The Complainant is Richemont International S.A. of Geneva, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Transfer Service, Sedo, of Cambridge, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R, Inc (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2015. On July 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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.
The Center sent an email communication to the Complainant on July 31, 2015 requesting the clarification of the identity of the Respondent due to discrepancies in different paragraphs of the Complaint. The Complainant provided an amended Complaint on July 31, 2015.
The Respondent sent an email communication to the Center on August 4, 2015 stating that “Transfer Service” registrant information was used temporarily while Sedo assisted the former registrant, V. Kopich, to transfer the disputed domain name to the new registrant, D. Mischler. The Respondent further noted that the said Mr. Mischler had failed to update the registration information for the disputed domain name and to remove references to Sedo. The Center acknowledged receipt of Respondent’s communication on August 6, 2015 stating that as confirmed by the Registrar, Sedo is the listed registrant of record for the disputed domain name , it being necessary for Sedo to be included and notified of the proceeding in order for the Center to fulfill its administrative compliance functions under the Rules and further informing that the Center will forward such communication to the Panel’s attention when appointed. The Center also noted that it would include Mr. Mischler’s email contacts in its future communications relating to this case.
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, including in such notification the emails provided by the Respondent, and the proceedings commenced on August 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2015. The Respondent (nor Mr. Mischler) did not submit any further email or response to the Center regarding the present proceeding. Accordingly, the Center notified the Respondent’s default on September 3, 2015.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on September 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 brand “IWC Shauffhausen”, a premium brand in the international luxury watch market which was founded in 1868. “IWC” branded watches are distributed worldwide through a network of authorized distributors and the brand’s own boutiques. The Complainant is the owner of United States registered trademark No. 1205403 for the word mark IWC registered on August 17, 1982 in international class 14 (watches).
The Respondent is a domain name broker and provider of domain name parking pages and monetization services. According to its WhoIs record, the disputed domain name was created on May 13, 1996. The Complainant produces historic records which indicate that the disputed domain name may have expired in about May 2013 and thereafter may have been acquired by a person named V. Kopich. The Respondent states in its correspondence with the Center that it was assisting Mr. Kopich in the transfer of the disputed domain name to a Mr. Mischler, completed on April 22, 2015, and that, as discussed below, Mr. Mischler should be treated as the respondent in this proceeding. The Respondent adds that at no time has it held any interest or rights to the disputed domain name and, after assisting the registrant assume control from its prior registrant, has not maintained any control over the registration data and domain server settings. The Respondent also states that it was not a party to the purchase and sale agreement between the current and former registrant of the disputed domain name and that the current registrant failed to update the registration data upon assuming control of the disputed domain name.
Screenshots of the website associated with the disputed domain name have been produced by the Complainant. These show that the disputed domain name has been used for sponsored “pay per click” advertising. One of the screenshots bears a disclaimer from the Respondent stating that the page is provided to the domain owner by the Respondent’s “Domain Parking” and that the domain owner and the Respondent maintain no relationship with third party advertisers. This screenshot shows advertising links which appear to refer to the Complainant’s products along with a more generic reference to a “Chronograph Automatic Watch”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that its IWC mark has become famous under the laws of the United States, Ukraine and Switzerland due to extensive use and registration. The Complainant also asserts that its marks would enjoy liberal protection under the Paris Convention.
The Complainant asserts that the disputed domain name is identical or confusingly similar to its IWC trademark because the disputed domain name fully incorporates such trademark without alteration.
The Complainant states that the Respondent has never been commonly known by the IWC name and has never used any trademark similar to the disputed domain name. The Complainant submits that 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. The Complainant notes that it has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to the Complainant’s IWC trademark.
The Complainant notes that the disputed domain name is resolving to a webpage with pay per click advertisements and previously included an invitation to buy the disputed domain name. The Complainant asserts that panels have generally found that such websites are not a bona fide offering of goods and services within the meaning of the Policy.
The Complainant asserts that the Respondent registered the disputed domain name with actual or constructive knowledge of the Complainant’s rights in the IWC trademark and that there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of such trademark. The Complainant submits that 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 IWC mark, such that the nature of the disputed domain name itself evidences bad faith registration and use. The Complainant also asserts that the disputed domain name resolves to a passive holding site which can be evidence of bad faith under the Policy in and of itself.
The Complainant states that if the Respondent were to argue that it was unaware of the Complainant’s rights, had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s trademark registrations and associated websites, together with numerous additional references in commerce on the Internet and in publications. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Preliminary Issue: Respondent Identity
As noted above, the Respondent, Transfer Service, Sedo has been confirmed by the Registrar as the listed registrant of record for the disputed domain name.
The Panel has reviewed the correspondence between the Respondent and the Center regarding the Respondent’s identity. In essence, the Respondent’s position is that it was assisting the previous holder in a transfer of the disputed domain name to a third party who is said to be the “actual registrant”. The Respondent merely names this alleged transferee as “D. Mischler” and provides no supportive evidence, nor any contact details for such transferee beyond an email address. The Respondent was correctly informed by the Center that the Rules define a respondent as “the holder of a domain name registration against which a complaint is initiated”. The Respondent does not deny that it is currently listed as the holder of the disputed domain name. While the Respondent says that the registration information should have been changed by Mr. Mischler and that by failing to do so he may be in breach of the Respondent’s terms and conditions, the fact remains that the Respondent alone is listed as the holder. The Respondent does not elaborate as to how its transfer service works, though it is self-evident that it involves the Respondent becoming the holder of the domain name concerned. In so doing, the Respondent is, prima facie, the correct respondent according to the Rules and the Complainant should normally be able to rely on this for enforcement purposes.
It is this Panel’s view that something more than a mere assertion from the currently named holder that an alternative person is the “actual registrant”, “true holder” or “beneficial owner” of a disputed domain name is required before a panel should substitute such alternative person as respondent in a proceeding under the Policy. To do otherwise would allow a domain name holder to abdicate responsibility for its domain name and potentially to defeat the ends of the Policy merely by naming a third party as the alleged correct respondent. This Panel has, for example, been prepared to make such a substitution when presented with declarations to that effect made under penalty of perjury by both the registrant and the purported “true” holder (see Mark C. Spicher v. Frogi Design, s.r.o. / The Artwork Factory, s.r.o.,WIPO Case No. D2015-0606) and, in a case of alleged identity fraud, when presented with a relative police report (see Saudi Arabian Oil Company v. Name Redacted,WIPO Case No. D2013-0105).
The Panel notes that similar assertions have been made by entities named Sedo, which may be related to the Respondent, in two previous cases under the Policy, namely MSC Mediterranean Shipping Company Holding S.A. v. Registration Private / Sedo GmbH / Paul Kocher,WIPO Case No. D2014-0694 and Votorantim Participações S.A., Fibria Celulose S.A. v. Domains By Proxy, LLC, S, LLC, Netstructure Soluções Ltda.,WIPO Case No. D2012-1543. In both such cases the panel agreed to treat an alleged transferee as the respondent. These cases do provide some support for the notion that the Respondent engages in services where it becomes the holder of a domain name on a temporary basis pending transfer between third parties. However, unlike the present case, the panel in each had before it something more than the Respondent’s mere assertion that a third party should be substituted as the respondent. In Votorantim Participações, certain evidence, not further described, was produced which was found by the panel to be sufficient for it to determine that the alleged transferee was the beneficial owner. In MSC Mediterranean, the alleged transferee itself communicated that it was in fact the registrant and the panel noted that the domain name concerned was pointing to what appeared to be the transferee’s personal website.
The Panel observes that it might have reached a similar decision on respondent identity had suitable evidence been produced by the Respondent of the alleged transfer. In this regard, the Panel considered the possibility of issuing a panel order to the Respondent inviting it to supply such evidence. However, the Panel took the view that any holder of a disputed domain name which has received due notice of a complaint under the Policy and which chooses to place the question of identity in issue can reasonably be expected to have produced the fullest information in support of its allegations that it is able to provide without the necessity for additional prompting from the Panel to do so. Accordingly, the Panel considered that it did not require to undertake further investigations into this matter.
The Panel likewise observes that even in the absence of suitable evidence from the Respondent, the situation might have been different had the alleged transferee, Mr. Mischler, himself come forward in these proceedings. He has not done so, despite the Center having taken the prudent step of sending notification of the Complaint both to the Respondent and to the email address provided by the Respondent for Mr. Mischler. Furthermore, the website associated with the disputed domain name is of no assistance on this question in that it appears to be a page provided by the Respondent which is not linked to Mr. Mischler in any way that is apparent to the Panel.
If the Respondent engages in services where it substitutes itself as the holder of a domain name for the purposes of effecting a transfer or any other purpose, in circumstances where a registrar confirms it as the registrant of record, it is the Panel’s view that the Respondent must either be prepared to take full responsibility for that domain name or to provide clear evidence sufficient to allow the Panel to substitute some other party. There is nothing on the present record which persuades the Panel to make any such substitution and accordingly the Panel determines that Transfer Service, Sedo shall be treated as the Respondent in this case. B. Identical or Confusingly Similar
The Panel notes that with the exception of the generic Top-Level Domain (gTLD) “.net”, which may be disregarded for the purposes of comparison, as is customary in cases under the Policy, the disputed domain name is identical to the Complainant’s IWC trademark.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established such a prima facie case, based upon its assertions that the Respondent has not been commonly known by the IWC name, has never operated a bona fide or legitimate business thereunder, is not making a noncommercial or fair use thereof and has been granted no license or other authorization by the Complainant to use a domain name incorporating the Complainant’s mark.
Once the panel has found that a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name under the Policy, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. In the present case, there is no formal response. Informally, the Respondent has advised the Center that it became the holder of the disputed domain name in order to effect a transfer between two parties. In the Panel’s opinion this does not confer any rights or legitimate interests upon the Respondent. Nor in fact does the Respondent claim to have any rights or legitimate interests in the disputed domain name in such informal correspondence. What is more, the Complainant’s evidence shows that the disputed domain name is being used for “pay per click” services which are targeted to the Complainant’s rights and that, despite the disclaimer of its interest on the associated website, the Respondent appears to be hosting or facilitating the publication of such advertising links while it is simultaneously the holder of the disputed domain name. It is well established in cases under the Policy that the use of a domain name to provide “pay per click” links does not of itself confer rights or legitimate interests upon a respondent (see paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case and that the requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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 notes that in the present case, the Complaint is predominantly directed against the former holder of the disputed domain name and/or against the alleged transferee as nominated by the Respondent. The Panel considers however that the Complainant’s submissions are equally applicable to the present Respondent. While the creation date of the disputed domain name indicates that it was originally registered in 1996, it is clear that the Respondent became the present holder at some point in the very recent past, presumably by virtue of a transfer from a previous holder. The Respondent says in its informal communication that such holder is the person to whom the Respondent was providing the alleged “transfer service”.
Paragraph 3.7 of the WIPO Overview 2.0 indicates that the transfer of a domain name to a third party amounts to a new registration and that registration in bad faith must normally occur at the time the current registrant took possession of the disputed domain name. The Respondent in the present case is the current registrant. At the time that the Respondent took possession of the disputed domain name appears to have been already in use for pay per click advertisements which targeted the trademark value of the term “IWC” as matched exactly in the disputed domain name. Furthermore, the Respondent appears to have been either providing or hosting such links, based upon the disclaimer on the corresponding website.
The Panel is of the view that even if the Respondent was merely providing a temporary transfer service in this case, which assertion as noted above has only been made informally and has not been demonstrated to the Panel’s satisfaction, the Respondent was not entitled to turn a blind eye to, or to abdicate any responsibility for, the use of the disputed domain name as contended by the Complainant at the point where the Respondent became the holder of the disputed domain name.
The Panel accepts the Complainant’s assertion that its mark is sufficiently well-known that it is reasonable to infer that the Respondent is likely on the balance of probabilities to have had knowledge of such. This is in any event reinforced by the fact that the Respondent should have been placed on notice by the widespread use of the Complainant’s IWC mark in connection variously with the Complainant’s corporate name “Schaffhausen”, the term “watches”, “chronograph automatic watches”, “pilot watches” and “automatic” on the corresponding website before and after the Respondent became the holder of the disputed domain name. The same applies to any alleged transferee to whom the disputed domain name has allegedly been transferred by the Respondent.
The Panel adds for the sake of completeness that given the evident targeting of the Complainant’s mark in this case, upon a recent acquisition of the disputed domain name, and in the absence of formal participation in the proceedings by the Respondent or any participation by the alleged transferor or transferee of the disputed domain name, there does not appear to be any compelling argument in favor of the Respondent along the lines put forward by the respondent in the case of PwC Business Trust v. Ultimate Search,WIPO Case No. D2002-0087.
In all of these circumstances, the Panel concludes on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and accordingly that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: September 30, 2015
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