WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Turlen Holding SA v. Pemuda Liong Wi Potuan, Gurita.biz/WhoisGuard Protected
Case No. D2008-0908
1. The Parties
The Complainant is Turlen Holding SA, of Delémont, Switzerland, represented by Etude de Mes. Lucien, Marie et Nathalie Tissot, Switzerland.
The Respondent is Pemuda Liong Wi Potuan, Gurita.biz/WhoisGuard Protected, of Asahan, Indonesia.
2. The Domain Names and Registrar
The disputed domain names <richard-mille.net> and <richardmille.net> are registered with eNom.
3. Procedural History
The Complaint (relating to the domain name <richardmille.net>) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2008. On June 17, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name. On June 17, 2008, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <richardmille.net> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2008 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 June 24, 2008,also adding the domain name <richard-mille.net> to the Complaint.
On June 24, 2008, eNom confirmed that the Respondent was also the registrant of the disputed domain name <richard-mille.net>. The Center verified that the amended 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 June 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2008.
The Center appointed Angela Fox as the sole panelist in this matter on August 4, 2008. 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 an internationally known luxury watch manufacturer based in Switzerland. The company was founded in 2001 by Richard Mille, an innovative French timepiece designer working in the industry since 1974.
The Complainant makes and sells its watches under the brand name RICHARD MILLE. It is the proprietor of trademark registrations for RICHARD MILLE in respect of horological instruments in numerous countries around the world, as evidenced by print-outs and copies of registration certificates attached to the Complaint
The disputed domain name <richard-mille.net> was registered on March 11, 2006 and the disputed domain name <richardmille.net> was registered on February 27, 2006.
In March 2008, the Complainant discovered that the domain name <richardmille.net> was being used to redirect visitors to “www.pulsaponsel.com”, a website of an Indonesian company offering mobile phones for sale. Following a cease and desist notice sent by the Complainant that month, both domain names began to route Internet visitors to another website, “www.watch-line.com”, where numerous branded watches were offered for sale. The watches offered through that site included the Complainant's Richard Mille watches but were predominantly those of the Complainant's competitors.
Although the proprietor of the <watch-line.com> domain name is unknown because it is WhoIs Guard Protected, it seems likely that it is the same as, or related to, the holder of <pulsaponsel.com>, as both websites featured similar contact email addresses, namely “firstname.lastname@example.org” (for “www.pulsaponsel.com”) and “email@example.com” (for “www.watch-line.com”).
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to its registered and internationally known trademark RICHARD MILLE.
It further submits that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent's use of them to direct Internet users to a website offering predominantly watches of the Complainant's competitors is not a bona fide offering of goods.
Finally, the Complainant avers that the Respondent registered and is using the disputed domain names in bad faith, with the intention to attract web users, for commercial gain, by creating a likelihood of confusion with the Complainant's internationally known RICHARD MILLE trademark.
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations around the world for RICHARD MILLE.
The disputed domain names contain the whole of the Complainant's registered trademark, and the non-distinctive hyphen and domain name suffix “.net” do nothing to distinguish the domain names from the Complainant's mark. Indeed, the effect of the hyphen in <richard-mille.net> is to emphasize the identity of the domain name and the trademark by highlighting the fact that the element “richard-mille” should be read as two words.
The Panel is satisfied that the disputed domain names are identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use the disputed domain names, nor has the Respondent made any effort to prove a right or legitimate interest in them.
The Panel may nonetheless find such a right or interest if there is evidence that, before notice of the dispute, the Respondent was using or making demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
In this case, before notice of the dispute the Respondent was indeed using at least one of the disputed domain names, <richardmille.net>, to link to a website offering mobile phones. It is likely that the Respondent was profiting in some way from this arrangement. However, it is not clear that the Respondent was itself offering any goods or services using the disputed domain name <richardmille.net> as opposed to simply linking it to a third-party website, and the Respondent has made no attempt to argue that it was in fact itself offering goods through either disputed domain name.
Following notice of the dispute, the Respondent appears to have re-routed both disputed domain names to a different, apparently unrelated website that offered for sale watches including the Complainant's RICHARD MILLE watches, but predominantly watches of the Complainant's competitors.
The Respondent's re-routing of both disputed domain names following notice of the dispute strongly suggests that the Respondent was not acting in good faith when previously linking the disputed domain name <richardmille.net> to a mobile phone website. If the Respondent had indeed been making a bona fide offering of goods through that domain name prior to notice of the dispute, then its reaction to the Complainant's cease and desist notice is inexplicable. Re-routing both disputed domain names to a website offering entirely different goods to those previously offered, including predominantly those of the Complainant's competitors, is not the sort of reaction one would expect of a respondent who had been making a bona fide commercial use of a domain name. Indeed, it seems quite the opposite, being to all appearances calculated to mislead Internet users into accessing a website that appears to be that of, or related to, the Complainant, but which instead offers predominantly products of the Complainant's competitors. The Respondent has made no attempt to argue that this was not in fact the case.
In line with similar approaches taken by other panelists (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005, Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946, and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2008-0149), in the circumstances of this case the Panel finds that the Respondent was not using either of the disputed domain names in connection with a bona fide offering of goods prior to notice of the dispute within the meaning of paragraph 4(c)(i) of the Policy.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include paragraph 4(b)(iv):
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
In this case, the Respondent has clearly used the disputed domain names in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the linked website and the products advertised and sold through it.
Following notice of the dispute, the Respondent redirected both disputed domain names to a website offering predominantly goods of the Complainant's competitors. In so doing, the Respondent was making an apparently conscious effort to lure Internet users to a site offering products that competed with those of the Complainant, by using domain names that were inherently likely to confuse Internet users into believing they were entering a site that was in some way related to the Complainant or its products. The Respondent has made no attempt to rebut the Complainant's assertion that the Respondent was profiting commercially from this arrangement, and the Panel finds that, on balance, the Respondent was likely to have been acting for commercial gain. Indeed, it is easy to see how a website operator selling watches and those referring Internet users to its site might benefit from Internet traffic brought in by the use of domain names identical to an internationally famous luxury watch brand such as that of the Complainant.
Such conduct has supported findings of bad faith registration and use under paragraph 4(b)(iv) in other cases, including Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 and F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005. The Panel considers that the Complainant has made out its case for bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel is satisfied that the Respondent registered and has used the disputed domain names in bad faith.
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 names, <richard-mille.net> and <richardmille.net>, be transferred to the Complainant .
Dated: August 18, 2008