WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harry Winston Inc., Harry Winston, S.A. v. Private Whois Service / SveinungSkoglund.com, Sveinung Skoglund
Case No. D2010-1222
1. The Parties
The Complainants are Harry Winston, Inc., a New York corporation and Harry Winston S.A., a Swiss corporation, represented by Bricker & Eckler LLP, United States of America.
The Respondents are Private Whois Service / SveinungSkoglund.com, Sveinung Skoglund, of Westchester, California, United States of America, and Phuket, Thailand respectively.
2. The Domain Name and Registrar
The disputed domain name <harrywinstonengagementrings.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2010. On July 23, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On July 26, 2010, eNom, 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 the Complainants on July 27, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on the same day.
The Center verified that the Complaint together with the amendment thereto 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 Respondents of the Complaint, and the proceedings commenced on July 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 18, 2010.
The Center appointed David Taylor as the sole panelist in this matter on August 24, 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.
On September 13, 2010 the Center issued a Procedural Order further to a request from the Panel. The Procedural Order related to the evidence submitted by the Complainants of the content of the website to which the Domain Name pointed. Essentially, the screen captures produced by the Complainants did not display the full URL of the website so that it was not possible for the Panel to ascertain whether they actually corresponded to the Domain Name.
On September 16, 2010 the Complainants submitted new evidence of the screen captures in accordance with the Procedural Order. However, the content of the screen captures submitted in response to the Procedural Order were different from the ones submitted initially.
4. Factual Background
The factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto given that no Response was filed.
The Complainants are Harry Winston, Inc., a New York corporation and Harry Winston S.A., a Swiss corporation. Harry Winston S.A. is related to and controlled by Harry Winston, Inc. The Complainants are engaged in the business of designing, manufacturing, distributing and selling time pieces and fine jewellery, including engagement rings. The Complainants operate the website “www.harrywinston.com”. A significant portion of the website “www.harrywinston.com” is dedicated to engagement rings.
The Complainants own several United States trade mark registrations including the following:
- HW HARRY WINSTON and design registered on January 19, 1993 with the USPTO under number 1747040; and
- HARRY WINSTON registered on December 18, 2007 with the USPTO under number 3355622.
The Respondents registered the Domain Name on December 1, 2009 via a domain privacy service provider. The registrar with which the Domain Name was registered disclosed the name and contact information for the registrant of the Domain Name.
The Domain Name currently resolves to a parking page containing a variety of links to third party websites.
5. Parties’ Contentions
(i) The Complainants contend that the Domain Name is confusingly similar to the Complainants' HARRY WINSTON trade marks
The Complainants assert that the Domain Name incorporates their registered HARRY WINSTON trade mark in its entirety and that the mere addition of the words “engagement rings” is not sufficient to differentiate the Domain Name from said trade mark.
(ii) The Complainants contend that the Respondents have no rights or legitimate interests in respect of the Domain Name
The Complainants consider that the use of the Domain Name to intentionally attract Internet users who are seeking information on the Complainants’ products and to then direct them to other providers is by no means a bona fide offering of goods and services.
Furthermore, the Complainants assert that the Respondents are neither a licensee of the Complainants nor an affiliate of the Complainants.
(iii) The Complainants contend that the Domain Name was registered and is being used in bad faith
According to the Complainants, the fact that the Respondents registered the Domain Name long after the Complainants’ HARRY WINSTON trade mark had become famous proves its actual knowledge of the Complainants and their trade marks.
The Complainants argue that the Respondents’ bad faith is further evidenced by their attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trade mark.
For all the foregoing reasons, the Complainants seek the transfer of the Domain Name from the Respondents in accordance with paragraph 4(i) of the Policy.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel shall 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.
In accordance with paragraph 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.
In this case the Respondents have not submitted any Response and consequently have not contested any of the contentions made by the Complainants. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainants to support their contentions.
If the Complainants are to succeed, they must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(ii) the Respondents have 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.
The Panel will proceed to establish whether the Complainants have discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
Taking each of these issues in turn, the Panel decides as follows:
A. Identical or Confusingly Similar
The first element that needs to be established is whether the Complainants have rights in a term to which the Domain Name is identical or confusingly similar.
Based on the evidence provided by the Complainants to substantiate their trade mark rights, the Panel is satisfied that the Complainants have rights in the term HARRY WINSTON which is reproduced in its entirety in the Domain Name.
The second element that needs to be considered is whether the Domain Name is identical or confusingly similar to the term HARRY WINSTON in which the Complainants have rights.
The Domain Name reproduces the Complainants’ exact trade mark HARRY WINSTON, with the addition of the generic words “engagement rings” as well as the gTLD “.com”.
The Panel finds that the addition of the generic words “engagement rings” to the trade mark HARRY WINSTON does not sufficiently differentiate the Domain Name from the Complainants’ HARRY WINSTON trade mark so as to avoid confusing similarity. Indeed the dominant and distinctive part of the Domain Name is the term HARRY WINSTON, which is identical to the Complainants’ trade mark. The additional words “engagement rings” describe a very specific type of goods which the Complainants sell and in respect of which the Complainants have acquired substantial goodwill and reputation. Thus, the Panel concludes that the addition of the descriptive words “engagement rings” to the HARRY WINSTON trade mark in the Domain Name does nothing but aggravate the confusion of Internet users regarding the origin of the website to which the Domain Name resolves.
With regard to the gTLD “.com”, it is widely accepted that it is irrelevant in assessing the issue of confusing similarity between a domain name and a trade mark.
The Panel therefore finds that the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to [the respondent] of the dispute, [the respondent's] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or
(iii) [the respondent] is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
The Panel has considered the evidence put forward by the Complainants and considers that the Complainants have made a prima facie showing of the Respondents’ lack of rights or legitimate interests in the Domain Name. As a result of their default, the Respondents have failed to rebut that showing.
For instance, there is no evidence that the Respondents have obtained any licence or authorization to use the Complainants’ HARRY WINSTON trade mark, nor that the Respondents are commonly known by the Domain Name.
In addition, the use of the HARRY WINSTON trade mark which is distinctive, especially when associated to one of the main type of goods it is produced and sold under, to point to a website which generates advertising revenues cannot constitute a bona fide offering of goods or services, nor a legitimate non-commercial of fair use of the Domain Name since it essentially relies on user confusion to generate financial gain.
Finally, the Panel considers the Respondents’ failure to respond to the Complaint as an additional suggestion of the lack of rights and legitimate interests of the Respondents in the Domain Name.
The Panel therefore finds that the Complainants have satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Given the underlying facts presented to the Panel, it is evident that the Respondents registered the Domain Name with the Complainants in mind.
Based on the evidence produced by the Complainants regarding the website to which the Domain Name resolves, the Panel considers that the advertisement contained on the website to which the Domain Name points, suggests that the Respondents are engaged in a revenue-generating scheme based on user confusion.
The Respondents’ bad faith is further established by the fact that the association of the term “engagement rings” to the HARRY WINSTON trade mark shows that the Respondents were well aware of the Complainants, their brands and their business. Thus the Panel is of the view that the Domain Name would attract Internet users, who are initially seeking information on the Complainants’ products, to the Respondents’ website which contains links to third party websites.
Further, whilst the use of domain name privacy services can serve legitimate and useful purposes, such services can and seem to be increasingly used in order to dissimulate the identity of bad faith actors. The consequence is that this impedes or indeed prevents the (timely) identification of the parties allegedly involved in illegal, harmful or objectionable activities. Moreover it is becoming evident that there is, in general, an intentional passive collusion between some domain name privacy service providers (whether a registrar or third party) and bad faith actors which is a major concern and needs to be addressed so as to combat the increase in phishing, malware and other electronic crime especially given the intended launch by ICANN of potentially unlimited new gTLDs in the future.
Finally, the Respondents’ failure to rebut any of the Complainants’ arguments is a supplementary element from which the Panel infers bad faith on the Respondents’ part.
The Panel therefore finds that the Respondents registered and are using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <harrywinstonengagementrings.com> be transferred to the Complainant Harry Winston, Inc., as requested by Complainants.
Dated: September 27, 2010