The Complainant is Luna Management Sam, Monaco represented by Joshua Rogosnitzky, Monaco.
The Respondent is Nanci Nette, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2021. On May 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 24, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 15, 2021. The Center appointed Gabriela Kennedy as the sole panelist in this matter on June 18, 2021. 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 a Monaco-based company that is the owner of the Swiss watch brand “DeLaneau”. The DeLaneau brand was established in 1949 and specialises in manufacturing luxury watches. The Complainant is the owner of the DELANEAU trade mark (Reg. No. 375924) registered in Switzerland on April 19, 1990. The Disputed Domain Name was registered by the Respondent on March 21, 2000. The Disputed Domain Name resolves to various landing pages containing pay-per-click (“PPC”) links – some of them contain search results for certain watch-related search terms, whereas some of them contain links to websites of different third party businesses which appear to be direct competitors of the Complainant’s luxury watch business. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) The Disputed Domain Name is identical to the Complainant’s DELANEAU trade mark. The Disputed Domain Name incorporates the Complainant’s DELANEAU trade mark in its entirety and the addition of the generic Top-Level Domain (“gTLD”) does not sufficiently distinguish the Disputed Domain Name from the Complainant’s DELANEAU trade mark. (b) The Complainant holds registered rights in the DELANEAU trade mark. By incorporating the Complainant’s DELANEAU trade mark in its entirety, the Disputed Domain Name causes confusion to the public. (c) The Respondent must have been aware of the Complainant’s rights in the DELANEAU trade mark when registering the Disputed Domain Name. The Respondent’s failure to assert its legitimate interests in the Disputed Domain Name constitutes evidence of bad faith registration and use. The Respondent has also previously engaged in a pattern of bad faith registration and use in relation to other domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the DELANEAU trade mark, based on its trade mark registrations. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the gTLD (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Disputed Domain Name incorporates the Complainant’s DELANEAU trade mark in its entirety. As such, the Panel finds that the Disputed Domain Name is identical to the Complainant’s DELANEAU trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel finds that the Complainant has not authorised the Respondent to use the Complainant’s DELANEAU trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the Complainant’s DELANEAU trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Disputed Domain Name resolves to various landing pages containing PPC links – some of them contain search results for certain watch-related search terms, whereas some of them contain links to websites of different third party businesses which appear to be direct competitors of the Complainant’s luxury watch business. In light of such use, the Panel finds that the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name is not in connection with any bona fide offering of goods or services and cannot be regarded as legitimate noncommercial or fair use. Such use of the Disputed Domain Name gives a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors away from the Complainant. In addition, the Respondent has not provided any evidence to prove that it has any trade mark rights corresponding to the Disputed Domain Name, or that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Previous UDRP panels have consistently found that the mere registration of a domain name that is identical to a widely-known trade mark by an unaffiliated entity can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The Complainant’s DELANEAU trade mark appears to be fairly well-known watch brand. A quick Internet search shows that the top search results returned for “delaneau” are different third party websites making references to the Complainant’s watch products. Given that the Disputed Domain Name was registered by the Respondent long after the Complainant had registered its DELANEAU trade mark, the Respondent must have been aware of the Complainant and its rights in the DELANEAU trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s DELANEAU trade mark in its entirety also creates a presumption of bad faith. In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith: (i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by him of the Disputed Domain Name; and (ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is identical to the Complainant’s DELANEAU trade mark and attempts to redirect visitors to websites of third party businesses which appear to be direct competitors of the Complainant’s luxury watch business. Such use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s rights. The Panel has also noted the Complainant’s allegations that the Respondent is a frequent domain squatter. According to past records, the Respondent has been involved as a respondent in more than twenty UDRP panel decisions in the past and was found to have “engaged in an abusive pattern of domain name registration that prevents trade mark owners from reflecting their trade marks in corresponding domain names” (see e.g. Veolia Environnement SA v. Nanci Nette, Name Management Group,WIPO Case No. D2017-1511; Facebook, Inc. and WhatsApp Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette,WIPO Case No. D2019-2223; Slack Technologies, Inc. v. Registration Private, Domains by Proxy, LLC / Nanci Nette, Name Management Group,WIPO Case No. DCO2020-0018). Accordingly, the Respondent’s history of repeated cybersquatting activities constitutes a further indication of bad faith. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has 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 Gabriela Kennedy
Sole Panelist
Date: July 2, 2021
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