The Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Chris Paul of Guangzhou, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on January 8, 2013. On January 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 9, 2013, the Registrar 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 January 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2013.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 8, 2013. 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 relevant facts are straightforward and can be summarized very briefly as follows:
The Complainant manufactures and sells on a world-wide basis high quality luxury watches under the name IWC, which is well established as a premium brand in the international luxury watch segment. Founded in 1868, this business has been carried on for over 140 years. All genuine IWC watches are distributed throughout a worldwide network of IWC boutiques and authorized IWC retailers. There are currently over 150 authorized IWC retailers in Africa, Asia, Australia, Europe, North America, and South America. In 2009, the Complainant began opening its own boutiques, selling exclusively IWC watches, and there are now IWC boutiques in strategic locations across the world, including in Hong Kong, Paris, New York City, Sao Paulo, Abu Dhabi, and Moscow. The Complainant operates an extensive website featuring information about its products at “”.
The Complainant owns a number of trademark registrations in respect of the letters “IWC” including United States Registration No. 1,205,403, having a registration date of August 17, 1982, and a first use date of 1874, and China Registration No. 1076460, having a registration date of August 14, 1997.
The Domain Name was registered on July 17, 2012. It has been used for a website which offers for sale what are described on that website as “Quality IWC Replica Watches”, as well as products of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Domain Name is identical or similar to its trade mark IWC in which it clearly has rights. The Respondent has no rights or legitimate interests in the term “IWC”. There is no other meaning associated with that term other than in relation to the Complainant and its products. The addition of the generic word “hot” does not distinguish the Domain Name from the Complainant’s well-known trade mark.
The Domain Name was registered and is being used in bad faith. It is being used to offer for sale fake “knockoff” replicas of the Complainant’s products. This is not a bona fide offering of goods or services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(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 in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark IWC. The filed evidence establishes the Complainant has carried on business internationally under the name IWC for many years and its products have clearly been marketed under that name on an international basis on a substantial scale and are well known in the luxury watch sector. Further, the Complainant has a number of registered trade mark rights in the term “IWC”.
The Domain Name is confusingly similar to the IWC trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The addition of a generic word such as, in this case, the word “hot” does not sufficiently distinguish the Domain Name from the trade mark IWC.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark and, therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
“IWC” is the Complainant’s well-known brand and is a term which is not a word with any meaning, though no doubt would be a likely acronym for any organization with a name comprising words which starts with those letters. That is not the case in relation to the Respondent.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the IWC trade mark. The Complainant has prior rights in the IWC trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Domain Name. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the IWC trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the IWC trade mark, and the confusingly similar nature of the Domain Name to the IWC trade mark, and the lack of any explanation from the Respondent as to why he registered the Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel concludes that the Respondent selected the Domain Name precisely because of its association with the Complainant and its products and in order to use the Domain Name to promote sales of unauthorized replicas of the Complainant’s products and other goods. Numerous previous UDRP decisions have held that use of a Domain Name to facilitate the sale of replica or counterfeit products is strong evidence of bad faith – see for example Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019, Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743 and Balenciaga v. liu zhixian, zhixian liu,WIPO Case No. D2010-1831. At the very least such activity would lead the Panel to expect some explanation from the Respondent to explain why such registration and use is not in bad faith. In this case the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of legitimate registration and use that he might have. The Panel infers that none exists.
As a result, and applying the principles in the above noted UDRP decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Domain Name, , be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: February 14, 2013
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