Complainant is Chopard International SA, Prangins, Switzerland, represented by WITETIC, France.
Respondent is Feng Wang, Yancheng, Jiangsu, China / Whois Privacy Protection Service, Inc., Kirkland Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 23, 2014. On July 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 2014, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on July 28, 2014 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 29, 2014.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 20, 2014.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 4, 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
Complainant is a Swiss company founded in the 19th century, specialized in the luxury watch and jewellery industry.
Complainant owns several registrations for trademark CHOPARD, such as (i) National Colombian registration No. 92 298 443, since February 17, 1989, to cover "watches and part of watches, mechanisms and instruments horological and chronometric; bracelets and watch straps, jewellery, jewellery and previous stones such as rings, bracelets, necklaces, earrings, medallions, cufflinks, key rings, tie clip that are not included in other classes"; (ii) International registration No. 353 878 for CHOPARD Genève since February 2, 1969, claiming goods such as precious metals and objects made of these materials, among other items; (iii) International registration No. 531 145 for CHOPARD, since November 1, 1988, covering spectacles, sunglasses, pens, pencil holders among other items, as well as owning registrations in several countries worldwide such as Algeria, Greece, Ireland, Republic of Korea, Sweden, Singapore, Austria, Germany, Serbia, Viet Nam, China, Morocco, the Russian Federation and Ukraine, as per Annexes 5 and 6 of the Complaint.
Complainant is also the owner of several domain names composed of the term "chopard", as for registered since November 22, 1995, registered since May 6, 1999 and , registered since February 22, 2008, among others, as per Annex 7 of the Complaint.
The disputed domain name was first registered on October 2, 2011 and acquired by Respondent on October 23, 2013. 5. Parties' Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the CHOPARD trademark since it reproduces the term "chopard" in its integrity. Complainant further states that the term "chopard" is the sole and unique element constituting the domain name under dispute, without any adding, and this is sufficient to establish the infringement and risk of confusion in this case.
Moreover, Complainant alleges that it is the owner of several trademark registrations for the CHOPARD trademark worldwide, alone or combined with other elements, as well as of numerous domain names composed of the term "chopard", such as , all registered prior to the disputed domain name.
Complainant also argues that the sign Chopard and Chopard International are trade names registered by Complainant, duly protected by the Swiss law and by Article 8 of the Paris Convention, since at least 1994 (Annex 1 of the Complaint).
Additionally, Complainant holds that Respondent has no rights or legitimate interests in the disputed domain name since it has no prior rights, such as trademarks or corporate/trade name, over the term.
Complainant also claims that Respondent has never used the domain name and could therefore not evoke any kind of legitimate interest. In this sense, Complainant adds that the lack of content in Respondent's website can be construed as the absence of legitimate interests, citing, Blemain Group v. Mr. Stuart Frost, WIPO Cases No. D2006-0871 and Chanel, Inc. v. Estco Technology Group, WIPO No. Case D2000-0413.
Furthermore, Complainant affirms that Respondent is not an authorized reseller of its products. In this sense, Complainant also considers that Respondent must have been aware of Complainant's prior rights to the CHOPARD trademark, taking into account Complainant's renowned reputation.
Complainant states that it sent several emails to Respondent, informing about its prior rights concerning the CHOPARD trademarks, but the attempts to acquire the disputed domain name were unsuccessful, as per Annex 8 of the Complaint.
Complainant also alleges that the sole purpose of Respondent is to "alternatively or cumulatively (i) to drag traffic away or to collect contacts from email's addresses made up with the contested domain name from Complainant and (ii) at least prevent the latter of being the owner of the contested domain name."
Complainant further claims that Respondent has registered and is using the disputed domain name in badfaith since it uses the disputed domain name intentionally to attract or collect information from Internet users for commercial gain, leading to the disruption of the business of Complainant.
Complainant argues that, although the domain name under dispute is not active, it does not mean that it is not being exploited. Complainant argues that the disputed domain name has also "hidden" activities, such as attracting users who erroneously fails to type the letter "m" "of ".com" on "@m", and its email addresses. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The burden of proving these elements is on Complainant. A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for CHOPARD worldwide, prior to the registration of the disputed domain name.
The Panel finds that the disputed domain name is identical to such trademark, considering that a domain name containing a third party's trademark in its integrity is sufficient to cause confusion and create false associations, misguiding consumers into believing that the domain name is directly related to the products and services provided by the trademark owner.
Therefore, the Panel finds that the disputed domain name is identical to Complainant's CHOPARD trademark. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition ("WIPO Overview, 2.0") as follows: "[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant."
In this case Complainant has provided prima facie proof of "no rights or legitimate interests", so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant's prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel acknowledges that Respondent is not an authorized reseller of Complainant's products, and agrees that Respondent must have been aware of Complainant's rights over the CHOPARD trademarks prior to the registration or acquisition of the disputed domain name.
Also, the Panel concurs that Respondent's goal might be to drag traffic away from Complainant's webpage to collect contacts from email addresses from users who are trying to access Complainant's page and end up accessing Respondent's, through the disputed domain name.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name (Policy, Paragraph 4(a)(ii)). C. Registered and Used in Bad Faith
The Panel finds it highly unlikely that Respondent had no knowledge of Complainant's rights to the trademark CHOPARD at the time of registration of the disputed domain name, taking into consideration its notoriety worldwide.
The Panel also notes that the disputed domain name is not being currently used with an online website, which constitutes "passive holding", kind of activity which may also, in certain circumstances, constitute evidence of bad faith use. In this sense, the Panel refers to consensus view of WIPO Overview 2.0:
"3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?"
See also the relevant section in the WIPO Legal Index.
Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
Relevant decisions:
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Transfer Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, inter alia, Transfer Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, TransferWestdev Limited v. Private Data, WIPO Case No. D2007-1903, TransferMalayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. WIPO Overview 2.0 paragraph3.2.
Moreover, regarding Complainant's several attempts to contact Respondent and acquire the disputed domain name and Respondent's actions on such occasions - overcharging for the disputed domain name transfer, asking for USD 11.000,00 – the Panel considers such circumstances to further indicate bad faith, and agrees with Complainant that the requested sum appears to be well over Respondent's out-of-pocket costs related to the disputed domain name registration, as stated in the Policy at 4(b)(i).
In this sense, in previous UDRP case Mapfre S.A. y Fundación Mapfre v. Josep Sitjar,WIPO Case No. D2011-0692 the Panel stated: "As an additional circumstance evidencing bad faith, the Panel finds that also paragraph 4(b)(i) of the Policy is applicable to the present case since Respondent offered for sale the disputed domain name to Complainant for the amount of EUR 25,000, which is well over the out-of-pocket costs directly related to the domain name. See i.e., Wal-Mart Stores, Inc. v. Brad Tauer,WIPO Case No. D2000-1076, where it was found "the amount sought, $475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other "out-of-pocket costs directly related to the domain name." In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith."
Lastly, the Panel also concludes that the fact that Respondent does not operate activities in Colombia, the country in which the country code ".co" is applicable, also configures Respondent's bad faith, considering (i) the similarity with the generic Top Level Domain ("gTLD") ".com", which composes one of Complainant's registered domain names – namely , almost identical to the disputed domain name – was clearly orchestrated to attract Internet users who erroneously mistype the gTLD ".com" to Respondent's website.
Accordingly, the Panel concludes that the disputed domain name was 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 disputed domain name be transferred to Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: September 18, 2014
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