The Complainant is Rolex Watch U.S.A. of New York, New York, United States of America (“Complainant”), represented by Gibney, Anthony & Flaherty, LLP, United States of America.
The Respondent is Jerome Cook, The Internet HYWAY inc. of Paterson, New Jersey, United States of America (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2014. On February 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 11, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on March 6, 2014.
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 Respondent of the Complaint, and the proceedings commenced on March 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2014.
The Center received several late communications from Respondent in this proceeding, including on April 16, 17 and 26, 2014.
The Center appointed Michael A. Albert, Jacques de Werra and Debra J. Stanek as panelists in this matter on April 24, 2014. The Panel finds that it was properly constituted. Each member of 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
Complainant has been in the business of manufacturing and selling watches in the United States and worldwide for several decades. As such, Complainant owns numerous, famous federal trademark registrations in the United States and throughout the world. Among these trademarks is ROLEX, U.S. Reg. No. 101,819, registered on January 12, 1915 (Complainant’s “ROLEX Mark” or “Mark”).
Respondent registered the Disputed Domain Name on September 3, 2013. 5. Parties’ Contentions A. Complainant
Complainant contends that it has the exclusive rights to its registered trademarks, including Complainant’s ROLEX Mark. Further, Complainant contends that prior panels have recognized Complainant’s Mark as famous in the United States and worldwide. See Rolex Watch U.S.A., Inc. v. artworks, Franck Roth Mashayekhi a/k/a/ Franck Mas,WIPO Case No. D2012-1355; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396; Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd.,WIPO Case No. D2001-0398.
Complainant contends that the Disputed Domain Name incorporates and is confusingly similar to Complainant’s ROLEX Mark, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s ROLEX Mark. Complainant observes that the Disputed Domain Name fully incorporates its ROLEX Mark. Complainant observes that the only difference between Complainant’s ROLEX Mark and the Disputed Domain Name is the addition of the prefix “7000” and the generic Top-Level Domain reference “.com”.
Complainant contends that Respondent cannot demonstrate any rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy. Complainant contends that Respondent is a fictitious corporation, not registered, nor authorized, to do business within any jurisdiction in the United States. Complainant further contends that there is no website associated with the Disputed Domain Name. Rather, Complainant contends that the Disputed Domain Name merely redirects traffic to a non-Rolex-sponsored website, owned and operated by Amazon shopping store, that distributes used Rolex watches. Complainant asserts that Respondent is not associated with, nor responsible for, the sale of Rolex watches from the Amazon store website and as a result does not appear to be using the Disputed Domain Name in connection with a bona fide offering of goods or service. Complainant cited support for this contention in an affidavit from a Rolex attorney swearing that Respondent’s counsel admitted in a conversation that Respondent was not a jeweler and was not in the business of selling Rolex watches. Consequently, Complainant contends that Respondent makes money via pay-per-click revenue earned each time a visitor is diverted to the Amazon store website from the Disputed Domain Name. In addition, Complainant contends that Respondent owns and maintains five other domain names, which it uses for the same re-directing and pay-per-click purposes.
Complainant asserts that Respondent has never been commonly known by the Disputed Domain Name or by Complainant’s Mark or other trademarks. Further, Complainant asserts that Respondent is neither authorized nor licensed to use Complainant’s ROLEX Mark. Complainant cites Respondent’s alleged exorbitant demands for purchase of the Disputed Domain Name and its threats to continue using Complainant’s Mark in the Disputed Domain Name as evidence of the lack of a legitimate interest in the Disputed Domain Name.
Lastly, Complainant contends that the Disputed Domain Name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy. Complainant contends that the registration of the Disputed Domain Name under a fictitious business name was an attempt by Respondent to avoid liability for infringement of Complainant’s ROLEX trademarks and is evidence of registration in bad faith. In addition, Complainant contends that Respondent’s continued solicitation for compensation for the Disputed Domain Name is evidence of Respondent’s bad faith use of the Disputed Domain Name. Complainant also asserts that Respondent’s use of the Disputed Domain Name as a redirect address is evidence of bad faith, characterizing the website associated with the Disputed Domain Name as a passive site. Complainant also contends that Respondent’s bad faith is demonstrated by registration of the Disputed Domain Name with the intent to capitalize on the fame of Complainant’s Mark by creating a likelihood of confusion as to the affiliation between Complainant and the Disputed Domain Name. B. Respondent
Respondent did not file a timely response to Complainant’s contentions. Rather, Respondent filed an informal, late submission on Wednesday, April 16, 2014 via email and another one on Friday, April 26, 2014 via email (Respondent’s email of April 17, 2014 was procedural in nature). These email responses were submitted without any evidentiary support.
Within its untimely submission of April 26, 2014, Respondent contends that it sells Rolex wrist watches, and Rolex wrist watches alone, at the website associated with the Disputed Domain Name. As a result, Respondent contends that the Disputed Domain Name reflects exactly the contents of the website to which one is redirected when accessing the Disputed Domain Name. Further, Respondent contends that its site is backed by Amazon. Respondent did not address the fact that the Disputed Domain Name fails to resolve to a unique website itself, but merely redirects to the cited Amazon store site.
Respondent explained that it chose to include Complainant’s Mark in the Disputed Domain Name to attract those searching for Rolex watches on the Internet to Respondent’s site. Respondent noted that the Disputed Domain Name increased in value due to how many people went to the associated website since the inclusion of Complainant’s Mark in the Disputed Domain Name was “catchy…to the shopper’s eye.” Respondent noted that if a consumer did not see Complainant’s Mark in the Disputed Domain Name, the consumer would not know the website existed.
Respondent asserts that Complainant is trying to corner the market in domain names, and as a result, Respondent was willing to sell the Disputed Domain Name to Complainant. Respondent further contends that its website is valued at USD 8 trillion, but that it is willing to sell the Disputed Domain Name to Complainant for only a fraction of that price, USD 100,000.00. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Disputed Domain Name be transferred:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Procedural Matter
Before reaching the merits, the Panel must decide whether to consider Respondent’s late email submissions of April 16, 2014 and April 26, 2014 (together “the Response”), which were sent after the deadline for a response, and what weight to accord the Response. Under the Rules, this determination is solely within the discretion of the Panel. Rules 10(a), (d). See also paragraph 6 of the WIPO Notification of Complaint and Commencement of Administrative Proceeding document (“[t]he Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so.”); see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The lateness of the Response is not a trivial matter and the Panel considers it a close question as to whether to consider it at all. Nonetheless, in part with a view to the fact that Respondent is unrepresented in this matter and perhaps more significantly because the Panel believes Complainant was not prejudiced by the delay, the Panel agrees to accept and consider the late-filed Response. B. Identical or Confusingly Similar
Complainant has provided sufficient evidence showing that it is the owner of the ROLEX Mark. The Disputed Domain Name and Complainant’s Mark are not identical, and, therefore, the issue is whether the Disputed Domain Name and Complainant’s ROLEX Mark are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant’s ROLEX Mark; (2) the prefix “7000”; and (3) the suffix “.com”. The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “7000rolex”), as it is well-established that the Top-Level Domain name (i.e., “.com”) should typically be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR). Here, the Disputed Domain Name incorporates the ROLEX Mark in its entirety.
Moreover, the addition of the prefix “7000” does not mitigate the confusing similarity between the Disputed Domain Name and Complainant’s ROLEX Mark, since the Disputed Domain Name gives the overall impression of being associated with Complainant’s ROLEX Mark. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798 (finding that domain names and gave the overall impression of being associated with Complainant’s WIKIPEDIA Mark); see also LEGO Juris A/S v. Onliyou,WIPO Case No. D2011-1410 (finding that the addition of the prefix “93” in the domain name failed to prevent the disputed domain name from being regarded as confusingly similar to the LEGO trademark).
For the foregoing reasons, this Panel unanimously finds that the Disputed Domain Name is confusingly similar to Complainant’s ROLEX Mark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. C. Rights or Legitimate Interests
A complainant must make a prima facie case that Respondent lacks rights or legitimate interests before the burden shifts to respondent to show it does have such rights or legitimate interests. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of the dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Panel finds that Complainant has sufficiently established that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Complainant contends, and Respondent does not dispute, that Respondent has no rights to use the ROLEX Mark. Further, nothing in the evidentiary record indicates that Respondent is known by the Disputed Domain Name. Lastly, the record indicates that there is no unique website associated with the Disputed Domain Name, but rather, the Disputed Domain Name serves to redirect Internet traffic to another website associated with Respondent for Respondent’s commercial use. See Malwarebytes, Corp. v. Charlie Jones, WIPO Case No. D2014-0226 (“Respondent is not using the disputed domain name for any reason except automatically to redirect Internet users to its own site. This is exactly the harm the Policy was adopted to address.”) (internal quotations omitted). Thus, the burden shifts to Respondent to demonstrate any rights or legitimate interests in the Disputed Domain Name.
Respondent counters that it is using the Disputed Domain Name as a reseller of Rolex brand watches without addressing the fact that the Disputed Domain Name exists to redirect traffic to the subsequent Amazon store site.
Panels have previously found that resellers of goods can make bona fide offerings of goods and, thus, have legitimate interests in disputed domain names if certain criteria are met. To qualify as a bona fide offering, (1) respondent must actually offer the goods at issue; (2) respondent must use the site to sell only the trademarked goods; (3) respondent’s site must accurately disclose the registrant’s relationship with the trademark owner, such as through a disclaimer; and (4) respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Oki Data America, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
In the case at hand, Respondent does appear to actually resell genuine Rolex-brand watches, and only this brand, on the website which users are redirected to upon entering the Disputed Domain Name. However, there is no indication of a disclaimer of an association with Complainant anywhere on the site. In addition, prior panels have found that the unauthorized incorporation of a complainant’s trademark into a domain name is not “use in connection with a bona fide offering of goods or services” under paragraph 4(c)(i) of the Policy, even if products at the respondent’s website may otherwise be bona fide. See Malwarebytes, Corp. v. Charlie Jones,WIPO Case No. D2014-0226; see also Raymond Weil SA v. Watchesplanet (M) Sdn Bhd,WIPO Case No. 2001-0601 (“[A]t the time of the registration of the Domain Name, the Respondent was fully aware of the Complainant’s trademark. The Panel, therefore, finds that the Respondent selected and used the Domain Name solely in order to attract internet users to its website by trading on the fame of the Complainant’s trademark. This does not constitute a ‘bona fide’ offering of goods.”).
For all of the foregoing reasons, this Panel finds that Complainant has established a prima facie case that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. The Panel also finds that Respondent has failed to produce sufficient evidence to the rebut this case. Therefore, the Panel finds that Complainant has proven the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when respondent attempts to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or of a product or service on respondent’s website.
This Panel finds that Respondent knew of Complainant’s ROLEX Mark when it registered the Disputed Domain Name. Respondent admitted to as much in its Response. See Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397 (“since Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant’s trademark rights.”); see also Produits Berger v. Wellmark Supplies,WIPO Case No. D2003-0392 (“[w]hen the Respondent has no rights on or legitimates interest to the domain name…, registration of such a domain name with actual knowledge of an existing trademark is evidence of bad faith.”).
Further, the Panel finds, as Respondent itself has admitted, that Respondent sought to use a domain name confusingly similar to a well-known trademark to attract Internet users to its website or other on-line location for commercial gain. In the circumstances this constitutes evidence of bad faith. See Raymond Weil SA v. Watchesplanet (M) Sdn Bhd,WIPO Case No. D2001-0601 (finding that the use of a domain name confusingly similar to a famous trademark in order to take advantage of such confusion as to the source of its website or its affiliation to attract Internet users to its website for commercial gain constitutes evidence of bad faith); see also Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344 (finding that the use of the disputed domain name to promote and sell the complainant’s product without acknowledging complainant’s trademark or providing reference to the complainant likely created confusion as to the source of the product, diverted customers from the complainant’s own sites, and constituted evidence of registration in bad faith). The Panel also considers Respondent’s offer to sell the Disputed Domain Name to Complainant for a price well in excess of its out-of-pocket expenses further evidence of bad faith.
For all of the foregoing reasons, the Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Names in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element 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 name be transferred to Complainant.
Michael A. Albert
Presiding Panelist
Jacques de Werra
Panelist
Debra J. Stanek
Panelist
Date: May 6, 2014
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