The Complainant is Van Cleef & Arpels SA, of Bellevue-Geneva, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is mocowiz corp., Mocowiz Thilnairy, of Suranaree, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2013. On September 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 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 October 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2013.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on November 5, 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 in the business of luxury jewelry, watches and perfume and owns the registered trademarks VAN CLEEF & ARPELS and ALAHAMBRA. The Complainant has provided evidence of its international trademark registrations for the said marks. Among these are U.S trademark registration number 1,415,794 dated November 4, 1986 for the mark VAN CLEEF & ARPELS covering watches and jewelry and International trademark registration No. 329323, dated February 12, 1966 for the same mark designating Switzerland and covering “precious metals” and other jewelry pieces.
The trademark registrations for the Complainant’s ALAHAMBRA mark are U.S. Registration No. 2,751,878 dated August 19, 2003, covering jewelry and Swiss registration No. 490395 dated October 15, 2001 covering jewelry and precious stones.
The Complainant operates its website from the domain name that features information about its business and products. The disputed domain name was registered on September 2, 2012 and appears to be primarily used by the Respondent for a pay per click site. 5. Parties’ Contentions A. Complainant
The Complainant states it was founded it in the year 1906 by Alfred Van Cleef and Charles Arpels. It opened its first boutique at Place Vendome in Paris and has used the trademark VAN CLEEF & ARPELS since that time. Its jewelry business expanded to watches and fragrances and it is now a premier brand in luxury watches, jewelry and perfume. The Complainant claims its ALHAMBRA collection is one of its famous collections created in 1968. The Complainant contends it sells its goods from one hundred and twenty five boutiques worldwide and through carefully selected authorized retailers in Asia, Europe, North America, and South America. The Complainant claims that its ALAHAMBRA mark has become famous due to extensive use and enjoys liberal protection under the Paris Convention.
The Complainant states that the disputed domain name is confusingly similar to its marks because it fully incorporates the marks and merely replaces the ampersand sign with the word “and”, and adds the “.com” generic top level domain. The Complainant further states the Respondent lacks rights or legitimate interests in respect of the disputed domain name and is not commonly known by the disputed domain name. The Respondent has not operated any legitimate business from the disputed domain name but uses it for posting pay per click links and such use does not confer rights. Further no authorization has been given by the Complainant to the Respondent to use its marks or any similar marks. The disputed domain name has been registered and used in bad faith with either actual or constructive knowledge of Complainant’s rights in the marks VAN CLEEF & ARPELS and ALHAMBRA. Even an Internet search would have revealed its prior rights in the marks, states the Complainant. The disputed domain name is used to post links to other third party websites that offers products competing with the Complainant’s products and is disruptive of its business. The disputed domain name has been registered to trade off the goodwill of its marks, argues the Complainant, and requests for the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Policy under paragraph 4(a) stipulates that the Complainant must establish three elements in these proceedings. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark 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 name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The first requirement of paragraph 4(a) of the Policy states the Complainant has to establish the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
The disputed domain name consists of the names “Van Cleef”, “Arpels” and “Alahambra”. All these names are clearly associated with the Complainant’s business. The Complainant has submitted convincing evidence of its rights in the VAN CLEEF & ARPELS and ALAHAMBRA trademarks. Its international trademark registrations for the said marks bear testimony of its use of the marks for a number of years. Its VAN CLEEF & ARPELS trademark registration number 1,415,794 in the United States is dated November 4, 1986 covering watches and jewelry and its International trademark registration No. 329323 for the same mark is dated February 12, 1966. The Complainant’s trademark registrations for its ALAHAMBRA mark show that the U.S. Registration No. 2,751,878 is dated August 19, 2003 and its Swiss trademark registration No. 490395 has a registration date of October 15, 2001 for jewelry and precious stones. Trademark registration is prima facie evidence of ownership rights in a mark.
The disputed domain name contains both the trademarks of the Complainant, and in the Panel’s view Internet users are likely to confuse the disputed domain name with the Complainant’s marks. As argued by the Complainant, the only difference is that the trademark VAN CLEEF & ARPELS has an ampersand symbol whereas in the disputed domain name the ampersand symbol is replaced by the word “and”. In the opinion of the Panel this is an insignificant difference as the overall impression of the disputed domain name is one of confusing similarity with the trademarks of the Complainant. The Panel also refers to a similar finding in a previous case involving the same trademark of the Complainant. See Van Cleef & Arpels SA v. Yang Yuan,WIPO Case No. D2013-1500, () where it was found that the mere substitution of the hyphen for the ampersand sign was not sufficient to distinguish the domain name from the trademark, citing with approval the decision in Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728.
The Panel therefore finds the Complainant has rights in the trademark VAN CLEEF & ARPELS and in the trademark ALAHAMBRA. The disputed domain name is found confusingly similar to the Complainant’s trademarks. The Complainant has successfully established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Policy enumerates circumstances under paragraph 4(c) by which a respondent may demonstrate rights and legitimate interests:
(i) Before any notice to you of the dispute, your 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) You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.
The Complainant has submitted that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and that the Respondent is not commonly known by the disputed domain name. The Complainant has further urged that the Respondent has no authorization or consent to use its marks in any manner.
The record clearly shows the Respondent’s name is mocowiz corp. a/k/a Mocowiz Thilnairy, and shows the website linked to the disputed domain name is used for posting links to various other third party sites. The Respondent is using the site merely as a link farm website. The use of the Complainant’s mark in the disputed domain names to redirect persons to third party sites by posting links to various sites is not recognized as a bona fide offering of goods or services. See Spy Optic Inc. v. Michell / Fredrick Michell,WIPO Case No. D2013-1580.
The Panel finds the Complainant has put forward an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.
The Panel finds persuasive the Complainant’s arguments that the disputed domain name has been registered in bad faith with knowledge of the Complainant’s rights in the marks VAN CLEEF & ARPELS and ALHAMBRA. It is unlikely that the Respondent had no knowledge of the two trademarks belonging to the Complainant and that the choice of names by the Respondent was a mere coincidence. The Respondent ought to have known of the connection between the two trademarks and it can be reasonably inferred that the Respondent was aware of Complainant’s rights in the marks at the time of registration of the disputed domain name. Registration of the disputed domain name with knowledge of the trademarks is considered bad faith registration. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765.
Furthermore, the combination of names and the use of the names in the exact manner as reflected in the trademarks fortify the Complainant’s arguments. For instance, the names have not been interchanged as Arpels and Van Cleef, but are used in the same sequence as in the trademark. Given the Complainant’s prior use of the marks, Internet users are likely to expect the combination of terms to reflect the Complainant and its products. The very use of the two trademarks that has been used extensively and is so obviously connected to the Complainant suggests opportunistic bad faith. See PepsiCo Inc. v. Phayze Inc.WIPO Case No. D2003-0693 where the use of two trade marks PEPSI and SMASH belonging to the complainant was found to be opportunistic bad faith, citing Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. (The very use of a trademark by someone with no connection with the complainant suggests opportunistic bad faith.) Also see Surya Roshini Limited v. tq6 Inc., Domain Registration Dept.,WIPO Case No. D2013-0627, where it was found that the distinctive combination of words “surya” and “roshini” has a strong association in the minds of the public with the complainant and bad faith registration and use was found for exploiting the potential of consumer confusion between the domain name and the complainant’s trademark).
The Panel finds there is convincing evidence of bad faith use of the disputed domain name in the present case. The screen shot of the Respondent’s website shows the disputed domain name is used to merely post links to other third party sites. Such use of the trademark in the disputed domain name to misdirect Internet users based on the Complainant’s well-reputed marks is recognized as bad faith use of a domain name. See F. Hoffmann-La Roche AG v. Sergey Popov,WIPO Case No. D2009-0983. (Bad faith was found where the domain name was registered and used with the intention of unfairly exploiting the goodwill of the trademark for the respondent’s own advantage, of attracting Internet traffic intended for the complainant to its website).
In the Panel’s view, based on all the facts and the circumstances of this case, the disputed domain name appears to be registered by the Respondent to derive some gain from the goodwill associated with the Complainant’s mark and to attract Internet users to the Respondent’s website by creating a likelihood of affiliation with the Complainant’s well-known marks. Paragraph 4(b)(iv) of the policy lists circumstances indicating the bad faith registration and use of a domain name. One of these circumstances is if such registration and use is made with an intention to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location. For the reasons discussed, the Panel finds that the disputed domain name has been registered in bad faith and is being used in bad faith as envisaged under paragraph 4(b)(iv) of the Policy.
The Complainant is found to have satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain name in bad faith and is using the disputed domain name 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 name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: November 19, 2013
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