ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Cartier International AG v. Jiajia Liu Case No. D2024-4033 1. The Parties The Complainant is Cartier International AG, Switzerland, represented by Corsearch, United States of America (“United States”). The Respondent is Jiajia Liu, Hong Kong, China. 2. The Domain Name and Registrar The disputed domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2024. On October 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Whois Privacy Protection Foundation) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 13, 2024. 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 the Respondent of the Complaint, and the proceedings commenced on October 14, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2024.
page 2 The Center appointed Dawn Osborne as the sole panelist in this matter on November 7, 2024. 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 company incorporated in Switzerland, founded in 1847 in Paris, renowned across the world for its jewelry and watches, perfumes and prestige accessories. It operates 273 boutiques in 125 countries across six continents worldwide. It is a wholly owned subsidiary of the Swiss Richemont Group. Forbes ranked Cartier on its Most Valuable Brands, with a brand value of USD12.2 billion and revenue of USD6.2 billion in the year of 2020. Cartier is one of the top 10 brands in the Luxury & Premium 2024 Ranking. The Complainant is the owner of the CARTIER trademark including: Registrations in the United States with United States Patent and Trademark Office (“USPTO”) and in other jurisdictions: - USPTO Reg. No. 411975 for the CARTIER stylized mark in Classes 14, registered on February 13, 1945. - USPTO Reg. No. 897507 for the CARTIER word mark in Classes 37 and 42, registered on August 25, 1970. - USPTO Reg. No. 4178047 for the CARTIER stylized mark in Class 14, registered on July 24, 2012. - International Reg. No. 307293 for the CARTIER design mark in Classes 2, 9, 14, 16, 18, 20, 21, and 34, registered on January 4, 1966. - International Reg. No. 1521953 for the CARTIER design mark in Classes 9 and 42, registered on November 20, 2019. Registrations in CHINA with China National Intellectual Property Administration (“CNIPA”): - CNIPA Reg. No. 202386 for the CARTIER stylized mark in Class 14, registered on December 15, 1983. - CNIPA Reg. No. 7155424 for the CARTIER stylized mark in Class 14, registered on July 13, 2010. The disputed domain name registered on April 18, 2023 and has been used to offer counterfeit versions of the Complainant’s products, as the website at the disputed domain name offers “Cartier Replica Watches”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: The disputed domain name is confusingly similar to the CARTIER trademark. Mere addition of the dictionary words “top” and “watches” does not avoid confusing similarity between the Complainant’s trademark and the disputed domain name. The Respondent lacks any rights or legitimate interests in the disputed domain name, is not authorised by the Complainant and is not commonly known by the disputed domain name. No rights or legitimate interests can exist for the sale of counterfeit goods. This is not bona fide use, fair use or noncommercial use.
page 3 The disputed domain name was registered and is being used in bad faith. The Respondent offers counterfeit goods under the Complainant’s trademark. Incomplete contact information has been given, which also indicates bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “top” and “watches” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
page 4 Panels have held that the use of a domain name for illegal activity here sale of counterfeit goods can never confer rights or legitimate interests on a respondent. This is true irrespective of any disclosure on the related website that such infringing goods are “replicas” or “reproductions”. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has used the disputed domain name to offer counterfeit versions of the Complainant’s products. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity here sale of counterfeit goods constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established 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. /Dawn Osborne/ Dawn Osborne Sole Panelist Date: November 13, 2024
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