The Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Koji Sakimoto, IO.Inc of Osaka, Japan.1 2. The Domain Name and Registrar
The disputed domain name registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2014. On November 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 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 the Complainant on November 28, 2014 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 December 2, 2014.
On November 28, 2014, the Center transmitted an email to the parties in English and Japanese regarding the language of the proceeding. On November 30, 2014, the Center received an email from the Respondent, in which the Respondent indicated that it is not good at English. On December 1, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center.
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 in English and Japanese, and the proceedings commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The Response was filed with the Center on December 22, 2014.
The Center appointed Keiji Kondo as the sole panelist in this matter on January 9, 2015. 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 PIAGET trademark, and operates a brand in the international watch and jewelry segment under the trade name “Piaget”.
Piaget was founded in 1874 and has been in business for over 135 years.
There are currently over 150 Piaget branded boutiques and authorized Piaget retailers all over the world.
The Complainant has registered PIAGET trademarks in many countries before the Respondent’s registration of the disputed domain name on March 26, 2014.
At the time of Complaint submission, the disputed domain name was used to advertise the Registrar’s services. 5. Parties’ Contentions A. Complainant
(1) Identical or Confusingly Similar
The disputed domain name is confusingly similar to the PIAGET marks because it fully incorporates the PIAGET marks and adds the terms “watch” and “jewelry”, which are products offered for sale under the Complainant’s PIAGET marks, and the generic Top-Level Domain (“gTLD”) “.com”.
(2) No Rights or Legitimate Interests
The Respondent has never been commonly known by the PIAGET marks and has not operated any bona fide or legitimate business under the disputed domain name.
The Respondent is using the disputed domain name as a passive holding that merely advertises the services of the Registrar. Such use does not constitute a bona fide or legitimate noncommercial use.
The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the PIAGET marks.
(3) Bad Faith Registration and Use of the Disputed Domain Name
The Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant’s rights in the PIAGET marks by virtue of the Complainant’s prior registration of the mark with the trademark office of Japan, where the Respondent and the Registrar are located.
There is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s mark. B. Respondent
(1) Consent to Remedy
The Respondent consents to the remedy requested by the Complainant and agrees to transfer/cancel the disputed domain name on the basis of Party agreement, without need for a decision being rendered by the Administrative Panel.
(2) Identical or Confusingly Similar
The disputed domain name includes the Complainant’s brand name. But the Respondent did not plan to harm the Complainant’s right.
(3) No Rights or Legitimate Interests
The Respondent does not argue about rights or legitimate interests in the disputed domain name. The Respondent does not have any rights or legitimate interests in the disputed domain name since the disputed domain name has not been used even once.
(4) Bad Faith Registration and Use of the Disputed Domain Name
The disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
The Complainant and the Respondent are not competitors and/or the disputed domain name was not registered by the Respondent primarily to disrupt the Complainant’s business. 6. Discussion and Findings Language of the Proceeding
According to Paragraph 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, but the Panel has the authority to determine otherwise. Although the Registration Agreement of the disputed domain name was confirmed by the Registrar to be in Japanese, the Complainant requested for the English language to be used in these proceedings. Moreover, the disputed domain name is in English and the Response was filed in English. Therefore, the Panel concludes that, according to paragraph 11(a) of the Rules, the language of the proceeding shall be English. Consent to Remedy
Despite the Respondent’s consent to the requested remedy, the Panel will proceed to render a decision on the merits. The Complainant has paid its fee and is entitled to a reasoned decision. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. Substantive Elements of the Proceeding A. Identical or Confusingly Similar
The Complainant has registered PIAGET trademarks in many countries before the Respondent’s registration of the disputed domain name. Currently, PIAGET is a well-known trademark all over the world.
The disputed domain name includes the Complainant’s mark in its entirety. Moreover, the terms “watch” and “jewelry” are products offered for sale under the Complainant’s PIAGET marks. The addition of “watch” and “jewelry” does not reduce but enhance the confusing similarity.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
No license or authorization of any kind has been given by the Complainant to the Respondent to use the trademark PIAGET.
The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in the disputed domain name.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The mark PIAGET is well known worldwide, and was so also at the time of registration of the disputed domain name. Watches and jewelry are products offered for sale under the Complainant’s PIAGET mark.
Because of the fame of the Complainant’s trademark, it seems unlikely that the Respondent was not aware of the Complainant’s trademark at the registration of the disputed domain name. It is also unlikely that the Respondent coined, or derived from another source, the word “piaget”.
Further, whether the use made of the disputed domain name (as described in the Factual Background) is viewed as passive holding or as a revenue generating webpage, the Panel finds that in the circumstances of this case this can be considered use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
Therefore, the Panel concludes that the disputed 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 disputed domain name be transferred to the Complainant.
Keiji Kondo
Sole Panelist
Date: January 21, 2015
1 The Respondent was behind a veil of privacy as “Whois Privacy Protection Service by ” of Tokyo, Japan, and has identified himself as Koji Sakimoto in his Response though the Complainant has identified him as Kogi Sakimoto. The Panel has concluded that “Koji” is another way of transcription of his name in Japanese.
Full & Egal Universal Law Academy