The Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is scott chopskie / a+ programming consultants of Connecticut, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Corehub S.R.L. (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 Domain Name. On May 9, 2014, 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 May 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2014. The Respondent did not submit any formal response. On May 14 and 16, 2014, the Center received informal email communications from the Respondent, which the Panel has taken into account.
The Center appointed Alan L. Limbury as the sole panelist in this matter on June 12, 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 (undisputed facts)
Piaget was founded in 1874 and became part of the Richemont family in 1988. It has been a pioneer in the luxury watch and jewelry segment for over 135 years. The Complainant registered the trademark PIAGET in the United States on September 25, 1973 for jewelry, No. 968,969 and on June 9, 1959 for watches, No. 679,984. Both registrations have been renewed and are subsisting.
The Domain Name was registered on March 12, 2008. It resolves to an inactive website said to be “under construction and available soon”. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is confusingly similar to its PIAGET trademarks and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant says the Respondent is not known by the name Piaget, has never operated a bona fide or legitimate business under the Domain Name, is not making a protected noncommercial or fair use of it and has no permission from the Complainant to use the PIAGET mark in this way.
As to bad faith, the Complainant says the Respondent registered the Domain Name with either actual or constructive knowledge of the Complainant’s marks, by virtue of the United States registrations; the Respondent had no reason to register the Domain Name other than to trade off the reputation of the Complainant’s mark; and the nature of the Domain Name itself evidences bad faith registration and use. Even a preliminary trademark search would have found the Complainant’s registrations and associated websites. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions but stated in an email to the Center on May 14, 2014 in response to formal notification of the Complaint: “This domain is yours as far as I am concerned. I registered it so you can put in orders” and in another email on May 16, 2014: “This domain belongs to Piaget. I release it. I registered it so users at Piaget could order Piaget material from LP Macadams”. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The 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 Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman,WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the PIAGET mark.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The generic Top-Level Domains (“gTLD”) “.com”, “.net” and “.org” are usually to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Since the Domain Name comprises the Complainant’s mark together with the descriptive term “orders”, which does nothing to distinguish the Domain Name from the trademark, the Panel finds the Domain Name to be confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; 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 or service mark at issue.
The Panel finds that the PIAGET mark is distinctive and well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so. On the contrary, the Respondent has stated: “This domain belongs to Piaget”.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 or of a product or service on its website or location.
None of these circumstances are shown to be present here.
The Complainant asserts actual or alternatively constructive notice of the Complainant’s rights on the part of the Respondent. The Respondent’s email of May 16, 2014 demonstrates that the Respondent was actually aware of the Complainant’s PIAGET mark when registering the Domain Name. The Respondent acknowledges that the Domain Name belongs to the Complainant and does not deny the Complainant’s assertion that the Respondent did not have the Complainant’s permission to register the Domain Name.
The Panel accepts the Complainant’s citation of Charles Jorden Holding AG v. AAIM,WIPO Case No. D2000-0403 as applicable to the circumstances of this case (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”).
Although there is no evidence that the Domain Name has ever been actively used since its registration in 2008, the “use” requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Barney’s, Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400; Video Networks Limited v. Larry Joe King, WIPO Case No. D2000-0487; Recordati S.P.A. v. Domain Name Clearing Company, WIPO Case No. D2000-0194 and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, WIPO Case No. D2000-0468.
The Domain Name makes the false representation that it is an official domain name of the Complainant. There is nothing on the inactive, “under construction” web page to which the Domain Name resolves to disabuse Internet users of this false impression.
Accordingly, the Panel finds the Domain Name was registered and is being 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 Domain Name be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Date: June 19, 2014
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