WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Patek Philippe S.A. v. Jacob Pratama / Domains by Proxy, Inc.
Case No. D2010-0942
1. The Parties
Complainant is Patek Philippe S.A. of Plan-les-Ouates, Switzerland, represented by IC Agency, Switzerland.
Respondent is Jacob Pratama of Jawa Barat, Indonesia / Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pateknautilus.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2010. On June 9, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 11, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 11, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 22, 2010. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2010.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 8, 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.
4. Factual Background
Complainant owns numerous registrations for the terms “Patek” ,“Patek Phillippe” ,“Nautilus,” and variants thereof. For example, Complainant owns International Trademark Registration Number 426500 dated November 17, 1976 (PATEK PHILLIPE NAUTILUS), International Trademark Registration Number 208381 dated March 22, 1958 (PATEK), and United States Trademark Registration Number 1173140 dated October 13, 1981 (NAUTILUS).
The disputed domain name was registered February 13, 2010. The website to which the disputed domain name routes is presently inactive but in the recent past displayed photographs of Complainant’s wristwatch products, with prices, offering the wristwatches for sale. The website also displayed a search function with links to Complainant’s competitors.
5. Parties’ Contentions
Complainant alleges the following:
i. Identity or Confusing Similarity
Complainant contends that the disputed domain name <pateknautilus.com> contains the exact trademarks PATEK and NAUTILUS, which belong to and were registered internationally by Patek Philippe S.A. in 1958 and 1986 respectively.
ii. Rights or Legitimate Interests
Complainant alleges that Respondent is not an authorized dealer or distributor for Complainant’s products, that Respondent is not known by the disputed domain name and that Respondent has no trademark rights related to the disputed domain name.
iii. Bad Faith
Complainant’s allegations respecting bad faith are numerous.1
Complainant avers that the disputed domain name was registered over 50 years after the registration of the trademark PATEK and more than 30 years after the registration of the trademark PATEK PHILIPPE NAUTILUS.
Complainant also contends: that Respondent violated the terms of its registration agreement by registering a domain name that infringed on Complainant’s trademark rights; that Respondent was aware of Complainant’s business (because Respondent is selling Complainant’s watches by posting photos of them on line); that such sales were unauthorized; that “[s]omeone felt alarmed enough to place offline the website after we demonstrated to him or her that the website was infringing on Patek Philippe’s trademark rights”; and that “[l]astly, most of the information provided by PatekNautilus.com is wrong.”
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings to Respondent
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier Written Notice of these proceedings. The Center used the address listed in the WhoIs record for the disputed domain name, but the notification was apparently not deliverable to Respondent’s listed address. The Center also notified Respondent by inter alia, using an email address provided by the registrar in its verification response to the Center.
The Panel is satisfied that by sending communications to the contacts made available through the registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Substantive Rules
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not respond to the Complaint. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain name <pateknautilus.com> is not identical to Complainant’s trademarks listed above, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks.
UDRP panels generally disregard the domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Removing the gTLD suffix, the disputed domain name incorporates entirely two of Complainant’s marks. The combination of the two marks does not, in the Panel’s view, alleviate the confusion that the inclusion of two of Complainant’s marks in the disputed domain name creates. The requirements of Policy paragraph 4(a)(i) are therefore fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant alleges that Respondent has no trademark rights in respect of the disputed domain name and that Respondent is not an authorized dealer or distributor of Complainant’s products.
In the absence of a Response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization to use Complainant’s trademarks and that Respondent is not an authorized dealer or distributor. The Panel also accepts Complainant’s uncontested allegation that Respondent is not known by the disputed domain name.
Respondent’s website has displayed an active website, with links to Complainant’s competitors. By diverting traffic to third parties and their products, the Panel finds that Respondent is using Complainant’s marks for its own commercial purposes, which does not constitute a bona fide offering of goods or services under the Policy. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; and Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
The Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel further finds that the Complainant makes out a prima facie case indicating Respondent lacks any rights or legitimate interest in the disputed domain name.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers that Respondent acquired the disputed domain name with awareness of Complainant’s business. Complainant’s trademarks were already registered internationally and widely used in various countries for several decades when the disputed domain name was registered in 2010.
Moreover, the display of photographs of Complainant’s products on the website to which the disputed domain name routes demonstrates Respondent’s awareness of Complainant’s products and trademarks. The Panel finds therefore that the domain name registration was made with the intention of trading on the value of Complainant’s trademarks. This constitutes registration in bad faith for purposes of the Policy.
The Panel also concludes that the circumstances show bad faith use of the disputed domain name by Respondent, as elaborated below.
As noted above, screen shots of Respondent’s website provided as an annex to the Complaint show that the disputed domain name has been used to promote the products of competitors of Complainant. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088). Respondent’s failure to submit any reply to the Complaint is further evidence of bad faith. 2
The Panel concludes that the requirements of the Policy paragraph 4(a)(iii) are fulfilled.
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 <pateknautilus.com> be transferred to Complainant.
Dated: August 18, 2010
1 Many allegations address only copyright infringement, which is beyond the scope of proceedings under the UDRP. For example, while Complainant’s representative sent at least three letters to Respondent before filing the instant proceeding, there was no mention of trademarks or domain names in the letters; the letters were confined to allegations of copyright infringement. The warning letters themselves are only tangentially relevant in this proceeding, however in copyright based allegations the Complaint also states that the website to which the disputed domain name routes displayed photos of Complainant’s products. These latter allegations are germane to the Panel’s determination of bad faith under the Policy, as explained below.
2 The failure of Respondent to maintain accurate contact details as required by the registration agreement is also additional evidence of bad faith in this matter.