The Complainant is Patek Philippe S.A. of Switzerland, represented internally.
The Respondent is Domain Admin, Taranga Services Pty Ltd of New Zealand.
The disputed domain name <patekwatch.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 3, 2010. On February 4, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On February 8, 2010, Moniker Online Services, LLC. transmitted by email to the Center its verification response disclosing registrant name for the disputed domain name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on February 9, 2010 providing the correct registrant name and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 11, 2010. The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on February 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 5, 2010.
The Center appointed Antony Gold as the sole panelist in this matter on March 10, 2010. 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.
The Domain Name was registered on April 18, 2006. It resolves to a website which contains links to third party websites. Prior to the institution of these proceedings, on October 15, 2009, the Complainant's representative sent an email to the address stated in the WhoIs report to put the Respondent on notice of its rights in PATEK and to request the transfer of the Domain Name. No reply was received by the Complainant or its representatives.
As evidence of its rights in a trade mark or service mark to which the Domain Name is identical or confusingly similar, the Complainant states that it has used the name PATEK for many years. It has produced a timeline which indicates that Patek, Czapek & Co was founded in 1839 and it produced its first watch in 1844.
The Complainant also relies on its International trade mark registration for PATEK, which has been registered in connection with classes 9 (all apparatus and articles for measuring time) and 14 (all apparatus and articles for measuring time, timepieces and jewellery). The International registration was based on a Swiss trade mark which was registered on March 22, 1958. The International registration has been designated in 18 countries. The Complainant has produced evidence to show that it manufactures and sells a wide range of watches and accessories to an international market.
The Complainant asserts that the Respondent has no rights and legitimate interests in the Domain Name as:
(a) the Respondent is unconnected with the Complainant's business;
(b) the Complainant has not authorised the Respondent to use its brand;
(c) the Respondent has not registered a trade mark for PATEK in New Zealand, the country where the Respondent is based; and
(d) the Respondent is not using the domain name for a legitmate business need. The Complainant says that the Respondent is using a parking service to generate revenue through the sponsored links which are displayed on the parked page.
The Complainant asserts that the Domain Name was registered and is being used in bad faith as:
(i) the Respondent registered the Domain Name without regard to the Complainant's rights in the PATEK mark. It asserts that a search on the Internet would have revealed the Complainant's use of PATEK;
(ii) the Respondent violated the terms and conditions of its contract with its registrar as these prohibited it from registering a domain name which violated a third party's trademark rights;
(iii) the web page to which the Domain Name resolves displays sponsored links which redirect traffic and potential sales to unauthorised retailers or distributors of the Complainant's products;
(iv) the Respondent registered and is using the Domain Name to benefit commercially from the notoriety which the Complainant has built up in PATEK;
(v) the Respondent is aware of its infringing activities because its website contains links to the Complainant's products and the Complainant has put the Respondent on notice of the Complainant's rights in the Domain Name; and
(vi) the Respondent has been a respondent in an earlier UDRP dispute.
The Respondent did not reply to the Complainant's contentions.
Paragraph 14 of the Rules for provides, amongst other matters, that if a party does not comply with a provision of the Rules, the Panel shall draw such inferences as it thinks fit.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
From the screen shots of the Complainant's website annexed to the complaint, it can be seen that the Complainant has been manufacturing watches for about 165 years. The screen shots indicate that the Complainant appears to use the name Patek Philippe on its website rather than the name Patek alone. Although the evidence adduced by the Complainant could have been considerably more detailed in this respect, the Panel is satisfied that the Complainant has rights in the PATEK trademark. Whilst its trading style would appear to be Patek Philippe, the Complainant has an International trade mark registration for PATEK, based on a Swiss registration dating back to 1958 and has a website at “www.patek.com”. Therefore, the Panel is satisfied that the Complainant has proven its trademark rights in PATEK for this requirement of the UDRP to be satisfied.
The Panel is satisfied that the Domain Name is confusingly similar to the Complainant's trade mark for PATEK as the word “watch” is merely descriptive of the principal form of goods sold by the Complainant.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.
There is no evidence to suggest that the Respondent has any rights or legitimate interest in respect of the Domain Name. From the screenshot of the website to which the Domain Name resolves, which is appended to the Complaint, it does not appear that the Respondent trades under the name PATEK (annexes to the Complaint 11a-13). Furthermore, the Respondent is not cited in the lists of the Complainant's retailers or distributors.
In the absence of any indication to the contrary, the Panel accepts the Complainant's prima facie case that the Respondent has no rights or legitimate interests in the Domain Name, which the Respondent has not rebutted. Accordingly the Panel finds the second element of paragraph 4(a) of the Policy has been met.
For this element of a complaint to be met, a Complainant is required to show both that the Domain Name was registered in bad faith and that it is being used in bad faith.
In terms of the registration of the Domain Name, the evidence available shows that, at the time of registration in April 2006, the Complainant had an existing International trade mark registration for PATEK , that it had been manufacturing and offering watches for sale for many years and that it had a international brand which was well known. Whilst the Complainant's primary trading style is Patek Philippe, the name “patekwatches” would appear to be referable solely and specifically to the business of the Complainant. Only the Complainant or a party seeking to associate itself with the Complainant would wish to acquire the Domain Name. The Panel accepts the Complainant's submission that it is likely that the Respondent would have known about the notoriety of the Complainant and its rights in PATEK at the time of registration of the Domain Name and that its registration of the Domain Name was accordingly in bad faith.
The evidence adduced by the Complainant clearly indicates that the Respondent is using the Domain Name for commercial gain. The Respondent's website contains links to third party sites, some of which offer for sale the Complainant's watches and others of which sell third party watches. The Panel accepts that the Respondent is using the Domain Name as a parking service to generate revenue as (for example) the web pages refer to “sponsored listings”. The Respondent is evidently generating revenue through the website. Accordingly, is intentionally attracting for commercial gain, Internet users to its 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 its web; this amounts to evidence of bad faith registration and use of the Domain Name within the meaning of paragraph 4(b)(iv) of the Policy.
On this ground, the Complainant's assertions of bad faith are made out and the Panel accepts that the Domain Name has been registered and is being used in bad faith by the Respondent. For that reason, it is not necessary to consider the other assertions of the Complainant.
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 <patekwatch.com> be transferred to the Complainant.
Dated: February 25, 2009