WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont Holdings AG and Richemont Australia Pty Limited v. Robert Natera
Case No. D2011-0238
1. The Parties
The Complainants are Richemont Holdings AG and Richemont Australia Pty Limited, care of Richemont International, London, United Kingdom of Great Britain and Northern Ireland, represented by Leason Ellis, United States of America.
The Respondent is Robert Natera of Sydney, Australia.
2. The Domain Name and Registrar
The disputed domain name <richemontgroup.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2011. On February 4, 2011, the Center transmitted by email to, GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On February 5, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that the 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 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on March 18, 2011. 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.
No Response having been filed, the Panel has checked the record to ensure that the Respondent received proper notice of the Complaint in accordance with the Rules. Although the Center’s attempts to deliver the Complaint to the Respondent by courier, fax and email, all appear to have failed, the Panel is satisfied that the Center has employed the various notification measures set out in paragraph 2(a) of the Rules, and has therefore discharged its responsibilities under that paragraph.
4. Factual Background
The Complainants are subsidiaries of the well known Swiss luxury goods company Compagnie Financière Richemont SA (“CFR”). Other companies within the group controlled by CFR (“the CFR Group”) market a number of the world’s best-known products in the luxury goods sector, including CARTIER jewellery, PIAGET watches, CHLOE handbags, and MONTBLANC pens.
Members of the CFR Group hold numerous registrations of the word mark RICHEMONT in a number of countries around the world, including Australia, where the Respondent appears to be domiciled. The first-named Complainant Richemont Holdings AG is the registered proprietor of that mark in Australia, in respect of various services in international class 42. The relevant application for registration was filed on December 12, 1996.
The second-named Complainant, Richemont Australia Pty Limited, is an Australian Corporation. It holds a license from the first-named Complainant to use the RICHEMONT mark in Australia.
The Respondent and the Domain Name
The Domain Name was registered by the Respondent on May 8, 2010.
The Domain Name points to a website (“the Respondent’s website”) which is prominently headed with the words: “Richemont Group Blog, Cartier Jewellery, Piaget Watches, Chloe Handbags, Montblanc Pens”. The Respondent’s website consists of what at first site appear to be articles, or blogs, purporting to be written by one or more named individuals, or simply by “admin”. But these blogs are not really blogs at all. In a number of places the English makes no sense.
The Respondent’s website contains nothing to identify the owner or operator of the website, other than the expression “Richemont Group Blog”. There is an “about” page, but it does not contain any method of communicating with the website operator.
The Complainants produced what they said was a copy of the Source Code for the Respondent’s website, and they highlighted what was said to be a meta tag, “Richemontgroup is the blog of Richemont”. In addition, the Complainants pointed out that Respondent’s website has been configured to send emails using the email address “[user name]@richemontgroup.com”.
The Whois particulars for the Domain Name provide the email address firstname.lastname@example.org for the administrative contact.
The Complainants confirmed that the Respondent has no business of other connection with them.
5. Parties’ Contentions
The Complainants contend:
1. The Domain Name is confusingly similar to the Complainants’ RICHEMONT mark. The addition of the non-distinctive element “group” does not sufficiently distinguish the Domain Name from the Complainants’ mark. The similarity is compounded by the fact that the CFR Group is known as the “Richemont Group”, refers to itself as such, and is referred to as such in the media.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Respondent is not employed by, sponsored, or endorsed by the Complainants, and does not conduct any business with the Complainants. The Complainants have not given the Respondent permission to use the RICHEMONT mark.
(ii) The trademarks CARTIER, PIAGET, CHLOE, and MONTBLANC, are all famous trademarks owned by companies within the CFR Group. The use of these trademarks on the Respondent’s website shows that the Respondent was aware of the Complainants and their reputation.
(iii) The text on the Respondent’s website may be the result of “blog scraping”, being the use of automated software to create “inauthentic text”. Inauthentic text is often used as a first step in creating a “splog” (a spam blog). Splogs are often used on otherwise useless websites in order to generate traffic through search engine manipulation.
(iv) The use of the meta tag “Richemontgroup is the blog of Richemont”, the email address “email@example.com”, the heading on the Respondent’s website “Richemont Group Blog”, and the famous trademarks owned by companies within the CFR Group, all falsely suggest that the Respondent’s website is somehow affiliated with, or endorsed or authorized by, the Complainants.
(v) The RICHEMONT mark is so famous and distinctive of the products and services offered by the CFR Group that no third party can utilize that mark without referring to the CFR Group.
(vi) The Respondent’s purported “blog” and its potential email use of the Respondent’s website, are not bona fide uses of the Domain Name.
3. The Domain Name was registered and is being used in bad faith by the Respondent. The Complainants rely on the following matters:
(i) The Respondent is intentionally using the Complainants’ famous and well-respected mark to deceive or mislead Internet users. The listing of CFR Group trademarks in a prominent place on the Respondents’ website, the use of the term “blog of Richemont” in a meta tag, the absence of contact information on the Respondent’s website, and the use of the email address “firstname.lastname@example.org, all establish that the registration and use by the Respondent of the Domain Name has been intended to mislead Internet users into believing that the Respondent’s website has an official connection with the Complainants and the CFR Group and/or with their well-known marks.
(ii) The listing of the other trademarks owned by members of the CFR Group puts it beyond dispute that the Respondent registered the Domain Name with knowledge of the Complainants’ goodwill in the RICHEMONT mark.
(iii) The fame and reputation of a complainant’s mark is persuasive in determining a respondent’s bad faith intent (see Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003).
(iv) To the extent that the Respondent’s website can be deemed to be a passive “splog” at this time, such use can be analogized to the passive warehousing of a famous mark. Such conduct has been held to constitute bad faith – see Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ladbroke Group plc v Sonoma International LDC, WIPO Case No. D2002-0131).
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. What the Complainants must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainants have proved that the first-named Complainant is the registered proprietor of the word mark RICHEMONT in Australia. That registration provides sufficient proof that they hold a “right” in that mark for the purposes of paragraph 4(a)(i) of the Policy.
The Panel accepts the Complainants’ submission that the addition of the non-distinctive expression “group” in the Domain Name does not remove the confusion likely to be caused by the incorporation of the Complainants’ mark, in full, in the Domain Name. Having regard to the fact that the corporate group of which the Complainants are members (the CFR Group) is frequently referred to as the “Richemont Group”, the addition of the word “group” in the Domain Name is only likely to exacerbate that confusion.
The “.com” suffix is not taken into account in the comparison.
For those reasons, the Panel is satisfied that the Domain Name is confusingly similar to the RICHEMONT mark in which the Complainants have rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainants have not authorized the Respondent to use the RICHEMONT mark, whether in a domain name or otherwise. There is no suggestion that the Respondent might be commonly known by the Domain Name, so there can be no possibility that the Respondent might have a right or legitimate interest under paragraph 4(c)(ii) of the Policy.
The Complainants have also produced sufficient evidence to establish a prima facie case that the Respondent’s use of the Domain Name has been neither bona fide, nor fair or legitimate, as those expressions are used in paragraphs 4(c)(i) and 4(c)(iii) of the Policy: the prominent claim that the Respondent’s website is a blog site for the “Richemont Group”, coupled with the prominent use of world famous marks owned by related companies of the Complainants, provides strong prima facie evidence of a bad faith attempt by the Respondent to create the false impression that the Respondent’s website is somehow associated with the Complainants or the CFR Group.
In those circumstances, the evidentiary onus switches to the Respondent. The Respondent not having filed any Response, that evidentiary burden has not been discharged, and the Complainants therefore succeed on this part of their Complaint.
D. 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 [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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.
The Complainants also succeed on this part of their Complaint.
The Panel accepts that the Respondent must have been aware of the CFR Group, and of the CARTIER, PIAGET, CHLOE, and MONTBLANC marks owned by members of the CFR Group, when the Domain Name was registered. The Panel also accepts that the Respondent’s choice of the Domain Name, and the false claim that the Respondent’s website is a blog site for the Richemont Group, was intended to create the false impression that the Respondent’s website is operated or endorsed by, or affiliated with, the Complainants or the CFR Group.
The nonsensical purported “blogs” on the Respondent’s website, the failure to provide any effective contact address (whether in the Whois particulars for the Domain Name or on the Respondent’s website), and the Respondent’s use of a meta tag referring to the Complainants or the CFR Group, together leave no room for doubt that the Respondent’s intention has been to deliberately mislead Internet users into visiting the Respondent’s website in the belief that they will arrive at a website operated by or associated with the Complainants and/or the CFR Group. The only logical reason for the Respondent to do that would be either (i) to generate increased web traffic to the Respondent’s website with a view to establishing sponsored links thereon, and generating pay-per-click or similar advertising revenue, or (ii) to make a profit by provoking an offer from the Complainants to buy the Domain Name at a price which would exceed the Respondent’s out-of-pocket costs in connection with the Domain Name.
It is not necessary to determine exactly which of those uses the Respondent had in mind when he registered the Domain Name. In either case, the proposed use would constitute a bad faith use of the Domain Name (either under paragraph 4(b)(iv) or under paragraph 4(b)(i) of the Policy).
It does not matter that the Respondent might not yet have derived any revenue from a misleading use of the Domain Name, nor yet sought to sell the Domain Name to the Complainants at a profit. It is enough for the Panel to find (as it does) that the Respondent has not been making any practical use of the Domain Name, that there are no indications that the Respondent could have registered and used the Domain Name for any non-infringing purpose, and that the Respondent’s expected use of the Domain Name would lead people to believe that the Domain Name was connected with the Complainants (see Alitalia-Linee Aeree Italiane S.p.A. v Colour Digital, WIPO Case No. D2000-1260, and Red Bull GmbH v Harold Gutch, WIPO Case No. D2000-0766, both recently followed by the panel in Pirelli & C. S.p.A v Cristian Bello, WIPO Case No. DCO 2011-0002. See also Telstra Corporation v Nuclear Marshmallows (supra).
The Panel’s overall impression of bad faith registration and use is confirmed by the Respondent’s failure to provide effective contact details, whether in the Whois particulars or on the Respondent’s website.
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, <richemontgroup.com>, be transferred to the Complainants.
Dated: March 22, 2011