The Complainant is Candaux SA, Switzerland, represented by Gsmart IP SA, Switzerland.
The Respondent is Jürgen Schranz, Germany, represented by Python Avocats, Switzerland.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2021. On December 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2022, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022, which was subsequently extended until February 2, 2022. The Response was filed with the Center on February 2, 2022.
The Center appointed Andrea Mondini as the sole panelist in this matter on February 9, 2022. 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.
On February 21, 2022, the Center received from the Complainant a request to postpone the Panel’s decision because the parties were conducting settlement negotiations. On February 23, 2022, the Panel suspended the proceedings until March 25, 2022. In the following, the Complainant repeatedly requested extensions of the suspension alleging that the parties were still in settlement discussions, and the suspension was extended by the Panel for the last time in the procedural order No. 6 of June 21, 2022, in which the Panel ordered that the suspension was extended until June 23, 2022, and that if the Parties have not reached a settlement or requested termination by June 23, 2022, the Panel would proceed to render its decision. In this regard the decision due date was extended to June 30, 2022. In the following, no notification was received by the Center, and therefore the Panel now proceeds with the decision.
4. Factual BackgroundThe Complainant is a Swiss watchmaking company managed by its founder, Mr. David Candaux.
The Respondent is the director of Contensys Information GmbH, a German provider of IT services.
The Complainant owns several D. CANDAUX trademarks, inter alia, the Swiss trademark D. CANDAUX (Registration No. 692235 filed on August, 26, 2016 and registered on September 5, 2016 in classes 14, 37 and 42) and the International registration D. CANDAUX (Registration No. 1348614, registered on February 13, 2017 in class 14) designating inter alia the European Union.
The disputed domain name was registered on November 19, 2018.
The disputed domain name resolves to a website displaying watches marked with the trademark D. CANDAUX and indicating in the Terms of Use that all intellectual property rights such as trademarks are exclusively used on such website by Luxury World LLC.
5. Parties’ Contentions A. ComplainantThe Complainant contends as follows:
The disputed domain name is confusingly similar to the D. CANDAUX trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the omission of the dot is not sufficient to avoid confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainant to use its trademark. The use of the website at the disputed domain name and the associated Facebook and Instagram pages show that the Respondent has no legitimate interest in using the word “DCANDAUX” or “CANDAUX”, and only intends to divert consumers for profit by creating confusion with the Complainant, the real owner of the trademark.
The disputed domain name was registered and is being used in bad faith because the Respondent knowingly attracts consumers to his website for profit by creating confusion with the Complainant's trademarks. According to the Complainant, the watches presented on the litigious website are “the perfect reproduction of the watches created by David Candaux”.
B. RespondentThe Respondent contends in essence that he is the director of the company Contensys Informations GmbH, which manages the disputed domain name as a service domain provider and acts on behalf of his client, Luxury World LLC.
Under a distribution and licensing agreement entered into on November 8, 2018 (“the Agreement”), Luxury World LLC is the exclusive marketer and distributor of the D. CANDAUX luxury watches and has the exclusive right to use any and all of the intellectual property rights related thereto. Luxury World LLC has thus been using the disputed domain name since 2019 on the basis of the Agreement.
The Complainant has no right to use the trademark D. CANDAUX because on November 29, 2021, a Swiss judicial authority, the Juge délégué de la Cour civile du Tribunal cantonal of the Canton Vaud, issued urgent provisional measures forbiddingMr. David Candaux, D. Candaux Sàrl and the Complainant, directly or indirectly, without prior approval of Luxury World LLC, (i) to use, assign, license, commercially exploit or use in any form, manner or denomination, the intellectual property rights in relation to the luxury timepieces “D. Candaux” and “David Candaux”, notably the trademarks and domain names related thereto, and (ii) to design, manufacture, market, promote, sell in any form, manner or designation whatsoever, any luxury timepiece “D. Candaux" and “David Candaux”, the design and/or manufacturing of which is made, directly or indirectly, by Mr. David Candaux, D. Candaux Sàrl and the Complainant.
Thus, Luxury World LLC, acting through the Respondent used the disputed domain name in connection with a bona fide offering goods or services before the Respondent received any notice of the present dispute.
The disputed domain name has neither been registered nor used in bad faith because the website to which the disputed domain name resolves is the official website operated by the Complainant’s exclusive licensee and distributor.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the 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.
The Panel notes that the Complainant is the registered owner of trademark registrations for D. CANDAUX.
The Panel notes that the disputed domain name incorporates the D. CANDAUX trademark in its entirety. The omission of the dot between “D” and “CANDAUX” does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
However, in view of the Panel’s analysis under the second and third elements, the Panel does not make a finding under the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsThe Complainant states it has not authorized the Respondent to use the trademark D. CANDAUX and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, the Respondent has submitted credible evidence that he is the director of the company Contensys Informations GmbH, which manages the disputed domain name as a service domain provider on behalf of his client, Luxury World LLC, which appears to have the exclusive rights and legitimate interests to use the trademark and the disputed domain name under the Agreement.
The Respondent has further shown that on November 29, 2021, Luxury World LLC obtained from the Juge délégué de la Cour civile du Tribunal cantonal of the Canton Vaud, urgent provisional measures prohibiting the Complainant from using, without prior approval of Luxury World LLC, the intellectual property rights in relation to the luxury timepieces “D. Candaux” and “David Candaux”, notably the trademarks and domain names related thereto. This court ordennance supports the fact that Luxury World LLC appears to have exclusive license and distribution rights with regard to the trademark D. CANDAUX and the disputed domain name.
The Panel therefore concludes that Luxury World LLC appears to have rights or legitimate interests in respect of the disputed domain name. The question whether also the Respondent, who acted on behalf of his client Luxury World LLC, has own rights or legitimate interests with respect to the disputed domain name, may be left open also, because in any event the Complainant has failed to establish the third element, as explained below.
C. Registered and Used in Bad FaithThe Respondent has provided evidence that Luxury World LLC appears to have exclusive rights to use the trademark D. CANDAUX and any and all of the intellectual property rights related thereto, including the disputed domain name. The Respondent has further shown that the website to which the disputed domain name resolves is the official website operated by Luxury World LLC which is the Complainant’s exclusive licensee and distributor. The Respondent has further credibly shown that he is the director of the company Contensys Informations GmbH, which registered and manages the disputed domain name as a service domain provider on behalf of his client, Luxury World LLC.
Based on the available record, the Panel concludes that the Complainant has failed to establish the third element of the Policy.
The Panel also notes that this dispute is part of a contractual and trademark dispute that is outside the scope of the Policy.
Therefore, the third element of paragraph 4(a) of the Policy has not been met.
7. DecisionFor the foregoing reasons, the Complaint is denied.
Andrea Mondini
Sole Panelist
Date: July 5, 2022