The Complainant is Cartier International A. G. of Steinhausen, Switzerland, represented by Gilbert & Tobin Lawyers, Australia.
The Respondent is Blogger Pty Ltd, Publishing Australia of West Chatswood, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with N (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2013. On November 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2013, 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.
The Center appointed Ross Wilson as the sole panelist in this matter on January 8, 2014. 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, a company incorporated in Switzerland in 1847, is a well-known luxury jeweler and watch manufacturer which markets its wide range of watches, jewelry, leather goods, eyewear and other accessories under a variety of collection sets including its Panthere de Cartier, Santos de Cartier and Marcello de Cartier collections. In addition to about 300 boutiques in 125 countries the Complainant distribution channels include Neiman Marcus, Saks Fifth Avenue and Harrods.
The Complainant advertises within the industry and the public, in a variety of media including in magazines and online. It operates a website featuring an online store. In Australia the Complainant has invested in advertising in prominent online and hardcopy publications including Vogue, Harper’s Bazaar, Elle, Rush, The Sydney Magazine and Departures.
The Complainant has registered numerous trademarks; the earliest is a 1946 international registration. Its Australian registered trademark dates from February 1981.
The Respondent registered the disputed domain name on April 2, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed trademark is confusingly similar to its trademark because it fully incorporates the mark CARTIER. Also, according to the Complainant the Respondent lacks rights or legitimate interests in the disputed domain name because it has never been known by the Complainant’s mark and has not registered any business name incorporating the mark. The Complainant considers that the Respondent is using the disputed domain name as a pay-per-click website with advertising links to websites that offer products for sale that complete directly the Complainant’s products and/or which may be counterfeit “knockoffs’ of the Complainant’s own products.
The Complainant states that it has not granted the Respondent any license, permission or authorisation by which it could own or use any domain name registrations. Finally, the Complainant contends that the Respondent registered and used the disputed domain name to trade off the reputation and goodwill of the Complainant through a website offering for sale products of the Complainant’s competitors and resolving to a website that offers advertising links for products in competition with those offered by under the Complainant’s marks. B. Respondent
The Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(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 or subsequently used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant’s trademark in its entirety together with the generic Top-Level Domain (“gTLD”) extension “.com” and the country-code Top-Level Domain (“ccTLD”) extension “.au”. It has been held in many previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro,WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). With respect to the gTLD extension “.com” and the ccTLD extension, the general rule is that they can be disregarded when considering whether a trade mark is identical or confusingly similar to a domain name.
The Panel finds that the Complainant’s trademark is readily recognisable within the disputed domain name. Therefore, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the domain name; or
- is making legitimate noncommercial or fair use of the domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to use a disputed domain name confusingly similar to the Complainant’s mark in its entirety without authorization from the Complainant. Based on the evidence provided by the Complainant, the disputed domain name was intended to divert Internet user traffic to the Respondent’s website by offering of sale the Complainant’s products and by providing pay-per-click links to websites of the Complainant’s competitors. The Panel considers no rights or legitimate interests derive from such use of the disputed domain name which is confusingly similar to the Complainant’s mark.
The Complainant has denied granting the Respondent any license, permission or authorisation by which it could own or use any domain name registrations which are confusingly similar to the CARTIER mark. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”.
The Panel considers the Respondent lacks rights or legitimate interests in the disputed domain name. See Areva v. Domains by Proxy, Inc./ Sheng Xiang,WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the domain name, it must have known that it was a trademark of the complainant and deliberately registered the domain name precisely because it would be recognized as such. As stated by the panel in Hertz System, Inc. v. D/Compsys Domain Solutions Private Limited,WIPO Case No. D2009-0615 “[m]anifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant”.
Despite the opportunity provided through this administrative proceeding, the Respondent has chosen not to rebut the Complainant’s prima facie case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered or Subsequently Used in Bad Faith
For the purposes of determining if there was bad faith registration or use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration or use of the disputed domain name in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The Complainant states that the disputed domain name was registered with actual or constructive knowledge of the Complainant’s rights in the trademark CARTIER. The Complainant points out that using that knowledge the Respondent sought to appropriate the reputation and goodwill of the Complainant by registering a confusing similar domain name for the purposes of pay-per-click financial gain.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. In the Panel’s view, the Respondent’s registration of the disputed domain name represents a deliberate disregard of the Complainant’s rights. In this Panel’s assessment, the Respondent clearly knew of the Complainant’s mark at the time of registration because the Complainant’s mark is used in its entirety in the disputed domain name. As stated by the panel in Oakley, Inc. v. Joel Wong/BlueH- INC,WIPO Case No. D2010-0100 “It is therefore inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant’s rights”. Also, as expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, where the selection in that case of the domain names is so obviously connected to the complainant’s trademark, their very use by someone with no connection with the company suggests opportunistic bad faith.
The Panel considers the Respondent’s use of the disputed domain name to divert Internet user traffic to the Respondent’s website by providing pay-per-click links to websites of the Complainant’s competitors clearly represents bad faith. Overall the Panel finds it most likely that the disputed domain name was registered and used by the Respondent in an intentional attempt to benefit from the reputation and goodwill of the Complainant’s mark for financial gain.
Noting that the Respondent has not rebutted any of the Complainant’s contentions and has no demonstrable rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith. 7. Decision
For all 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.
Ross Wilson
Sole Panelist
Date: January 22, 2014
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