The Complainant is Cartier International A.G. of Steinhausen, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Chong James, buysellkey of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 6, 2015. On March 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2015, 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.
On March 9, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On March 13, 2015, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not comment within the specified due date.
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 in English and Chinese, and the proceedings commenced on March 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on April 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 was founded in 1847 and is a jeweler and watch manufacturer in the high-end luxury goods category. It has received countless awards for the superior craftsmanship of its luxury timepieces and jewelry. The Complainant operates close to 300 boutiques in 125 countries across six continents worldwide. The Complainant designs, markets and distributes high-end luxury jewelry, timepieces and accessories. In addition to the Complainant's branded boutiques, the Cartier distribution channel includes Neiman Marcus, Saks Fifth Avenue, and Harrods. Cartier is ranked number 58 among Interbrand's Top 100 Best Global Brands for 2014 and is one of the top five best luxury brands.
The Complainant operates its extensive website featuring an online store, as well as information about its activities in North America, Europe and Asia at its website, "".
The Complainant possesses registrations for the trade mark CARTIER, including U.S. Registration No. 1329299 having a registration date of April 9, 1985, covering "eyeglasses and eyeglass frames"; U.S. Registration No. 4178047, having a registration date of July 24, 2012, covering "jewelry and watches"; Chinese Registration No. 202386, having a registration date of December 15, 1983, covering, inter alia, "jewelry; gem or semiprecious stone; jade; amber; pearl; ivory"; and Chinese Registration No. 202392, having a registration date of December 15, 1983, covering, inter alia, "optical instrument; eyeglasses; sunglasses; spectacle lenses; spectacle frames".
As a result of the extensive use and registration of the CARTIER trade mark around the world, the CARTIER mark has become famous under the laws of the United States of America and China.
The disputed domain name was registered on August 31, 2007 but is not used in relation to any active webpage. 5. Parties' Contentions A. Complainant
1. The disputed domain name is confusingly similar to the CARTIER trade mark in which the Complainant has rights. The disputed domain name fully incorporates the CARTIER trade mark with the generic term "replica", and merely adds a hyphen and the generic Top-Level Domain ".com". Such minor alterations do not render the disputed domain name less confusing for purposes of the confusingly similar analysis.
2. The Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, who has referred to itself in the WhoIs database as "buysellkey and Chong James" has never been commonly known by the disputed domain name nor any variations thereof, and has never used any trade mark or service mark similar to disputed domain name by which it may have come to be known. The Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a noncommercial or fair use thereof. Rather, the disputed domain name resolves to a generic inactive website. Such use does not constitute a bona fide or legitimate business 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 incorporate the Complainant's CARTIER mark.
3. The Respondent registered and is using the disputed domain name in bad faith. This is evidenced by the fact that the Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant's rights in the CARTIER mark; the Respondent is passively using the disputed domain name; there is no reason for the Respondent to have registered the disputed domain name other than to ride on the reputation and goodwill of the Complainant's CARTIER mark (the nature of the disputed domain name itself evidences bad faith registration and use); and even if the Respondent argues that he or she was somehow unaware of the Complainant's rights in the CARTIER mark, had the Respondent conducted even preliminary trade mark searches, the Respondent would have found the Complainant's various trade mark registrations in the CARTIER mark, 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 marks 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 A. Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that: "[u]nless 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".
Paragraphs 10(b) and (c) of the Rules stipulate, respectively, that:
"(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel."
The Complainant requested that English be the language of the proceeding for the reason that the disputed domain name contains an English term which shows the Respondent has an ability to operate in English. The disputed domain name is clearly directed at English-speaking consumers.
The Respondent did not respond in these proceedings nor in relation to the issue of the language of the proceeding.
Pursuant to the Rules cited above, the Panel has the duty of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel determines that English should be the language of the proceeding, having taken into consideration the circumstances of this case. The Panel believes that the Respondent would not be prejudiced if English is adopted as the language of the proceeding whereas the cost of and delay which would be brought about by requiring the Complaint and evidence to be translated into Chinese would not be proportional, when balancing the respective interests. The Panel believes that the Respondent has a sufficient level of understanding of the English language, as is suggested by the choice of and combination of words making up the disputed domain name.
Accordingly, the Panel determines English to be the language of this proceeding. B. Identical or Confusingly Similar
The Complainant has shown it has trademark rights in the word CARTIER. The Panel agrees with the Complainant's contention that CARTIER is a well-known mark. The mark has been incorporated in its totality within the disputed domain name. Despite the addition of the hyphen and the word, "replica", it is the Panel's view that the disputed domain name is confusingly similar to the Complainant's CARTIER trade mark as the mark is clearly identifiable and is the dominant part of the disputed domain name. The addition of the generic term "replica" and the hyphen do not remove the confusing similarity with the Complainant's trade mark where the entire distinctive trade mark has been incorporated in the disputed domain name. Furthermore, in the context of the luxury goods that the Complainant and its CARTIER mark are known for, the addition of the word "replica" adds to the confusion with the Complainant's mark.
The Panel therefore concludes that paragraph 4(a)(i) of the Policy has been established. C. Rights or Legitimate Interests
Bearing in mind the fact that CARTIER is a long-established and famous trade mark, the Panel is of the view that it would require highly persuasive evidence for the Respondent to show it has rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has established a prima facie case that the Respondent has, for the reasons given in the Complaint and cited above, no rights or legitimate interests in relation to the disputed domain name.
The burden therefore falls on the Respondent to prove otherwise. In the absence of any response from the Respondent or evidence which would prove the Panel can only conclude that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as per paragraph 4(c) of the Policy.
The Panel therefore concludes that paragraph 4(a)(ii) of the Policy has been established. D. Registered and Used in Bad Faith
The decision of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 has been cited with approval in many UDRP panel decisions, and is the leading case authority for the principle that the passive holding of a domain name by a respondent can amount to bad faith for the purposes of paragraph 4(a)(iii) of the Policy in certain circumstances. The circumstances in that case were:
(i) the complainant's trade mark had a strong reputation and was widely known as a result of substantial use in Australia and in other countries;
(ii) the respondent provided no evidence of any actual or contemplated good faith use of the domain name;
(iii) the respondent took active steps to conceal its true identity, by operating under a name that was not a registered business name;
(iv) the respondent actively provided, and failed to correct, false contact details, in breach of its registration agreement;
Taking into consideration the above-mentioned factors, in particular the fame and reputation of the CARTIER trade mark and the Respondent's failure to provide evidence of any actual or contemplated good faith use of the disputed domain name, the Panel is unable to conceive of any plausible contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. The incorporation of the word and hyphen "-replica" in the disputed domain name is, on the contrary, strongly indicative of an intention by the Respondent to ride off the reputation of the Complainant and its CARTIER trade mark and/or to sell goods that are replicas of the Complainant's goods bearing the CARTIER trade mark. The Panel finds that the circumstances justify a finding of registration and use of the disputed domain name in bad faith, as described in paragraph 4(b)(iv) of the Policy which reads:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location".
The Panel therefore concludes that paragraph 4(a)(iii) of the Policy has been established. 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.
Francine Tan
Sole Panelist
Date: April 21, 2015
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