainant acknowledged by email on the same date but stated that the Complainant would not offer any further payment other than reimbursement of registration costs. The Respondent replied, “So I prefere to use it This domaine is mine!” [sic]
As noted above, during this email correspondence the Respondent registered the remaining 28 disputed domain names, using the same WhoIs details as for the First Disputed Domain Name. On or around January 17, 2012, counsel for the Complainant sent a further cease and desist letter to the Respondent, noting the further domain name registrations made on 22, 23 and 27 December, 2011. The Respondent replied by email, stating:
“You want those domain you have to make me a offer! If you don’t have a offer please don’t write me for nothing!” [sic]
Copies of all this correspondence was annexed to the Complaint.
Prior to bringing this proceeding, the Complainant filed a lawsuit against the Respondent regarding the disputed domain names in the United States District Court for the Southern District of Florida (Rolex Watch U.S.A., Inc. v. Franck Mash a/k/a Franck Mas, et al., Case No. 12-cv-20658; S.D. Fla., dismissed June 7, 2012). Pursuant to a third-party subpoena authorized by the court in that action, the Complainant obtained discovery indicating that the mailing address used by the Respondent in its WhoIs details was that of a UPS store that offered rentals of private mailboxes, but that the mailbox unit referred to in the WhoIs details was not then and never had been registered to any individual appearing to be the Respondent. The Complainant also obtained discovery from the Registrar indicating that the Respondent’s real name is Franck Roth Mashayekhi and that, contrary to the contact information provided in the WhoIs details, the Respondent’s actual mailing address as of December 29, 2011 was in France.
The court action brought by the Complainant was terminated on June 7, 2012 and the Complainant brought this proceeding on July 3, 2012. 5. Respondent’s Emails to the Center
Paragraph 5 of the Rules provides that:
(d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider.
(e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.
The Respondent did not reply to the Complaint within the term set by the Center for its response. The Respondent’s emails of August 28 and 29, 2012 do not conform to the requirements for a response as set out in paragraph 5 (b) of the Rules and, in particular, do not include the required certification inter alia that the statements made are, to the best of the Respondent's knowledge, complete and accurate and that the Response is not being presented for any improper purpose, such as to harass.
The Panel notes that the Center communications were communicated to the appropriate email address as the email address used by the Center for its communications with the Respondent was that given in the WhoIs details and was the same address used by the Respondent to conduct its correspondence with the Complainant in December 2011 and January 2012 before the Complaint was filed.
The Panel also notes that the appropriate postal address was used by the Center while it gave notice of the proceedings to the Center. The Respondent’s failure to receive notification of the Complaint by mail appears to have been a foreseeable consequence of its provision of false mailing address details in its WhoIs records. However, as noted above the Center properly notified the Respondent of the Complaint by email and there is nothing to suggest that it did not receive that email notification.
As stated above, the Respondent’s emails to the Center do not constitute a Response within the meaning of paragraph 5 (b) of the Rules; consequently, they cannot be considered as a late-filed Response. Be as it may, the Respondent’s emails do not in the Panel’s view indicate any exceptional circumstances that justify admission of a late-filed Response, given the prima facie implausibility of the Respondent’s statements.
Paragraphs 10 and 12 of the Rules confer a general discretion on the Panel to admit the Respondent’s emails as essentially unsolicited supplemental filings, but as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, this generally also requires a showing of exceptional circumstances. The circumstances on which the Respondent relies is the claim not to have received notice of the Complaint by letter. However, as set out above, there is nothing to suggest that the Respondent did not receive full and timely notice of the Complaint by email to the email address the Respondent submitted to the relevant registrar, and which he used in his communications with the Complainant. In the Panel’s view, there are no exceptional circumstances in this case that justify admission of the Respondent’s emails into the proceedings, and they do not in any event disclose any relevant facts or circumstances relating to a possible defence, apart from the Respondent’s opinion that as the disputed domain names were available, it was entitled to buy them. That opinion on its own is not, of course, in any way determinative.
The Respondent’s emails of 28 and 29 August, 2012 are therefore disallowed and will not be taken into account in the decision. 6. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain names are confusingly similar to its registered trademark ROLEX and the other registered marks to which it refers in the Complaint. All the disputed domain names incorporate one or more of the Complainant’s registered marks, adding only non-distinctive, generic words and the non-distinctive generic Top-Level Domain (gTLD) suffix “.com”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant states that the Respondent is not using the disputed domain names in connection with a bona fide offer of goods or services, but has rather been using them only in respect of parked pages featuring sponsored links to third-party commercial websites, including to websites relating to watches and jewelry. Moreover, 28 of the 29 disputed domain names were registered immediately after the Complainant had sent a cease and desist letter to the Respondent concerning the First Disputed Domain Name, which the Complainant submits precludes the Respondent’s ability to argue a legitimate right or interest in the disputed domain names.
The Respondent is not affiliated with or authorized by the Complainant to use the Complainant’s trademarks. Moreover, the Respondent claimed in pre-action email correspondence with the Complainant’s counsel not to “have a website but only the domain name [sic]”, which the Complainant submits indicates that the Respondent is not itself using the disputed domain names. The Complainant contends that this precludes any claim by the Respondent to be making a legitimate noncommercial or fair use of the disputed domain names.
Finally, the Complainant submits that the disputed domain names were registered and have been used in bad faith. In particular, the Complainant contends that the Respondent registered the disputed domain names using a fictitious name and contact details, and that, moreover, all but one of the disputed domain names were registered immediately after the Respondent had received a demand letter from the Complainant in relation to the First Disputed Domain Name. The Complainant also contends that the Respondent registered all the disputed domain names with the intention of selling them to the Complainant for consideration exceeding its documented out-of-pocket registration costs, noting that the Respondent had in correspondence repeatedly asked the Complainant to “make an offer” for the purchase of the disputed domain names, and refused to agree their transfer based on the mere reimbursement of registration fees. Finally, the Complainant submits that the Respondent’s apparent warehousing of Rolex-formative domain names and using them in respect of parking pages featuring links to third-party websites relating inter alia to watches and jewelry constitutes evidence of bad faith, since such activities create a likelihood of confusion as to an affiliation between the Complainant and the disputed domain names. B. Respondent
The Respondent did not file a response, although as noted above it did email the Center after the deadline for response had passed, asking for more time to respond on the basis that it had never received notification of the Complaint by postal mail. The only arguably substantive point in those emails is the Respondent’s claim to have registered the disputed domain names because they were available, and its assertion that if the Complainant had wanted the disputed domain names, it should have registered them itself.
For the reasons set out in section 5 above, however, the Respondent’s emails to the Center do not amount to an admissible late Response or admissible supplementary filings, and the Panel will not take them into account.
Consequently, the Panel finds that the Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Identical or Confusingly Similar
The Complainant provided details of numerous United States trademark registrations within its ownership for marks comprising or incorporating ROLEX, ROLEX DAYTONA, DAYTONA, AIR-KING, DATEJUST, DAY-DATE, ROLEX DEEPSEA, EXPLORER, GMT-MASTER, MILGAUSS, OYSTER, PRESIDENT, SUBMARINER and YACHT-MASTER.
The disputed domain names all incorporate one or more of the Complainant’s registered trademarks in their entirety, differing only in their addition of descriptive, generic words and the non-distinctive gTLD suffix “.com”.
The Complainant’s well-known ROLEX-branded watches are exclusive products for which words like “club”, “celebration”, “client”, “clients”, “collection”, “generation”, “gold”, “legend”, “legendary”, “made”, “market”, “members”, “membership”, “new model”, “values” and “watches” might reasonably be associated. Generic words such as “ad” and “discovery” may be associated with any products, alluding only to advertisements for a product, on the one hand, and information about a product, on the other. Rather than distinguishing the disputed domain names from the Complainant’s trademarks, therefore, the additional descriptive words appearing within the disputed domain names serve actually to reinforce the impression that the disputed domain names are related to the Complainant’s ROLEX mark and business.
It is well established that the mere addition of descriptive words such as those appearing in the disputed domain names do not typically suffice to avoid confusion where domain names incorporate complainants’ trademarks, particularly where those trademarks are well-known, as is the ROLEX mark which is internationally famous, including in France where the Respondent appears to be based. See e.g. Rolex S.A. v. Mr. Peter Kaeppeli,WIPO Case No. D2003-0569 (accepting the complainant’s uncontested contention that the ROLEX trademarks belong "to the most famous trademarks in the world”); see also Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398.
The Complainant refers inter alia to the decisions in Caesars Entertainment, Inc. v. Michael Ulrich,WIPO Case No. D2004-0463 (finding that the word “club” is merely descriptive); First Data Corp. v. F,WIPO Case No. D2003-0802 (making similar findings in relation to the word “client”); Swatch AG v. Stefano Manfroi,WIPO Case No. D2003-0802 (relating to the word “discovery”); United Consumers Club, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0987 (concerning the word “members”); Giorgio Armani S.p.A. v. Zhifang Huang,WIPO Case No. D2007-0987 (concerning the word new); and F. Hoffman-La Roche AG v. C,WIPO Case No. D2010-2212 (concerning the word “values”). It also refers to the decisions in Rolex Watch U.S.A., Inc. v. NCSO,WIPO Case No. D2010-0948 and Martha Stewart Living Omnimedia, Inc. v. Domain Deals,WIPO Case No. D2007-0289, where the panelists confirmed that the addition of generic terms to domain names incorporating a complainant’s trademark does not make the domain names any less likely to be confused with the complainant’s mark.
Altogether, the disputed domain names in this case are likely to be taken as denoting websites relating to the Complainant and its famous ROLEX-branded watches.
The Panel concludes that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has never authorized, licensed or permitted the Respondent to use the trademark ROLEX or any of the other trademarks on which it relies in this proceeding, and the Respondent does not appear to have been commonly known by a name corresponding to any of the disputed domain names.
The Respondent has been using the disputed domain names in relation to parking pages displaying links to third-party commercial websites, including to websites relating to watches and jewelry. At least some of the links are to third-party websites not sponsored by the Complainant, offering ROLEX-branded watches. The Complainant submits, and the Respondent does not deny, that the Respondent derives or intends to derive profit from these parking pages through a click-through revenue-sharing agreement with the parking service provider.
Panels have frequently found that use of a domain name that is confusingly similar to a complainant’s trademark in order to divert Internet users and thereby to generate click-through revenue for a respondent does not amount to a bona fide commercial use (see inter alia Swarovski Aktiengesellschaft v. PrivacyP Domain Admin,WIPO Case No. D2011-1522 and Michael Gerard Tyson v. Dreamseller Inc.,WIPO Case No. D2011-1758). This is particularly so where the links displayed on a parking page show that the attractiveness of the domain name as a parking page address is based on a complainant’s trademark (mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141). Indeed, the display of links to competitors of a complainant shows that a respondent is aware of a complainant’s products and activities and “intends to have a free ride on the fame and goodwill” of a complainant and its marks (ACCOR v. Steve Kerry/North West Enterprise, Inc.,WIPO Case No. D2006-0649).
In this case, the disputed domain names all consist of or incorporate the Complainant’s distinctive and well-known trademark, ROLEX, as well as other trademarks of the Complainant and non-distinctive, generic matter capable of being understood descriptively in association with the Complainant’s trademarks. Their use in relation to parking pages hosting links to websites relating to watches and jewelry, including to websites not sponsored by the Complainant that offer ROLEX-branded watches, demonstrates that the Respondent was likely to have been aware of the Complainant and its internationally famous ROLEX brand at the time the First Disputed Domain Name was registered. There is no doubt that the Respondent was aware of the Complainant’s trademarks when it registered the remaining disputed domain names, since this occurred after (and, by its timing, apparently prompted by) receipt of the Complainant’s first cease and desist letter.
The Respondent’s use of the disputed domain names to host pay-per-click links to websites competing with the Complainant’s business shows that the Respondent has sought to gain financially from the confusing similarity of the disputed domain names with the Complainant’s trademarks. The disputed domain names are inherently likely to mislead Internet users, and such use does not constitute, in the Panel’s view, a legitimate noncommercial or fair use.
Panels have typically found under the UDRP that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.”(see, for instance, The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064).
In this case, the Panel is satisfied that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
As noted above, the disputed domain names are inherently likely, and have been used, to attract Internet users looking for websites relating to the Complainant and its ROLEX-branded watches, who are then presented with links to third-party websites active in the Complainant’s field of business. It is highly unlikely that the Respondent would not have been aware of the Complainant’s internationally famous ROLEX trademark when the First Disputed Domain Name was registered, and there is no doubt that the Respondent was aware of the Complainant’s rights when it registered the remaining 28 disputed domain names, since it registered these immediately after receiving the Complainant’s first cease and desist letter and learning of the Complainant’s interest in acquiring the First Disputed Domain Name.
In the Panel’s view, all of these factors suggest that the Respondent registered the disputed domain names with the intention of gaining commercially from the confusing similarity of the disputed domain names to the Complainant’s trademarks, through the pay-per-click links displayed on the linked parking pages and, if possible, through a sale of the disputed domain names to the Complainant for a figure exceeding the registration fees. The Respondent’s registration of 28 further domain names incorporating the Complainant’s trademarks immediately after receiving the Complainant’s first demand letter is indicative of opportunistic intent on the Respondent’s part, and the Respondent’s repeated demands that the Complainant should “make an offer” for purchase of the disputed domain names, above and beyond reimbursement of registration fees, lends further support to the Complainant’s contention that the disputed domain names were registered with the intention of leveraging a sale to the Complainant.
The Respondent’s use of apparently fictitious name and mailing address details in its WhoIs details has gone unanswered in these proceedings, and raises a further presumption of bad faith conduct on the Respondent’s part (see inter alia ECCO Sko A/S v. Protected Domain Services,WIPO Case No. D2010-1113, where the panelist noted that, “The deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason is bad faith and the subsequent use of the domain name is tainted by the bad faith.”).
Paragraph 4 (b) of the Policy provides that the following circumstances, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you 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.
In the Panel’s view, the facts of this case indicate that all of the above circumstances are present and give rise to the conclusion that the disputed domain names were all registered, and have been used, in bad faith under paragraphs 4(b)(i), (ii) and (iv) of the Policy, as well as generally. 8. 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 disputed domain names, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , be transferred to the Complainant.
Angela Fox
Presiding Panelist
Jacques de Werra
Panelist
Terrell C. Birch
Panelist
Dated: September 28, 2012
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