The Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America (“United States”).
The Respondent is yuka tobita of Tokyo, Japan / Whois Privacy Protection Service by MuuMuu Domain of Fukuoka-shi, Fukuoka, Japan. 2. The Domain Name and Registrar
The disputed domain name is 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 3, 2014. On November 28, 2014, the Center transmitted an email in English and Japanese to the parties regarding the language of the proceeding. On December 1, 2014, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
The Center verified that the Complaint and 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 proceeding commenced on December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2014.
The Center appointed Ho-Hyun Nahm, Esq. as the sole panelist in this matter on January 16, 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 premium brand in the international luxury watch and jewelry segment under the trade name “Piaget”. The Complainant was founded in 1874. It offers its luxury watches and jewelry for sale across the world. 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 and in Paris. The Complainant is the owner, among many others, of the following trademark registrations for the PIAGET mark.
In Japan
Trademark: PIAGET
Registration number: 0964626
Registration date: May 31, 1972
Class and goods: 14; watch parts and accessories
In Switzerland
Trademark: PIAGET
Registration number: 329926
Registration date: November 1, 1983
Class and goods: 14; watches
In the United States
Trademark: PIAGET
Registration number: 679,984
Registration date: June 9, 1959
Class and goods: 14; watches
The disputed domain name was registered on May 24, 2014. 5. Parties’ Contentions A. Complainant
(1) The disputed domain name is confusingly similar to the Complainant’s PIAGET marks because it fully incorporates the PIAGET marks and adds the term “biennale,” which is likely referring to the Biennale des Antiquairies or other exhibition for jewelry—in other words, “biennale” refers to where PIAGET goods are sold—and the generic Top-Level Domain (“gTLD”)“.com”.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
(i) 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;
(ii) the Respondent has never been commonly known by the PIAGET marks 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, other than the infringing use noted herein;
(iii) the 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; and
(iv) the Respondent is using the disputed domain name as pay-per-click advertisement website that includes a search engine and advertises links to the products of Complainant’s competitors and/or counterfeit products the use of which does not constitute a bona fide or legitimate business use.
(3) The disputed domain name was registered and is being used in bad faith by the Respondent:
(i) the Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the PIAGET marks by virtue of Complainant’s prior registration of that mark with the trademark office of Japan, where Respondent and the Registrar are located; Switzerland, where the Complainant resides; and the United States, where Respondent’s website is targeted;
(ii) the disputed domain name has been used to advertise websites offering for sale products of the Complainant’s competitors and/or counterfeit knock offs of the Complainant’s own products, and such activities fall squarely into the explicit example of bad faith registration and use found in the Policy, paragraph 4(b)(iv);
(iii) the disputed domain name resolves to a website advertising for sale products in competition with those offered under the Complainant’s mark, and such activity is disruptive to the Complainant’s business and therefore conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy, paragraph 4(b)(iii);
(iv) there is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant’s mark, as such, the nature of the disputed domain name itself evidences bad faith registration and use; and
(v) even if the Respondent argues that it was somehow unaware of the Complainant’s rights in the relevant mark, had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s various trademark registrations in the PIAGET marks and the websites associated with the mark, and numerous additional references in commerce, on the Internet, and in publications, evidencing Complainant’s use of its mark in connection with the Complainant’s goods and services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Preliminary Issue: Language of the Proceeding
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceeding Japanese. The Complainant requested that this proceeding be conducted in English on the ground that the disputed domain name is in English and is directed at English-speaking consumers, and thus the Respondent has no problem communicating in English. The Respondent did not submit any objection to the Complainant’s request within the specified due date. Pursuant to paragraph 11(a) of the Rules, the Panel determines that the language requirement has been satisfied through the Japanese language Commencement Notification, and, absent any formal Response from the Respondent, determines that the remainder of the proceeding shall be conducted in English.
Paragraph 15(a) of the Rules instructs the 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 complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
In view of the Respondent’s failure to submit a formal Response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint). A. Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the PIAGET marks because it fully incorporates the PIAGET marks and adds the term “biennale,” which is likely referring to the Biennale des Antiquairies or other exhibition for jewelry—in other words, “biennale” refers to where PIAGET goods are sold—and the gTLD “.com”.
The Panel notes that the Complainant has provided sufficient evidence showing that it is the owner of the PIAGET marks the registrations of which predate the Respondent’s registration of the disputed domain name. Accordingly, the Panel finds that the Complainant’s trademark registrations of the PIAGET marks in Japan, Switzerland, and the United States sufficiently establish its rights in the mark pursuant to Policy, paragraph 4(a)(i). The Panel holds that the disputed domain name is confusingly similar to the Complainant’s mark PIAGET in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”
The Panel notes that the term “biennale” refers to the place where the PIAGET goods are sold, and thus it does not play any role to mitigate the confusing similarity between the disputed domain name and the PIAGET mark. The Panel also finds that the “.com” is a descriptive suffix commonly used as a gTLD, and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the gTLD suffix “.com” in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.”
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that i) it 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; ii) the Respondent has never been commonly known by the PIAGET marks 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, other than the infringing use noted herein; iii) the 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; and iv) the Respondent is using the disputed domain name as pay-per-click advertisement website that includes a search engine and advertises links to the products of Complainant’s competitors and/or counterfeit products the use of which does not constitute a bona fide or legitimate business use.
The Panel finds that the Respondent has no connection or affiliation with the Complainant or its PIAGET marks in the disputed domain name or in any other manner. The Panel also finds that the website at the disputed domain namedisplays pay-per-click advertisements, a search engine and links to the products of Complainant’s competitors and/or counterfeit products. (see Annex 5 to the Complaint). As such, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that nor is such use a legitimate noncommercial or fair use. See, e.g., Kiss Nail Products, Inc. v. Telecom Tech Corp.,WIPO Case No. D2009-1308. (“The Complainant has stated that the Respondent’s use of the Complainant’s mark is an attempt to misdirect Internet users familiar with the Complainant’s mark for commercial gain, including pay-per-click advertising revenues, and that use of the domain name to refer to other sites to collect referral fees cannot be considered as a bona fide offering of goods or services or a non- commercial or fair use. The Complainant has established a prima facie basis for concluding that the Respondent has no rights or legitimate interests in the domain has been shifted to the latter.”)
The Panel agrees that i) the Respondent has never been commonly known by the PIAGET marks 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, other than noted herein; and ii) the Respondent is not making a protected noncommercial or fair use of the disputed domain name.
Under the circumstances that the Respondent did not formally reply to the Complainant’s contentions and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of the Policy, paragraph 4(a)(ii) has been established. (See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). C. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain name was registered and is being used in bad faith by the Respondent because i) 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 that mark with the trademark office of Japan, where the Respondent and the Registrar are located; Switzerland, where the Complainant resides; and the United States, where the Respondent’s website is targeted; ii) the disputed domain name has been used to advertise websites offering for sale products of the Complainant’s competitors and/or counterfeit knock offs of the Complainant’s own products, and such activities fall squarely into the explicit example of bad faith registration and use found in the Policy, paragraph 4(b)(iv); iii) the disputed domain name resolves to a website advertising for sale products in competition with those offered under the Complainant’s mark, and such activity is disruptive to the Complainant’s business and therefore conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy, paragraph 4(b)(iii); iv) there is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant’s mark, as such, the nature of the disputed domain name itself evidences bad faith registration and use; and v) even if the Respondent would argue that it was somehow unaware of the Complainant’s rights in the relevant mark, had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s various trademark registrations in the PIAGET marks and the websites associated with the mark, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its mark in connection with the Complainant’s goods and services.
Paragraph 4(b) of the Policy provides that the following circumstances, among others, shall be evidence of the registration and use of a domain name in bad faith: 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 the respondent’s website or location (Policy, paragraph 4(b)(iv)).
The Panel recognizes that the Complainant’s mark is a well-known trademark internationally in the field of watches. In light of the well-known status of the Complainant’s mark established well before the registration date of the disputed domain name, it is inferred that the Respondent registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s mark. This is because it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark PIAGET or that the disputed domain name might be of some type of economic advantage in association with the Complainant’s mark (see The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517). Registration of the disputed domain name incorporating the well-known Complainant’s mark PIAGET by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel observes that the website at the disputed domain name displays pay-per-click advertisements, a search engine and links to the products of Complainant’s competitors and/or counterfeit products (see Annex 5 to the Complaint). As a result, the Respondent may generate unjustified revenues for its redirecting to such a website. The Respondent is therefore illegitimately capitalizing on the reputation of the Complainant’s mark. See Dolce & Gabbana s.r.l. v. Domain ID Shield Service / Misato Takahashi, bkt,WIPO Case No. D2013-0600. See also Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
For all of the above considerations, the Panel finds that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to the website at the disputed domain name, making them believe that the website is associated with or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the goodwill of the Complainant’s mark.
As such, the Panel concludes that the Respondent registered 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.
Ho-Hyun Nahm
Sole Panelist
Date: January 29, 2015
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