The Complainant is Chopard International SA of Prangins, Switzerland, represented by SafeBrands, France.
The Respondent is Patrick Lam of Kwun Tong, Hong Kong, China, represented by Steven Rinehart, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2015. On July 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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 proceeding commenced July 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 19, 2015. The Response was filed with the Center on August 20, 2015.
The Center appointed John Swinson, Theda König Horowicz and Ada L. Redondo Aguilera as panelists in this matter on September 7, 2015. The Panel finds that it was properly constituted. Each member of 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, Chopard International SA, is a luxury brand owner in the watch and jewelry industry. The Complainant was first established in 1860 in Switzerland. The Complainant has offices in a dozen countries, including in Hong Kong, China, where its first boutique opened in 1983. One of the Complainant’s collections of luxury watches and jewelry is marketed and sold under the HAPPY DIAMONDS brand.
The Complainant owns a number of international trade mark registrations for HAPPY DIAMONDS mostly in respect of watches adorned with diamonds, spectacles, various items of jewelry and writing materials (the “Trade Mark”). The earliest of these was registered on July 2, 1979 (international registration No. 446502). The Complainant has also held a Hong Kong registration for the Trade Mark since November 4, 1986 (Hong Kong registration No. 19890080).
The Respondent is Patrick Lam, an individual of Hong Kong, China.
The Disputed Domain Name has been registered by the Respondent since it was first created on November 1, 2002.
As at the date of this Decision, the Disputed Domain Name resolves to a parking page. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows.
Identical or Confusingly Similar
The Complainant has, over 150 years, become one of the leading names in the high-class watch and jewelry industry and the Trade Mark, since it was first created in 1976, has become a worldwide icon in the field of watchmaking and jewellery dedicated to women. The Complainant has invested a great amount of effort and expense in the protection of the Trade Mark, as evidenced by the significant number of registrations it owns for the Trade Mark worldwide.
The Complainant submits the Disputed Domain Name is identical to the Complainant’s Trade Mark as it consists solely of the Complainant’s Trade Mark. The Complainant also states that the mere addition of the top level “.com” is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for trade mark purposes under the Policy.
Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons.
- The Respondent has no prior rights, as trade marks or corporate/trade name, in the Trade Mark.
- The Complainant has no relation with the Respondent and has not authorized the Respondent to use the Trade Mark.
- The Complainant has had several email communications with the Respondent in order to attempt to resolve this matter amicably. The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute.
- As at the date of the Complaint, the Respondent used, in an unauthorized manner, the Disputed Domain Name as a parking page with pay-per-click links which refer directly to the Complainant’s products and competitors’ products. Such use can be considered neither as a bona fide offering of goods or services nor as a legitimate noncommercial or fair use of the Disputed Domain Name.
Registration and Use in Bad Faith
The Complainant submits that the Respondent must have known of the Complainant and the Trade Mark at the time of registration because the Respondent is located in Hong Kong, China, where the Complainant has also been located since at least 1983 and currently commercializes its products through seven “Chopard Boutiques” and 36 points of sale. The Complaint cites previous UDRP decisions which decided that where the domain name in dispute includes a widely known and widely-used registered trade mark of the complainant, this supports a conclusion of registration in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028).
The Complainant also submits that the Respondent’s current use of the corresponding website to display the Trade Mark (as well as other registered trade marks of the Complainant such as CHOPARD and HAPPY SPORT) and to provide links to others’ websites which offer competing products indicates that the registration of the Disputed Domain Name by the Respondent was intentional, not coincidental, (referring to SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin / Moniker Privacy Services, WIPO Case No. D2008-0016).
The Complainant also refers to the following factors:
- The Respondent earns a commission when an Internet user clicks on one of the sponsored links found on the website associated with the Disputed Domain Name − such sought or realized commercial gain indicates the Respondent’s bad faith, as proscribed by the Policy at paragraph 4(b)(iv).
- The Respondent’s display of sponsored links to competitors’ websites and non-official websites offering the Complainant’s products for sale is indicative of an intention to disrupt the Complainant’s business, an element of bad faith pursuant to paragraph 4(b)(iii) of the Policy.
- The Respondent’s failure to respond positively to the Complainant’s demand letter and efforts to resolve the matter amicably (including the Respondent’s offer to sell the Disputed Domain Name at EUR 3,000) constitutes further evidence of bad faith. B. Respondent
The Respondent has made the following submissions.
Identical or Confusingly Similar
The Respondent claims the Complainant has no enforceable trade mark rights against the Respondent in the Trade Mark. He claims the Trade Mark is descriptive as it comprises only of the words “happy” and “diamonds” which are both generic. The Respondent submits that when a trade mark is composed of generic terms, or common words phrases, and the disputed domain name is being used “because of its attraction as [a] dictionary word, and not because of [its] value as [a] trade mark”, the respondent has legitimate rights in the domain name.
Rights or Legitimate Interests
The Respondent submits it has been making preparations to use the Disputed Domain Name to retail a mobile phone the Respondent was designing in 2002. The Respondent states he intended to market these phones using the brand and mark HAPPY, and it was for this reason that the Disputed Domain Name was registered. The Respondent noted that for this intended use, he also registered the domain name on the same date that he registered the Disputed Domain Name.
The Respondent claims that at the time the Disputed Domain Name was registered, mobile phones with inlaid diamonds were popular worldwide.
Registration and Use in Bad Faith
The Respondent argues that the element of registration and use in bad faith is not made out because of the following reasons.
- The Respondent has been the registrant of the Disputed Domain Name for almost sixteen years, during which time the Complainant has never asserted any trade mark rights against the Disputed Domain Name or the Respondent and a “long delay [in bringing a complaint] raises an inference that the Complainant did not truly believe the Respondent engaged in bad faith registration and that use of the Disputed Domain Name was in bad faith” (referring to Libertad Servicios Financieros, S.A. v. Telepathy, Inc.,WIPO Case No. D2011-1635).
- The Respondent does not offer, and has never offered, services or products of any kind which would compete with the Complainant. Rather the Respondent has been preparing to retail a mobile phone with inlaid diamond clusters via the Disputed Domain Name.
- The Complainant’s rights in the Trade Mark have never been known of or infringed by the Respondent. The Complainant and Respondent live thousands of miles apart and have never had contact. The Respondent has never offered the Disputed Domain Name to the Complainant for sale.
- The Respondent has never used the Disputed Domain Name to attract the Complainant’s customers. The cost per click advertisements appearing on the landing page to which the Disputed Domain Name resolves were generated automatically by the Respondent’s registrar and are not calculated to target the Complainant’s customers.
- Holding domain names passively is a legitimate use and has been well-settled in UDRP cases. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Trade Mark consists solely of the words “HAPPY DIAMONDS”. The Disputed Domain Name is . It is well established that the “.com” addition is generally not sufficient to separate the domain name from the mark under the Policy.
The Disputed Domain Name is thus identical to the Complainant’s Trade Mark, in accordance with paragraph 4(a)(i) of the Policy. In this context, the argument raised by the Respondent as to the generic or descriptive nature of the Trade Mark is irrelevant.
The Complainant succeeds on the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is thus required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case and that this case has not been rebutted by the Respondent.
First, the Complainant never authorized the Respondent to utilize the Trade Mark, nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. Secondly, given the exclusive trade mark rights that reside in the Complainant (and have resided in the Complainant since 1979), the Respondent could not legitimately acquire any public association between himself and the Trade Mark, at least for goods which are either identical or sufficiently similar to those listed on the Complainant’s trade mark registrations, without infringing on the exclusive trade mark rights of the Complainant.
Additionally, the Respondent’s use of the Disputed Domain Name over the years cannot be said to have been bona fide – the Respondent has not used the Disputed Domain Name for purposes other than linking it to a parking page containing numerous references to the Trade Mark and displaying sponsored links to competitors’ websites and non-official websites offering the Complainant’s products for sale, thus generating profits for the Respondent and creating a false impression of association or affiliation with the Complainant.
The Respondent claimed “it has been making preparations to use the Disputed Domain Name to retail a mobile phone the Respondent was designing in 2002”. However, the only evidence provided by the Respondent to support his claim consists of four images showing two digital designs of (outdated) mobile phones with inlaid diamond clusters and the fact that he registered another domain name at the time he registered the Disputed Domain Name. For the reasons set out below, the Panel finds that this evidence does not meet the required threshold.
Sub-paragraph 4(c)(i) of the Policy requires the Respondent to provide proof of “demonstrable preparations” to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has not provided any evidence about the business other than an intention (supposedly ongoing for the last 12 years) to develop it at some indeterminate time in the future. For example, the Respondent has not provided a business plan or any evidence regarding potential partners, the proposed technology or how it would function, how the business would be financed, a timetable, a draft website, or indeed, an explanation of the delay in developing the business or a website since 2002.
In circumstances where the Respondent has owned the Disputed Domain Name for 13 years and has made no use of it other than to obtaining revenue by exploiting the reputation and goodwill of the Complainant’s Trade Mark, the Panel finds that the provision of two digital images showing old mobile phones bearing the word “happy” and inlaid diamonds does not constitute evidence sufficient to prove demonstrable preparations by the Respondent to use the Disputed Domain Name in connection with a proposed business or any other bona fide offering of goods or services.
The fact that the Respondent registered the Disputed Domain Name does not constitute a preparatory measure. It is well established that the mere registration of a domain name cannot establish any rights or legitimate interests in it: Studio Peyo S.A., International Merchandising Promotion and Services (I.M.P.S.) v. WWProductions,WIPO Case No. D2004-0768.Equally, the fact that the Respondent, in further preparation for the business, registered another domain name, could hardly be, without further evidence substantiating the Respondent’s intentions, “demonstrable preparations” for the use of the Disputed Domain Name (see DigiPoll Ltd. v. Raj Kumar,WIPO Case No. D2004-0939).
The Panel concludes that the Respondent has failed to make a sufficient showing under paragraph 4(c) of the Policy to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent claims that he registered the Disputed Domain Name innocently and that he had no knowledge of the Trade Mark. The Respondent claims that he and the Complainant “live thousands of miles apart and have never had contact”. (The Panel notes that the Complainant sent a letter to the Respondent on November 13, 2014 and the parties exchanged email correspondence until April 2015.)
In light of the significant reputation of the Complainant and the Trade Mark, the Panel finds that it is more than likely than not that the Respondent had knowledge of both the Complainant and the Trade Mark when it acquired the Disputed Domain Name. In some circumstances, where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Complainant has demonstrated it has used and established exclusive rights in the Trade Mark for many decades in several countries. Given that in Hong Kong, China, this use dates back to 1986, the Panel is satisfied that it is more than likely that the Trade Mark had, by the time the Respondent registered the Disputed Domain Name in 2002, acquired a distinctive character and could be considered notorious in relation to watches and jewelry. The Panel therefore infers that the Respondent sought to make use of the reputation of the Complainant and registered the Disputed Domain Name in bad faith.
Further, as discussed in relation to bona fide use above, the Respondent’s use of the Disputed Domain Name has not been in good faith. Rather the Respondent appears to have been using the Disputed Domain Name predominantly as an attempt to misdirect and/or divert Internet users to its website and thus increase the profits made from the cost per click advertisements it contains.
The Respondent claims that he was not responsible for these advertisements as they were generated automatically by the Respondent’s Registrar, however previous UDRP panels have found that this is not sufficient to cure bad faith where elements of cybersquatting are otherwise present (see, e.g., Owens Corning v. NA, WIPO Case No. D2007-1143). Given the inference made as to registration in bad faith, the Panel is not satisfied that the Respondent had no influence over the type of links that appeared of the landing page. In any event, the Respondent did not cease to use the Disputed Domain Name for this purpose even after he was expressly made aware of it by the Complainant in November 2014.
The Respondent has invoked the doctrine of laches to argue that the element of registration and use in bad faith is not made out. However, the principle established by a number of UDRP panels is that the doctrine or defense of laches as such does not generally apply to proceedings under the UDRP. This is because the principal concern of the UDRP is to avoid ongoing or future confusion as to the source of communications, goods or services (see paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel finds no reason to depart from this principle, particularly where the transfer of the Disputed Domain Name to the Complainant would not create any potential damage or risk of confusion for Internet users as the Respondent has only used the Disputed Domain Name in relation to a parking page and has not become known by the Disputed Domain Name.
The Complainant succeeds on the third element of the Policy. 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.
John Swinson
Presiding Panelist
Theda König Horowicz
Panelist
Ada L. Redondo Aguilera
Panelist
Date: September 21, 2015
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