The Complainant is Van Cleef & Arpels SA of Bellevue, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Yang Yuan of Changsha, Hunan Province, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2013. On August 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 26, 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”), 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 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2013.
The Center appointed Jung Wook Cho as the sole panelist in this matter on October 9, 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 Complainant is a company incorporated in Switzerland. The Complainant has registered the VAN CLEEF & ARPELS trademark (“the Trademark”) in countries such as: i) United States Reg. No. 1,415,794, covering jewelry and watches, and registered in the United States Patent and Trademark Office on November 4, 1986; ii) China Reg. No. 8878543, covering, inter alia, silver ornaments, rings, necklaces, clocks and wristwatches, and registered in the China Trademark Office on December 7, 2011; and iii) International Reg. No. 329323, covering, inter alia, jewelry, precious stones and timepieces, and designating Switzerland with the registration date of February 12, 1966.
The Respondent is an individual who has an address in Changsha, Hunan Province, China. The Domain Name was created on August 25, 2012. According to the Registrar’s confirmation, the Respondent registered the Domain Name on August 27, 2012. 5. Parties’ Contentions A. Complainant
The Complainant has submitted the following arguments with respect to this case.
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns the Trademark. The Complainant and its predecessors in title have used the Trademark since 1906 in respect to the sale of luxury jewelry products, and subsequently watches and fragrances.
The Complainant has registered the Trademark in countries such as the United States, Switzerland and China.
Due to the extensive use and registration of the Trademark around the world, the Trademark has become famous under the laws of the United States, Switzerland and China.
The Domain Name is confusingly similar to the Trademark, because it merely excludes a certain non-essential element of the mark, the ampersand. The omission of non-essential elements does not render the Domain Name any less confusing for purpose of the confusingly similar analysis. .
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has never been commonly known by the Trademark and has never used any trademark or service mark similar to the Domain Name.
The Respondent has not operated bona fide or any legitimate business under the Domain Name. The Respondent is also not making a legitimate noncommercial or fair use of the Domain Name. The Respondent is using the Domain Name to direct customers to a third-party site offering the Domain Name for sale.
The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the Trademark.
(iii) The Domain Name was registered and is being used in bad faith.
The Respondent registered the Domain Name with either actual or constructive knowledge of the Trademark by virtue of the Complainant’s prior registration of the Trademark in the United States, China or Switzerland.
There is no reason for the Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of the Trademark.
Even if the Respondent argues that he was somehow unaware of the Complainant’s rights in the Trademark, had the Respondent conducted even preliminary research, it would have found the Trademark registrations and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its mark in connection with the Complainant’s goods and services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceedings
The Registrar has confirmed that the language of the Registration Agreement for the Domain Name is English. The Panel therefore agrees that the language of the proceedings shall be English pursuant to the Rules, Paragraph 11(a). B. Identical or Confusingly Similar
The Panel finds that the Complainant has acquired its rights in the Trademark through its registration, including the registration of the Trademark in China, which precede the Respondent’s registration of the Domain Name.
The Domain Name is virtually identical to the Trademark, except for a hyphen (-) in the place of the ampersand (&). The mere substitution of the signs, as seen in the Domain Name, is not sufficient to distinguish the Domain Name from the Trademark. In a case where “the hyphens are placed where the ‘&’ sign are placed in the trademark […]. [t]his contributes to similarity between the trademark and the domain names” (Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728).
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to the Trademark and the first condition of paragraph 4(a) of the Policy is satisfied. C. Rights or Legitimate Interests
The Complainant bears the burden to establish that the Respondent lacks rights or legitimate interests in the Domain Name. However, such burden “shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests” (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Missoni S.p.A. v. Zhao Ke,WIPO Case No. D2011-1768).
The Panel finds that the Complainant has provided a prima facie showing. Without a response, the Respondent fails to demonstrate any of the circumstances enumerated under paragraph 4(c) of the Policy.
Hence, the Panel finds that the Complainant has satisfied its burden of meeting the second requisite element under paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of circumstances that shall be considered evidence of the registration and use of a domain name in bad faith. The examples given under paragraph 4(b) of the Policy, however, are not intended to be exhaustive of all circumstances from which bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Complainant has asserted that the Respondent registered the Domain Name with either actual or constructive knowledge of the Trademark and the Complainant’s rights.
The evidence in record exhibits that the Respondent has been using the Domain Name on what appears to be a parking page with advertising links. The front page contains a statement saying “BUY THIS DOMAIN” at the top and what appears to be a column of search ad links on the left. In a case where the respondent “has been using the disputed domain name actively for what appears to be a standardized pay-per-click parking page […] and the webpage has contained a statement saying ‘Buy this domain’[…]”, the panel found that “[t]his type of setup by the Respondent is a clear indication of bad faith use” (NKT Holding A/S v. Jesper Wennick,WIPO Case No. D2012-1878). The Panel notes that there is a similar indication in the present case.
Moreover, paragraph 2 of the Policy, which is incorporated as a part of the Registration Agreement between the Respondent and the Registrar, states that “[i]t is your [the registrant’s] responsibility to determine whether your domain name registration infringes or violates someone else's rights.” The “apparent lack of any good faith attempt to ascertain whether or not the Disputed Domain Name was infringing someone else’s trademark, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith” (BzzAgent, Inc. v. c/o Nameview Inc. Whois IDentity Shield and Vertical Axis,WIPO Case No. D2010-1187). The registrations of the Trademark, including one by the Complainant on December 7, 2011 in China precede the Respondent’s registration of the Domain Name on August 27, 2012. Such circumstance exhibits such a lack of good faith attempt, and hence, supports a finding of bad faith.
In light of the circumstances delineated above, the Panel finds that the third condition of paragraph 4(a) of the Policy is 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.
Jung Wook Cho
Sole Panelist
Date: October 23, 2013
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