The Complainant is Patek Philippe S.A., Switzerland, represented by Samantha Jelin, Switzerland.
The Respondent is General Estates, Brisbane, Queensland, Australia, represented by Philip Churven, Brisbane, Queensland, Australia.
The disputed domain name <patek.biz> is registered with GoDaddy.com, Inc. (the “Registrar”).
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy”), which was adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on August 26, 1999, and approved on October 24, 1999, and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) as approved on October 24, 1999, and the World Intellectual Property Organization (“WIPO”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the “Supplemental Rules”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on August 5, 2008, and with accompanying Annexes 1-18 in hard-copy form on August 6, 2008. An amended version of the Complaint was submitted by email to the Center on August 19, 2008 and in hard-copy form on August 21, 2008. For simplicity, the term “Complaint” shall refer to the amended version unless context specifically indicates otherwise.
Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center as the ICANN approved administrative dispute resolution service provider to administer this proceeding. Through the Complaint, the Complainant requested a single-member panel.
After receiving the original Complaint, the Center, in accordance with paragraph 5 of the Supplemental Rules, verified that the Complaint complied with the formal requirements of the Rules and the Supplemental Rules. In that regard, on August 6, 2008, the Center requested confirmation from the Registrar as to whether the Registrar received a copy of the Complaint from the Complainant and to confirm contact and registrant information set forth in the Complaint for the disputed domain name. The Center also requested the Registrar to specify: (a) whether the Policy applies to the disputed domain name, (b) whether the registrant has submitted, in its registration agreement, to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the name; (c) the language of the registration agreement, and (d) whether the name will remain “locked” during the proceeding.
Subsequently, on August 6, 2008, the Registrar provided its response to the Center through which it specified name and contact information pertinent to the disputed domain name to the extent, as it then existed, in its WhoIs database. Further, the Registrar, through its response, stated that it had not received a copy of the Complaint and that the Respondent was not listed as the registrant for the name. The response also indicated that: (a) the Policy applies to the name, (b) GoDaddy.com is the registrar, (c) the Registrant submitted to the jurisdiction of the courts at the location of the principal office of the Registrar, (d) the registration agreement is in English and (e) the name will remain locked during the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.
On August 22, 2008, the Center formally notified the Respondent of the filing of the Complaint, including an indication that the Center was forwarding a complete copy of the Complaint to that Respondent by email and, together with all its exhibits, by courier. The Complaint and its accompanying documents, and all subsequent communications associated therewith, were provided in the preferred manners and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.
Hence, the notification to the Respondent having occurred on August 22, 2008, under paragraph 4(c) of the Rules, this administrative proceeding is deemed to have commenced on that date.
Having reviewed the Complaint and all the correspondence, including that between the Center and the Registrar, the Panel agrees with the determination of the Center that the Complaint and its handling met the requirements of the Rules and the Supplemental Rules.
The Respondent was then provided with a 20 calendar day period, expiring on September 11, 2008, to file its Response with the Center and the Complainant.
The Response was timely filed on September 11, 2008, with the Center and was acknowledged by the Center through an email letter dated September 12, 2008.
Accordingly, pursuant to the Rules and Supplemental Rules, by email letter dated September 18, 2008, the Center contacted the undersigned, Mr. Peter L. Michaelson, Esq., requesting his service as a Sole Panelist for this dispute. Subsequently, on September 19, 2008, Mr. Michaelson accepted and returned, by email attachment to the Center, a fully executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center, through an email letter dated September 23, 2008, notified the Parties of the appointment of Mr. Michaelson as sole Panelist.
Based on the deadline set forth in paragraph 15 of the Rules, a decision was to be issued by the Panel to the Center on or before October 7, 2008. Owing to unexpected time conflicts issues experienced by the Panel all of which constituted unforeseen circumstances, the Center, at the request of the Panel, subsequently extended this due date to October 22, 2008.
This dispute concerns one domain name, specifically: <patek.biz>.
The language of this proceeding is English.
As indicated in the WhoIs registration record provided in Annex 1 to the Complaint, the disputed domain name was registered on October 2, 2004.
The Complainant owns various international and national trademark registrations for the term PATEK in block letters, and the terms PATEK PHILIPPE also in block letters. In that regard, the Complainant has provided copies, in Annex 3 to the Complaint, of the entry from the WIPO “Madrid Express” database for its international registration and, in Annex 12, of illustratively an entry from a database provided by the Australian trademark office for its Australian registration. Pertinent details of those two registrations are as follows:
1. PATEK (block letters)
International registration no: 208381
Registered: March 22, 1958
This mark is registered for use in connection with “all apparatus and articles for measuring time” in international class 9 and “all apparatus and articles for measuring time, timepieces, jewelry” in international class 14.
2. PATEK PHILIPPE (block letters)
Australian registration no: 259644
Registered: June 26, 1972
This mark is registered for use in connection with “horological instruments including watches and clocks and parts thereof” in international class 14.
The Complainant, Patek Philippe S.A., which is very well-known internationally, sells and intends to continue selling, inter alia, apparatus and articles for measuring time, timepieces and jewelry under its PATEK marks and has done so since at least 1958. The Complainant also provides watch maintenance services under those marks. Since 1845, the Complainant has applied for and obtained approximately 70 patents. A history of the Complainant appears in Annexes 6a-6c to the Complaint.
While the Complainant is engaged in the watch industry, the Respondent, which principally operates in Australia, is concerned with hospitality accommodation and building construction which are completely unrelated to the Complainant's line of business. As such, the Complainant and the Respondent do not compete with each other.
Since October 2004 when the Respondent registered the disputed domain name, it has not used the name to resolve to an operational website. Instead, the name resolves to a parking page, a copy of which appears in Annex 11 to the Complaint, that has been provided and is maintained by the Registrar. This page provides a list of links. The first link redirects Internet users to a website at <finestwatches.com> (a copy of the home page of which appears in Annex 15a to the Complaint) which seems to sell authentic watches originating from the Complainant but is not one of the Complainant's authorized retailers or distributors (a current list of such authorized retailers and distributors appears in Annexes 4a and 4b, to the Complaint respectively). The fifth link on the parking page redirects Internet users to a website at <watchparadise.com> (a copy of the home page of which appears in Annex 16 to the Complaint) which also seems to offer authentic watches from the Complainant for sale through distributor “Wingate's Quality Watches” (see a hard-copy printout of this page in Annex 17a to the Complaint), however this distributor is also not one of the Complainant's authorized retailers or distributors.
The Respondent claimed that, prior to the filing of the Complaint, it had no direct knowledge that links on its parking page resolved to third-party sites selling time-keeping products, let alone those of the Complainant. Consequently, the Respondent, then believing that those links were simply placed on the site by the Registrar, has since instructed the Registrar to eliminate all such links from that page particularly since those links do not relate to or benefit the Respondent.
The Complainant, through its representative, sent the Respondent a letter on December 8, 2006 (a copy of which appears in Annex 8a to the Complaint) notifying the Respondent of the Complainant and its rights in the PATEK marks and demanding transfer of the disputed domain name. Subsequently, the Respondent, through its email letter dated February 12, 2007 to the Complainant (a copy of which appears in Annex 9 to the Complaint), contended that its registration of the name did not infringe the Complainant's rights. Thereafter, on May 4, 2007, the Complainant's representative sent an email message to the Respondent (a copy of that message appears in Annex 10 to the Complaint) through which the Complainant took issue with the Respondent's position.
The Complainant contends that the disputed domain name is identical to the Complainant's PATEK marks.
Specifically, the Complainant alleges that the name, apart from its generic top level domain (here being “.biz”), consists of the term PATEK which is a registered international trademark of the Complainant and has been since 1958.
Hence, the Complainant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
The Complainant contends that, for two basic reasons, the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
First, neither the Respondent nor any person representing the Respondent is known in the watch industry by the Complainant's mark, and specifically its mark PATEK, nor is there any relationship between the Respondent and the Complainant. In that regard, the Respondent did not register its mark PATEK in Australia but did register its mark PATEK PHILIPPE there. However, the Complainant registered its mark “PATEK” in many countries through its international registration. Moreover, the Respondent's company, General Estates Corp., has no evident link to and is not known by either of the names PATEK or PATEK PHILIPPE.
Second, the Respondent does not actively use the disputed domain name inasmuch as the only page to which that name resolves is a parking page which is solely provided and operated by the Registrar.
Lastly, the Complainant contends that, for several reasons, the Respondent registered and is now using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
First, the Complainant alleges that the Respondent registered the name without regard to any possible existing third-party trademark registrations and trademark usage. In that regard, a quick search on the Internet would have led the Respondent to the information indicating that the mark PATEK was already used by the Complainant and has been so used for some 46 years prior to the year (2004) during which the Respondent registered the name. Moreover, the Respondent, when it registered the name, was well aware of the Complainant because its parking page, by virtue of the links therein to unauthorized retailers of the Complainant's watches, redirected Internet traffic and sales away from the Complainant's official sales channels and consequently harmed the Complainant's business.
Second, the parking page provided by the Registrar displays various sponsored links which redirect traffic and potential sales of the Complainant's watches away from the Complainant's authorized retailers or distributors. Specifically, a first link on that page redirects Internet users to <finestwatches.com> which appears to sell authentic PATEK PHILIPPE watches but apparently without authorization to do so from the Complainant. Further, the fifth link on that page redirects Internet users to <watchparadise.com> and which also apparently displays for sale authentic PATEK PHILIPPE watches through Wingate's Quality Watches -- which is also not one of the Complainant's authorized retailers or distributors.
Further, even if the Respondent had no knowledge of the Complainant when the former registered the name in October 2004, the Respondent, having received the Complainant's letter of December 2006, was expressly notified of the Complainant, its trademark rights and the continuing damage then being done to the Complainant through the Respondent's continued use of its registrar-supplied parking page.
While the Respondent concedes that the disputed domain name contains the term PATEK, the Respondent contends that, for various reasons, the name is neither confusingly similar nor identical to a mark in which the Complainant has rights.
First, the Respondent states that the name is <patek.biz> while the Complainant's mark is PATEK PHILIPPE; hence, the two are not identical. Further, while the term PATEK alone, at best, may indicate an association to the Complainant, the term PHILIPPE in the Complainant's mark PATEK PHILIPPE is a stronger element than is the term PATEK, and its inclusion clearly distinguishes that mark from word PATEK taken alone and hence also from the name.
Second, the Respondent contends that the word PATEK is well-known as being associated with either a baseball player named “Freddie Patek” and/or a material designer named “Jan Patek”, depending upon a geographical location of the reader and the context in which the word appears. As such, the word “Patek” is not sufficiently or solely associated with the Complainant so that confusion will invariably arise between that word and the Complainant's mark PATEK PHILIPPE.
The Respondent, contrary to the Complainant's position, argues that it does possess rights or legitimate interests in the name.
Specifically, the Respondent alleges the Complainant's registration of its composite mark, PATEK PHILIPPE, does not automatically convey to the Complainant the right to exclude others from using a domain name that only contains a single word from that mark and for any purpose that “does not breach the laws in regard to any trademark”.
Also, contrary to the Complainant's position, the Respondent argues that, for any of several reasons, it has neither registered nor used the disputed domain name in bad faith.
First, the Respondent states that it has never sought nor ever intended to seek any payment or other form of compensation from the Complainant for any matter associated with the name.
Second, the Respondent has not taken any steps to operate a website in conjunction with the name. Moreover, when it does so, the Respondent, being in a totally different line of business from that of the Complainant, will not operate a site that will infringe any of the Complainant's rights in its marks. In that regard, the Respondent contends that not only does it operate principally in Australia where the Complainant's products do not have a high or well-known profile, but also and of greater weight is that its business is completely unrelated to that of the Complainant.
Third, the Respondent, having been informed by the Complainant of the links on the Respondent's parking page to third-party sites related to time-keeping products, has instructed the Registrar to eliminate all such links from that page.
The Panel finds that the disputed domain name is identical to the Complainant's mark PATEK.
Just from a simple comparison of the disputed domain name and the mark PATEK, no doubt exists that the disputed domain name is, for all practical purposes, identical to that mark. The only difference between the name and the mark is the appending of the gTLD “.biz” to the mark to form the name, with that difference being totally irrelevant in assessing confusing similarity or identity under paragraph 4(a)(i) of the Policy and thus ignored. See, e.g., Pernod Ricard v. Tucows.com Co., WIPO Case No. D2008-0789 (August 21, 2008).
Moreover, though the Complainant did not register its mark PATEK in Australia, it did so in a variety of other countries through its international registration. Inasmuch as the domain name system and the Internet in general effectively know no national or regional boundaries, it is well within reason to contemplate that given the worldwide recognition that the Complainant has attained through the use of its mark since 1958, an Internet user in one of the countries covered by the Complainant's international registration may well seek to visit the Complainant's website but inadvertently enter the disputed domain name into his(her) browser. Rather than reaching the Complainant's website, that user will be directed to the Respondent's site instead. It is that user, among others, whom the Policy seeks to protect from being confused as a result of sufficient similarities between the disputed domain name and the Complainant's marks. Therefore, the Panel will not myopically look solely at the Complainant's activities in the Respondent's country, here being Australia, and assess the impact of the those activities on the Complainant and its registered mark there when, in fact, the potential for confusion reaches far broader and into any country in which the Complainant has exclusive rights by virtue of its registrations.
In that regard, see, Channel 5 Broadcasting Limited v. PT Pancawana Indonesia, NAF Case No. FA 98415 (October 3, 2001) which involved a dispute where a complainant, seeking transfer of a disputed name, has a registered UK trademark (for the mark “channel5”) but the respondent incorporated that mark into the name (<channel5.com>) which was principally used in Indonesia. The respondent argued, much as does the present Respondent, that the complainant's trademark rights were only confined to the country of its registration, there being the UK, and in the present case excluding Australia, and thus do not affect a respondent's right to use a domain name, which incorporates the mark, in another country. The panel there, which included the present panelist here, recognized the international nature of the Internet and hence the need to consider and ameliorate confusion that might arise in countries other than where the domain name would principally be used, by stating:
“While there is no doubt that a national trademark registration is national in scope, i.e., limited to the borders of the country that issued it, the Respondent has ignored the simple fact that the Internet is international in scope with ready access across national boundaries. Internet users in nearly any country can access web sites situated in nearly any other country. As far as the Internet is concerned, national boundaries are meaningless and utterly porous. As such, an Indonesian organization that registers a domain name primarily for use in Indonesia can and will attract Internet users to its site from other countries, even if those users reach that site through inadvertence. There is currently no mechanism, to this Panel's knowledge, used in the Internet that limits access to any Internet user to just those web sites existing within the country of residence of that user, and to none elsewhere. In fact, one of the primary benefits of the Internet is the ready access the Internet provides, through a few mouse clicks, to any user to reach any web site anywhere in the world and obtain information therefrom and/or provide information thereto.”
As such those Internet users in the UK, who seek to visit the Complainant's site, by entering “channel5.com”, would in fact be directed to the Respondent's site, half-way around the globe, and hence be confused as to the source of the site. It is just this confusion that the UDRP is directed and which the UDRP seeks to ameliorate. Hence, the Panel views that a trademark, in the context of its use within a domain name, does enjoy a measure of extra-territorial application if only to prevent confusion from arising within the country that issued a corresponding trademark registration or, in the case of an unregistered mark, recognizes attendant exclusive rights in that mark predicated on use.
Therefore, the Panel finds that the disputed domain name <patek.biz> is, for all practical purposes, identical to the Complainant's PATEK marks as to cause confusion; hence, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
Based on the evidence of record here, the Panel finds that little basis exists which, under the circumstances here, would legitimize a claim to the disputed domain name under paragraph 4(c) of the Policy.
As the Panel discussed above, although the Complainant does not possess an Australian trademark registration for its mark PATEK but possesses an international registration for that mark which encompasses other countries, given the global characteristics of the Internet, the potential for confusion may well arise in any of the various countries encompassed by the latter. As such, the Panel sees the need not only to recognize this potential but to prevent its occurrence and its adverse effects and concomitant injury to the Complainant.
Consequently, in any of the countries to which the Complainant's international registration extends, the Complainant has apparently never authorized the Respondent to utilize any of its PATEK marks or any mark confusingly similar thereto in conjunction with the goods with which the Complainant uses and registered that mark or for similar goods; nor does the Complainant apparently have any relationship or association whatsoever with the Respondent. As such, any commercial use, in any of those countries, to which the Respondent were to put any of the PATEK marks or one confusingly similar thereto in connection with the identical or even similar goods to those currently provided by the Complainant and as recited in its trademark registrations would violate the exclusive trademark rights now residing with the Complainant and in that country. See, e.g., Pernod Ricard, cited supra; Dreamworks Animation, LLC v. Creahq, Mike Furlong, WIPO Case No. D2008-0505 (May 28, 2008); MySpace, Inc. v. Edwin De Jesus, EDJ Associates Inc., WIPO Case No. D2007-1878 (March 12, 2008); Blackrock, Inc. v. blackrockfinancialservices.com, WIPO Case No. D2007-1627 (January 4, 2008); F.Hoffmann-La Roche AG v. Transliner Consultants, WIPO Case No. D2007-1359 (November 14, 2007); National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064 (September 24, 2007); Toilets.com, Inc. v. Rons Porta Johns, WIPO Case No. D2007-0952 (August 27, 2007); and Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334 (June 28, 2007); GoDaddy.com, Inc., v. GoDaddysDomain.com, Clark Signs, Graham Clark, WIPO Case No. D2007-0303 (May 7, 2007); Citgo Petroleum Corporation v. Richard Antinore, WIPO Case No. D2006-1576 (March 14, 2007); New Destiny Internet Group, LLC and Xplor Media, Inc. v. SouthNetworks, WIPO Case No. D2005-0884 (October 14, 2005); The Cheesecake Factory Inc. and The Cheesecake Factory Assets Co., LLC v. Say Cheesecake, WIPO Case No. D2005-0766 (September 12, 2005), Napster, Inc. v. Giovanni Vinscani, WIPO Case No. D2005-0531 (July 19, 2005), and Caesars Entertainment, Inc. v. Nova Internet Inc., WIPO Case No. D2005-0411 (June 22, 2005); Pelmorex Communications Inc. v. weathernetwork, WIPO Case No. D2004-0898 (December 28, 2004); Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360 (June 24, 2004); Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615 (September 30, 2003); Leiner Health Services Corp. v. ESJ Nutritional Products, NAF Case No. FA 173362 (September 16, 2003); AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605 (September 11, 2002); MPL Communications, Limited et al v. 1WebAddress.com, NAF Case No. FA 97092 (June 4, 2001); Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA 95856 (December 18, 2000); and America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000). Consequently, the Respondent could not legally acquire any public association between it and the mark PATEK or one similar thereto, at least for the goods rendered by the Complainant or listed in any of its trademark registrations in any such country, or, broadly speaking, any good likely perceived by its users to be so similar and/or to emanate from or be related, in any fashion, to those then and there offered by the Complainant. To that end, while the Respondent states that it operates in a business non-competitive with the Complainant, there is no evidence of record that the Respondent has ever been commonly known by the disputed domain name or more generally the name PATEK.
Hence, based on the evidence before the Panel, the Respondent does not fall within paragraph 4(c)(ii) of the Policy.
Furthermore, since the inclusion of links on the Respondent's website to third-party retailers or distributors of the Complainant's watches likely generates click-through revenue or other financial benefit though the record fails to indicate whether that revenue and/or benefit flows to just the Registrar, the Respondent or both, that use is clearly commercial. However, since any resulting sales of those watches through that website emanate from parties which have not been authorized by the Complainant to sell or distribute its watches, that use, under the facts of this case, is not bona fide, and thus not encompassed within paragraph 4(c)(i) of the Policy. Moreover, that use does not qualify as non-commercial or fair use and thus does not fall within paragraph 4(c)(iii) of the Policy either.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) and 4(c) of the Policy.
The Panel finds that the Respondent's actions, with respect to the disputed domain name, constitutes bad faith registration and use.
The Respondent apparently argues that inasmuch as the Registrar, not the Respondent, posted the parking page and solely chose the links displayed thereon some of which pointed to unauthorized resellers or distributors of the Complainant's watches, then the Respondent is not liable for that conduct. This view is misguided.
The Respondent's position, if carried to its logical extreme, would mean that in situations where a domain name, which incorporates a mark owned by a complainant, resolves to a parking page maintained and operated by a registrar, then that respondent could escape liability under the Policy by for example simply having the registrar select and provide the site content. Such an outcome would eviscerate protection accorded trademark owners under the Policy. A sound approach is to place liability squarely on the Respondent for such actions taken by the Registrar, effectively acting here as the Respondent's agent, inasmuch as the Respondent, being the registrant, continuously exerts control over the use of the domain name and by doing so can not only instruct the Registrar to cease use of any parking page or objectionable links thereon but also and even more importantly change a corresponding DNS (domain name system) record maintained by the Registrar such that the name resolves to a different page or even an operative website such that the Respondent's ensuing activities would not run counter to the Policy. See e.g., Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.
While the record here indicates that the Respondent instructed the Registrar to remove the objectionable links, those instructions occurred only after the Complaint was filed and hence were simply too late to be of any valid effect here.
The record is remiss of any proof, let alone credible, that the Respondent, from at any time since the date the name was registered to the date the Complaint was filed, ever objected to the parking page posed by the Registrar or the content, including the objectionable links, which the Registrar placed thereon. Consequently, the Respondent having provided its consent, through at least its acquiescence, to the Registrar's actions, is responsible for the website which the Registrar established, the content it placed thereon, and the adverse effects caused thereby.
The Panel views that these links were selected or generated for their potential to cause inevitable user confusion and subsequently and opportunistically exploit that confusion by diverting sales away from the Complainant's authorized retailers and distributors to third-parties associated with those links. Whether the links were generated by the Registrar or some other party, the arrangement is to someone's (quite possibly including the Respondent) ultimate financial benefit.
Thus, the Panel concludes that the Complainant has provided sufficient proof of its allegations, with respect to the disputed domain name, to establish a case under paragraph 4(a) of the Policy upon which the relief it now seeks can be granted.
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the relief sought by the Complainant.
The disputed domain name, <patek.biz>, is ordered transferred to the Complainant.
Peter L. Michaelson
Dated: October 22, 2008