WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolex Watch U.S.A., Inc. v. Vadim Krivitsky
Case No. D2008-0396
1. The Parties
The Complainant is Rolex Watch U.S.A., Inc., New York, New York, United States of America, represented by Gibney, Anthony & Flaherty, LLP, United States of America.
The Respondent is Vadim Krivitsky, Philadelphia, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name <rolexdealer.com> is registered with Register.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2008. On March 13, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On March 18, 2008, 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”), 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 the Respondent of the Complaint, and the proceedings commenced on March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2008.
The Center appointed W. Scott Blackmer, Gérald Page and William F. Hamilton as panelists in this matter on April 29, 2008. The Panel finds that it was properly constituted. Each member of 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 New York corporation, states that it is the exclusive distributor in the United States of Rolex watches, watch bracelets, and related products produced by its Swiss parent corporation, Rolex S.A., which operates a website at “www.rolex.com”.
The Complainant owns federal trademark registrations in the United States of America for the ROLEX trademark, including Registrations Nos. 101819 (registered January 12, 1915) and 1753843 (registered February 23, 1993).
The ROLEX mark has been used in commerce continuously since 1905, and in the United States since 1912. The Complaint and the website of the Complainant’s parent corporation indicate that there are thousands of authorized Rolex dealers and jewelers certified to service Rolex watches throughout the world, sales of Rolex watches in the United States of America amount to hundreds of millions of dollars annually, and the ROLEX mark appears in extensive advertising as well as sponsorships of sports events and charities. The ROLEX mark has been characterized as famous in judicial and UDRP proceedings. See, e.g., American Rolex Watch Corp. and Montres Rolex, S.A. v. Ricoh Time Corp., 491 F.2d 877 (USCA 2d Cir. 1974); Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398.
The Domain Name was registered on July 31, 1999. The website to which it resolves allows website visitors to send an email to the Respondent at <[….]@aol.com>, but the website does not otherwise identify the Respondent or his business, and he has not submitted a Response in this proceeding.
The website is headed with the phrase, “under construction”. It displays pop-up advertising from the DoubleClick Internet advertising network, as well as links labeled “we buy sterling”, “antiques, coins”, and “watches”. A website visitor selecting the “watches” link is taken to a web page at “www.silverbuyerinc.com”, which in turn displays links for categories including “Rolex Watches”. This link leads to websites displaying third-party advertising links for Rolex and other watches, including those offered by Swiss competitors such as Omega and distributors of relatively inexpensive replica or counterfeit “Rolex” watches.
The Internet Archive “Wayback Machine” at “http://web.archive.org” includes no archived pages for a website associated with the Domain Name until 2001, when the website appeared substantially as it does now.
According to the Complaint, the Complainant became aware of the Domain Name in December 2000; its legal counsel sent the Respondent a cease-and-desist letter in March 2001, to which there was no response. Counsel for the Complainant sent three more cease-and-desist letters in 2005, which are attached to the Complaint, without response. The Complaint states that counsel contacted the Respondent by telephone in November 2005 and that the Respondent said in this conversation that he had no intention of using the Domain Name but also refused to transfer it to the Complainant.
This Complaint followed, more than two years later, without further communications between the Complainant and the Respondent.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to the ROLEX mark, which it incorporates in its entirety. The Complainant asserts that the Respondent is not an authorized dealer in Rolex products and has no rights or legitimate interests in the Domain Name.
The Complainant argues that the ROLEX mark is famous worldwide and must have been known to the Respondent when he registered the Domain Name. The Complainant concludes that the passive use and advertising use of the Domain Name, along with the Respondent’s failure to respond to complaints of trademark infringement, indicate the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Panel notes, as a preliminary matter, that the substantial time that has passed since the original registration of the Domain Name is no impediment to proceeding to the merits of the claim. Generally, laches is not available as a defense to a proceeding under the Policy. The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); Tax Analysts, Inc. v. eCorp, WIPO Case No. D2007-0040. Moreover, the Respondent has been on notice since March 2001 of the Complainant’s contentions, and the website has not changed since then. Thus, even if the doctrine of laches were applicable, the Respondent could not demonstrate any prejudice caused by the “delay.” The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616.
A. Identical or Confusingly Similar
The Complainant indisputably has rights in the registered ROLEX trademark. The Domain Name incorporates the mark in its entirety and adds the generic word “dealer”. This addition does not suffice to distinguish the Domain Name from the ROLEX mark, particularly as it is undisputed that Rolex products are, in fact, distributed by authorized dealers worldwide. Thus, the addition of the word “dealer” serves to increase rather than decrease the likelihood of confusion.
The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s ROLEX mark.
B. Rights or Legitimate Interests
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is undisputed that the Complainant has not authorized the Respondent to use the ROLEX mark. There is no evidence in the record that the Respondent has been known by a name corresponding to the Domain Name or has used the Domain Name for legitimate noncommercial purposes. The Respondent has not come forward with evidence of preparations to use the Domain Name in connection with a legitimate business enterprise, and it appears that the website associated with the Domain Name has been “under construction” since it was registered nearly nine years ago.
The use of the Domain Name for third-party advertising in the interim cannot be considered a use in connection with a “bona fide offering of goods or services”, where the Domain Name incorporates a well-known and distinctive trademark (not, for example, a dictionary word or descriptive phrase) and the website links to advertising for products that compete with the Complainant’s. Moreover, the Respondent is not making legitimate use of the ROLEX mark in the Domain Name on behalf of authorized or unauthorized dealers in Rolex products, since the website associated with the Domain Name leads visitors to advertising for different and even competing products. See, e.g., Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Panel finds, therefore, that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(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 Domain Name is used for commercial advertising, much of it for watches and jewelry. Given the fame of Rolex watches in the United States (where the Respondent is located) and elsewhere, and the distinctiveness of the ROLEX mark, the most probable explanation for the registration and subsequent advertising use of the Domain Name is precisely an intention to mislead Internet users seeking a Rolex dealer and present them with (presumably paid) advertising for other products, consonant with the illustration of bad faith in paragraph 4(b)(iv).
Even if the advertising links served up to visitors on the website associated with the Domain Name are automated, the Respondent remains responsible for the uses to which the Domain Name is put. Paragraph 2 of the Policy, “Your Representations,” is repeated in the Registrar’s registration agreement:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
Finally, the Respondent’s failure to respond to repeated communications from the Complainant, or to the Complaint itself, also supports an inference of bad-faith disregard for the trademark rights of others.
The Panel concludes that the Complainant has established the third element of the Complaint.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <rolexdealer.com> be transferred to the Complainant.
W. Scott Blackmer
William F. Hamilton
Dated: May 13, 2008