The Complainant is Manufacture Roger Dubui, S.A. of Meyrin, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Luo Ying of Guangdong, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2013. On September 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 19, 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 September 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2013. Informal communications were received from the Respondent on September 30, 2013 and October 1 and 11, 2013. The Response was filed with the Center on October 15, 2013.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 1, 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 the owner of the trademark ROGER DUBUIS, which has been used since 1995 for watches and other goods. The mark has been registered in various countries, for example on April 25, 2000 in the United States (registration No. 2345742). The mark is also the subject of the International Registration No. 756538 from March 6, 2001, with effect in various countries including China.
The disputed domain names were registered on October 8, 2012. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to the Complainant's trademark, because they differ from it merely by the typographical error in spelling “dubius” instead of
“dubuis”.
The Respondent has no rights or legitimate interested in the disputed domain names, because the Respondent has never been commonly known by the disputed domain names and the Respondent has not operated any bona fide or legitimate business under the disputed domain names. The disputed domain names resolve to a pay-per-click website which advertises links to websites where competing products are offered.
The Complainant also contends that the Respondent registered the disputed domain names knowing of the Complainant’s trademarks and has used them to publish websites offering for sale products of the Complainant’s competitors. This is evidence of bad faith registration and use according to paragraphs 4(a)(b)(iii) and (iv). B. Respondent
According to the Respondent, the disputed domain names different from the Complainant’s trademark from spelling, origin and meaning. The name “Roger” is a common first name and the name “Dubuis” is a common surname in English. The United States Patent and Trademark Office has registered several trademarks containing either the term “Roger” or the term “Dubuis”. Also the pronunciation of the Complainant's mark and the disputed domain names is different.
The Respondent states that it has rights or legitimate interests to the disputed domain names because its elder brother has been using the foreign name “Roger Dubius” since 1971.
The Respondent also contends that the Complainant’s trademark has been declared invalid in China. The Respondent furthermore denies having directed the disputed domain names to resolve to pay-per-click websites and that such direction has been made by the Registrar. 6. Discussion and Findings A. Identical or Confusingly Similar
The terms to be compared are “Roger Dubius”, the Complainant’s trademark, and “rogerdubius”, of which the Respondent’s disputed domain names consist. The only difference between the terms is the order in which the letters “U” and “I”, respectively, are placed in the terms. The omitted space between the words “roger” and “dubius” in the disputed domain names is of no significance because omitting it (or replacing it with a hyphen) is technically necessary in domain names.
The first word “roger” and the prefix “dub” are identical in the terms. The Panel finds that the small difference is so limited that it has no significance in the overall assessment of the terms. The difference can be compared to a misspelling or a typing error.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. . B. Rights or Legitimate Interests
The Respondent states that the disputed domain names are derived from the English name of its brother, and provides a statement to this effect sign by a so-called “Roger Dubius”.
The Complainant has provided proof that the disputed domain names resolve to a pay-per-click website containing advertisements and links to website offering competing goods.
The Respondent has provided no proof that it would have used, or made preparations to use the disputed domain names in connection with a bona fide offering of goods or services, that it would have been commonly known by the disputed domain names, or that it is making legitimate noncommercial use of the disputed domain names.
The Panel finds that the name of the Respondent’s relative is not relevant for the purposes of the Policy and, if it were, the evidence submitted by the Respondent consists of the statement of the Respondent’s alleged brother. The probative value of such a statement, originating from a relative of a party, is very limited.
Turning to the Respondent’s argument that it has not directed the disputed domain names to a pay-per-click website, the Panel remarks that the owner of a domain has the possibility to redirect its domain name to whatever website it considers appropriate. The direction of the website may be automatic or semi-automatic, but the Respondent has at least approved the direction or omitted to change it and presumably saved costs or received income as a consequence of that approval or omission. The use of pay-per-click web sites might be legitimate use if the disputed domain names consisted of common words related to the advertisements. In this case however, the Complainant’s trademark is not such a common word, but a distinctive trademark.
The Respondent also alleges that the Complainant’s Chinese trademark registration has been invalidated. However, according to the Panel’s research, the designation of China is in full force.
The Panel therefore finds that the Respondent has no rights or legitimate interests to the disputed domain names. C. Registered and Used in Bad Faith
The Complainant has submitted proof that the disputed domain names resolve to pay-per-click websites containing advertisements of competing goods. By doing this, the Respondent is creating revenue (or obtaining costs savings) when users click links on the website and the Panel finds this was the intention of the Respondent when it registered the disputed domain names. This means that the disputed domain names are used to intentionally attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, within meaning of Paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain names were registered and are used in bad faith. 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 names and be transferred to the Complainant.
Tuukka Airaksinen
Sole Panelist
Date: November 15, 2013
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