The Complainant is Rolex S.A. of Geneva, Switzerland, represented by Milcev Burbea, Romania.
The Respondent is Andrea Mariotti of Modena, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with ROTLD (the “Registry”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2017. On March 17, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On March 20, 2017, the Registry 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 April 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on May 9, 2017. 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 Swiss company incorporated in 1920. The Complainant manufactures and markets watches under the ROLEX brand, for which the Complainant holds trademark registrations in numerous countries around the world, including the United States, Switzerland and the European Union. As a result of the Complainant’s longstanding use of the ROLEX mark, extensive advertising and promotion, and the reputation of the Complainant’s products for quality, a number of UDRP panels have concluded that ROLEX is a famous mark and has been for some time. See, e.g., Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398. The Complainant also owns more than four thousand domain names incorporating the ROLEX mark, including several such domain names registered with ROTLD. The Complainant markets and sells ROLEX watches in Romania.
The Respondent registered the disputed domain name on January 1, 1996, according to WhoIs information provided by the Registry. There is no indication in the record of the Respondent’s active use of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name incorporates the Complainant’s ROLEX mark and as such is identical to the Complainant’s mark. The Complainant maintains that the Top-Level Domain (“TLD”) should be disregarded when evaluating a domain name for identity or confusing similarity.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that that the Respondent has not been licensed or otherwise authorized to use the Complainant’s ROLEX mark. The Complainant asserts that the Respondent has not been commonly known by the disputed domain name, that the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent has not made a legitimate noncommercial or other fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the Respondent unquestionably had the Complainant’s famous ROLEX mark in mind when registering the disputed domain name, and notes that the Complainant’s ROLEX mark is a coined word with no meaning in either the English or Romanian language. The Complainant submits that the very use of a well-known trademark by a respondent with no connection to the complainant suggests opportunistic bad faith. The Complainant maintains that the Respondent’s passive holding of the disputed domain name constitutes bad faith registration and use of the disputed domain name, relying on Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar if not identical to the Complainant’s ROLEX mark. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the Complainant’s ROLEX mark is clearly recognizable in the disputed domain name. Disregarding the TLD, the disputed domain name is identical to the Complainant’s mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s distinctive and well-known ROLEX mark. Regardless, the Respondent registered the disputed domain name, which incorporates the Complainant’s ROLEX mark in its entirety, and by all indications has been passively holding the disputed domain since its registration.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark 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 trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident to the Panel that the Respondent was aware of the Complainant’s ROLEX mark when registering the disputed domain name. The Complainant’s mark is distinctive and well-known. The Respondent, without the Complainant’s authorization, registered a domain name appropriating the Complainant’s distinctive and well-known ROLEX mark, which the Respondent since then has passively held. The Respondent’s passive holding of the disputed domain name does not support a claim of rights or legitimate interests. See Philip Morris USA Inc. v. private,WIPO Case No. D2005-0790, and Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Nor has the Respondent made any legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. And there is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent undoubtedly was aware of the Complainant’s ROLEX mark when registering the disputed domain name, and the Respondent’s passive holding of the disputed domain does not preclude a finding of bad faith registration and use in the circumstances of this case. Considerations that supported a determination of bad faith in Telstra Corporation Limited v. Nuclear Marshmallows, supra, are present in this case as well. The Complainant’s ROLEX mark is distinctive and well-known, not susceptible to use in a generic sense, and used by the Complainant for some 100 years. There is no evidence of any actual or attempted good faith use of the disputed domain name by the Respondent. Indeed, based on the record in this proceeding, the Panel cannot envision any legitimate or good faith use to which the disputed domain name could be put by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: May 22, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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