Complainant is Rado Uhren AG of Lengnau, Switzerland, represented by FairWinds Partners, LLC, United States of America.
Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with TLD Registrar Solutions Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 5, 2016. On July 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 11, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 11, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 12, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 10, 2016.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on August 16, 2016. 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
Complainant Rado Uhren AG (translated: "Rado Watches") is a company incorporated in Switzerland. Complainant is a leading designer, manufacturer, seller and retailer of high end wristwatches. Complainant has several thousand points of sale in more than 150 countries throughout the world, including many dedicated, branded retail stores.
According to the evidence submitted by Complainant, Complainant has a large number of trademark registrations for RADO, including:
- the trademark RADO registered with the United States Patent and Trademark Office under number 1729207, first used in commerce on April 12, 1958 with a filing date of February 28, 1992 and a registration date of November 3, 1992;
- the European Union trademark RADO with registration number 000225953 and a registration date of July 21, 1999.
In addition Complainant operates the website under domain name which contains the RADO mark and was registered in 1995.
The Domain Name was registered on March 28, 2012.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name. 5. Parties' Contentions A. Complainant
Complainant submits that the Domain Name is identical and confusingly similar to its RADO trademarks as it contains the well-known RADO trademark in its entirety.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not commonly known by the Domain Name and has not acquired any trademark or service mark rights in the Domain Name. According to Complainant, Respondent's website under the Domain Name is a classic pay-per-click site displaying links which divert visitors - likely Complainant's customers and potential customers - to other websites, many of which are not associated with Complainant and, in many cases, are associated with Complainant's competitors. According to Complainant, Respondent has failed to create a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith, in particular as Respondent registered the Domain Name with knowledge of Complainant's right in its well-known RADO mark and is using the Domain Name in order to redirect Internet users to a pay-per-click site that provides links to websites of third parties for commercial gain. Complainant asserts that Respondent is a known cybersquatter, that Respondent is engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which Respondent has no rights, and that multiple UDRP cases have been successfully brought against Respondent. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and 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 the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of several trademark registrations for RADO. The Domain Name incorporates the entirety of the well-known RADO trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates complainant's trademark in its entirety. The addition of the "www" letters and generic Top-Level-Domain ("gTLD") ".com" is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant's trademark. B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name with intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, the Domain Name resolves to a pay-per-click website which contains links not only to products of Complainant but also to different categories which contain links to products of competitors of Complainant. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website under the Domain Name does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the well-known RADO trademarks, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant's prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. Noting the well-known status of the RADO marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known Complainant's well-known RADO marks.
The Panel notes that the Domain Name currently resolves to a pay-per-click website. The Panel further notes that the Domain Name incorporates Complainant's well-known trademarks in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
While this is merely an additional consideration, the Panel accepts Complainant's undisputed submission that bad faith registration and use of the Domain Name is further indicated by the fact that Respondent has been found to have registered and used domain names in bad faith in multiple other cases under the Policy which suggests a pattern of conduct on the part of Respondent, including but not limited to decisions in the following cases: HRB Innovations, Inc. v. Domain Admin, Whois Privacy Corp. / Ryan G Foo,WIPO Case No. D2016-0342, and ZB, N.A. dba Zions First National Bank v. Domain Admin, Whois Privacy Corp. / Ryan G Foo, PPA Media Services,WIPO Case No. D2016-0369.
The Panel finds that Complainant has proven that the Domain Name has been 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 Domain Name be transferred to Complainant.
Dinant T. L. Oosterbaan
Sole Panelist
Date: August 22, 2016
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