The Complainant is Richemont International, S.A. of Chemin de la Chênaie, Switzerland, represented by Winston & Strawn LLP, United States of America (“USA”).
The Respondent is Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia / Dzone Inc. - Mike Kerry of Seoku, Gwangju, Republic of Korea. 2. The Domain Names and Registrar
The disputed domain names and are registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 20, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 23, 2013.
The Center verified that the Complaint together with 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 September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2013.
The Center appointed George R. F. Souter as the sole panelist in this matter on October 21, 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 BAUME & MERCIER trademark, and operates a premium brand in the luxury watch market under the trade name, “Baume & Mercier”. “Baume & Mercier” watches have been continually marketed since 1918, and the Complainant currently has over 700 authorized dealers world-wide. Details of registrations of the BAUME & MERCIER trademark in USA, Switzerland and Australia have been supplied to the Panel.
The disputed domain name was registered on February 27, 2008, and the disputed domain name was registered on June 21, 2008. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its BEAUME & MERCIER trademark.
The Complainant alleges that it has not granted the Respondent any licence, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the BAUME & MERCIER marks, and that the Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making any non-commercial or fair use of the disputed domain names. The Complainant alleges that the Respondent is using the disputed domain names as a pay-per-click site.
The Complainant has drawn the Panel’s attention to use of the disputed domain names on websites advertising third-party websites offering for sale counterfeit knock-offs of the Complainant’s own products or to direct visitors to competing goods and services of others, and argues that this constitutes registration and use of the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant or be cancelled:
(i) the disputed domain names are 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 disputed domain names; and
(ii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
It is well-established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g. “.com”, “.info”, “.net”, “.org”) may be considered irrelevant in assessing confusing similarity between a trade mark and a domain name. The Panel agrees with this view and considers these indicators to be irrelevant in the present case.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a descriptive element to a trademark is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, the element “watches” is clearly descriptive. In the case of the disputed domain name , the Panel is of the opinion that removing the ampersand between BAUME and MERCIER leads to such an inconsequential difference between the disputed domain name and the Complainant’s BAUME & MERCIER trademark that it is insufficient to avoid a finding of confusing similarity. In the case of the disputed domain name , the Panel is of the opinion that replacing the ampersand between BAUME and MERCIER with the element “and” leads to such an inconsequential difference between the disputed domain name and the Complainant’s BAUME & MERCIER trademark that it is insufficient to avoid a finding of confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of both disputed domain names in this case. B. Rights or Legitimate Interests
It is the predominant view of panels in previous UDRP decisions, with which the present Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy provided the respondent does not come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
In this case, the Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain names, and the Panel can draw the appropriate conclusion under the Policy. The Panel accepts the Complainant’s contentions (above) under paragraph 4(a)(ii) of the Policy as establishing a prima facie case, and, accordingly, finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that the respondent has no rights or legitimate interests in the disputed domain name, may lead, in appropriate circumstances, to a finding that the disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which, in the Panel’s view, the disputed domain names were deliberately “engineered” to compete unfairly with the Complainant, as making it appropriate for the Panel to find that the disputed domain names were registered in bad faith, and the Panel so finds.
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the use of a pay-per-click website operated under a disputed domain name to potentially divert customers of a complainant to competitors by creating a likelihood of confusion with the complainant’s mark constitutes use in bad faith, and the Panel accordingly finds, in the specific circumstances of the present case, that the disputed domain names are being used in bad faith. The Panel, therefore considers that the Complainant has satisfied the dual test of 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 names and be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: November 4, 2013
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