Complainant is Richemont International SA. of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America.
Respondent is Janice Liburs of Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainS LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2014. On April 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 19, 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 May 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 11, 2014.
The Center appointed Alfred Meijboom as the sole panelist in this matter on June 23, 2014. 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
Complainant is the owner of the PIAGET trademark, and operates a premium brand in the international luxury watch and jewelry segment under the trade name “Piaget”. Part of the Richemont family since 1988, Piaget was founded in 1874 and has been a pioneer in the luxury watch and jewelry segment for over 135 years. There are currently over 150 Piaget branded boutiques and authorized Piaget retailers in Africa, Asia, Australia, Europe, North America, and South America and high-end Piaget boutiques located in Hong Kong, China and in Paris.
Complainant owns PIAGET trademarks for watches in different jurisdictions, including Panama (Reg. No. 14,890 of August 26, 1971), the United States of America (Reg. No. 0679984 of June 9, 1959) and Switzerland (Reg. No. 329926 of November 1, 1983) (together the “PIAGET trademark”).
The disputed domain name was registered on August 14, 2013, and Respondent uses the disputed domain name to operate a pay-per-click advertisement website that includes verbatim advertisement links to products of Complainant’s competitors and counterfeit products. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the PIAGET trademark because it fully incorporates the PIAGET trademark and merely adds the generic term “replica”. The addition of the word “replica” does not render the disputed domain name less confusing for purposes of the confusing similarity test.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the PIAGET trademark nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known. Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. Complainant has not granted Respondent any license, permission or authorization by which it could own or use any domain name registrations which are confusingly similar to the PIAGET trademark.
Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the PIAGET trademark by virtue of Complainant’s prior trademark registrations. Registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of paragraph 4(a)(iii) of the Policy. Also, the disputed domain name has been used to publish websites offering for sale products of Complainant’s competitors and/or counterfeit knock offs of Complainant’s own products. Such activities fall into the explicit example of bad faith registration and use found in paragraph 4(b)(iv) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Respondent did not reply to Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panels is that Respondent's default does not automatically result in a decision in favor of Complainant. Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from Respondent’s default, paragraph 4 of the Policy requires Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, Complainant must prove that:
(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. Identical or Confusingly Similar
The disputed domain name contains the PIAGET trademark in its entirety, and adds the word “replica”. It has been decided in numerous cases under the UDRP that the addition of a generic and descriptive term to an otherwise distinctive trademark would normally be insufficient in itself to avoid a finding of confusing similarity (e.g. Swarovski Aktiengesellschaft v. WhoisGuard, WhoisGuard Protected / Phily Helen,WIPO Case No. D2012-0889). Furthermore, the addition of the generic top level domain suffix “.com” is non-distinctive in this case because it is used as a mere technical requirement for the registration of the disputed domain name.
The Panel is therefore satisfied that the disputed domain name is confusingly similar to the PIAGET trademark and that the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, which Respondent may rebut (e.g. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Complainant claimed that it did not authorize the use of the PIAGET trademark to Respondent, and that Respondent has no rights in the disputed domain name. Furthermore, Complainant stated that Respondent uses the disputed domain name for a pay-per-click advertisement website with links seemingly leading the Internet user to products of Complainant’s competitors and counterfeit products of, inter alia, Piaget watches. The Panel is satisfied that there is no indication that Respondent has rights in or has been commonly known by the disputed domain name or that she has used the disputed domain name for a bona fide offering of goods or services.
In absence of a reply from Respondent, the Panel finds that Complainant has made a prima facie case. As a result, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the PIAGET trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service offered on Respondent’s website or location.
In the Panel’s view, it is obvious that the Respondent registered the disputed domain name with the PIAGET trademark in mind as “piaget” is a fantasy name and, at the time Respondent registered the disputed domain name, the PIAGET trademark had a possibly global reputation for watches. In addition, the Panel considers it obvious that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the PIAGET trademark. The addition of “replica” to the PIAGET trademark in the disputed domain name is apparently used to suggest that Respondent’s website offers visitors access to counterfeit watches, which is clearly detrimental to Complainant’s business and its PIAGET trademark, while Respondent is apparently being paid for each visitor to its website that clicks a link.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith, so that also the third and last element of paragraph 4(a) of the Policy is met. 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.
Alfred Meijboom
Sole Panelist
Date: June 27, 2014
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