WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Glashütter Uhrenbetrieb GmbH and Omega SA v. Alexei Doicev
Case No. D2011-0593
1. The Parties
The Complainants are Glashütter Uhrenbetrieb GmbH of Glashütte, Germany and Omega SA of Biel/Bienne, Switzerland, represented by Collen IP, United States of America.
The Respondent is Alexei Doicev of Chisinau, Republic of Moldova.
2. The Domain Names and Registrar
The disputed domain names <glashuttewatch.com> and <omegawatch.biz> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 4, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for Registrar verification in connection with the disputed domain names. On April 4, 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.
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 April 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on May 5, 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.
4. Factual Background
The Complainants are Glashütter Uhrenbetrieb GmbH (hereinafter also “Glashütter”), a limited liability company organized under the laws of Germany and OmegaSA (hereinafter also “OSA”) a joint stock company organized under the laws of Switzerland. Both companies are wholly-owned subsidiaries of the world leading Swiss watchmaker The Swatch Group LTD.
Glashütter, involved in the watchmaking business since 1845, has been using the mark GLASHÜTTE ORIGINAL in connection with horological and chronometric instruments since 1921 and is the owner of several trademark registrations for GLASHÜTTE ORIGINAL, such as the United States registration No. 2519207, registered on December 18, 2001, in classes 14 and 18; the Community trademark Nos. 4821773, filed on December 20, 2005 and registered on November 27, 2006, in class 14; and 1346105, filed on October 14, 1999 and registered on November 7, 2000, duly renewed on November 8, 2009, in classes 14 and 18.
OSA has been using the trademark OMEGA for horological and timekeeping instruments and related retail store services since 1894 and is the owner of several trademark registrations for OMEGA worldwide, such as the US trademark registration Nos. 25036 registered on July 24, 1894, in class 14; 660541, registered on April 15, 1958, in class 9; 1290661, registered on August 21, 1984, in classes 4, 8, 14, 16; 3146117, registered on September 19, 2006, in class 35. OSA promotes its OMEGA watches through the web site <omegawatches.com>.
The Respondent registered the disputed domain names <glashuttewatch.com> and <omegawatch.biz> on August 3, 2005.
5. Parties’ Contentions
The Complainants contend that the disputed domain names are identical and/or confusingly similar to Complainants’ trademarks, since they consist of the Complainants’ marks GLASHÜTTE and OMEGA, with the addition of the generic term “watch”, which identifies the goods for which the Complainants are known, and of the non distinguishing generic TLDs “.com” and “.biz”. The Complainants state that the Respondent’s registration and use of the disputed domain names is, consequently, likely to confuse Internet users who are familiar with the Complainants’ brands, who are likely to associate the disputed domain names with the Complainants.
With reference to rights or legitimate interests in respect of the disputed domain names, the Complainants state that the WhoIs results show no indication that Respondent is commonly known by the disputed domain names, or any variant containing the terms OMEGA and/or GLASHÜTTE. The Complainants underline that they have not authorized the Respondent to use their trademarks on the site located at <glashuttewatch.com> or in connection with the disputed domain names. The Complainants also state that the domain name <glashuttewatch.com> is not used by the Respondent in connection with a bona fide offering of goods or services since it is used to advertise and facilitate the sale of “replica” GLASHÜTTE ORIGINAL watches by providing links to replica watch web sites selling counterfeit GLASHÜTTE ORIGINAL watches as well as OMEGA and other Swatch Group brands.
The Complainants highlight that the Respondent made the same use described above on the site located at <breguet.biz>, which was subject of a prior proceeding between the Complainants’ sister company, Montres Breguet S.A., and the Respondent (Montres Breguet S.A. v. Alexei Doicev, NAF Claim No. 1343675).
As to the disputed domain name <omegawatch.biz>, the Complainants point out that it does not resolve to an active web site and that, therefore, it cannot be claimed to be used in connection with a bona fide offering of goods or services, since it is held by the Respondent to prevent OSA from acquiring it, or for future use in connection with the sale of replica OMEGA watches.
With reference to the circumstances evidencing bad faith, the Complainants contend that the registration of the disputed domain name <glashuttewatch.com> was made by the Respondent in bad faith to promote the sale of counterfeit (“replica”) watches through a web site replicating the look, style, and marking of the authentic product and selling counterfeit watches via several links to third parties’ sites under <cool-watches.com> and <watchreplica.net>, where fake watches are offered for sale. The Complainants highlight that the Respondent is, in this way, diverting Internet users who are interested in genuine GLASHÜTTE or GLASHÜTTE ORIGINAL watches, exploiting the goodwill of the Complainants’ marks by catering to users seeking counterfeit watches, and misleading consumers into believing that they are buying authentic goods.
The Complainants also state that the Respondent’s registration of the disputed domain name <glashuttewatch.com> to facilitate the sale of replica watches and the Respondent’s previous registration of <breguet.biz> for the same purpose, suggest that the Respondent also registered the disputed domain name <omegawatch.biz> in bad faith.
The Complainants also inform the Panel that the Respondent was involved in a prior case, Evolution USA, Inc. v. Alexei Doicev, WIPO Case No. D2006-0086, concerning the Respondent’s registration of a domain name containing the well-known TECHNOMARINE trademark, a mark used on watches by a competitor of the complainant.
The Complainants also point out that it is more than likely that the Respondent registered the domain name <omegawatches.biz> to divert Internet users seeking information about genuine OMEGA watches and/or OSA’s official website at <omegawatches.com> and that the “Respondent’s history as a serial cyber-squatter and counterfeiter precedes him”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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.” Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant Glashütter has provided evidence of trademark registrations for GLASHÜTTE ORIGINAL. The trademark certificates submitted by the Complainant show that the mark is constituted by the terms “glashütte” and “original” in stylized characters; some of the trademarks also contain additional design elements. The Panel also notes that the word “original” is disclaimed in the United States trademark registration No. 2519207, registered on December 18, 2001.
As found in many Panel decisions, textual content which has been expressly disclaimed in a relevant trademark registration, as well as figurative, stylized and design elements, may be disregarded when assessing a domain name’s identity or confusing similarity.
In comparing the disputed domain name <glashuttewatch.com> with the most distinctive part of the Complainant’s mark, the Panel considers that, pursuant to a number of prior decisions rendered under the Policy, the addition of a descriptive term to a trademark is not a distinguishing feature.
Therefore, the mere addition of the words “watch” does not exclude the likelihood of confusion between the <glashuttewatch.com> and the Complainant’s mark.
It is well established in prior decisions that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN), eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 (“moving” added to the “EBAY” mark).
More in particular, the addition of the word “watch” is likely to increase the likelihood of confusion with Glashütter’s mark since it is descriptive of the Complainant’s products.
See also Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398, in which it was stated: “The Domain Names incorporate the famous ROLEX trademark in its entirety. The addition of the words "watch" and "relojes" (the Spanish word for wristwatches), generic terms that refer to the goods in connection with which the ROLEX trademark is used, and "e", an oft-used prefix to designate electronic-based communication and services, does nothing to change the fact that the Domain Names incorporate the ROLEX mark. Therefore, the Panel finds that the Domain Names are identical or confusingly similar to the ROLEX mark”.
With reference to the disputed domain name <omegawatch.biz>, the Panel finds that the Complainant OSA has provided evidence of ownership of relevant trademark registrations for OMEGA and that, for the reasons detailed in the paragraphs above, the addition of the term “watch” is not sufficient to exclude the confusing similarity with the Complainant’s mark.
In view of the above, the Panel finds that the disputed domain names <glashuttewatch.com> and <omegawatch.biz> are confusingly similar to the trademarks in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainants. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581, Accor v. Eren Atesmen, WIPO Case No. D2009-0701, <accorreviews.com>).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainants’ prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants’ trademarks. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names.
The Panel finds that the redirection of the domain name <glashuttewatch.com> to a web site providing links to third party sites where prima facie counterfeit watches of various brands, including products of the Glashütter’s competitors, are offered for sale, does not constitute a bona fide offering of goods or services or a legitimate, non-commercial or fair use of the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <glashuttewatch.com>, in accordance with paragraph 4(a)(ii) of the Policy.
The Panel notes that the domain name <omegawatch.biz> is passively held. In view of the Respondent’s default and of the evidence of the Respondent’s bad faith submitted by the Complainants and detailed in the following paragraphs, the Panel finds that the Respondent has no rights or legitimate interest also in regard to the disputed domain name <omegawatch.biz>.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the use of the trademarks GLASHÜTTE ORIGINAL and OMEGA since, respectively, 1921 and 1894 to identify the horological and chronometric instruments of the Complainants distributed and sold worldwide, and in view of the fact that the Respondent also registered the domain name <breguet.biz> identical to the mark BREGUET of the Complainants’ sister company Montres Breguet S.A., the Respondent was more likely than not aware of the Complainants’ trademarks.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003 0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds that the use of the disputed domain name <glashuttewatch.com> for a web site providing information on the Glashütter’s products and links to third party sites, where counterfeit watches of various brands are offered for sale, is a clear evidence of the Respondent's intent to divert Internet users to his web site, trying to capitalize on the goodwill of the Glashütter’s mark. The Panel finds, therefore, paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to the web site located at <glashuttewatch.com> for commercial gain, by creating a likelihood of confusion with the Glashütter’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s site. See, along these lines, Richemont Holdings AG v. Andy Bebe, WIPO Case No. D2010-0492.
As a further evidence of the Respondent’s bad faith, the Panel considers that the Respondent registered other domain names corresponding to registered trademarks, such as the above-referenced domain name <breguet.biz>, identical to the mark of the Complainants’ sister company Montres Breguet S.A., and the domain name <technomarines.net>, confusingly similar to the trademark TECHNOMARINE (see Evolution USA, Inc. v. Alexei Doicev, WIPO Case No. D2006-0086).
With reference to the issue of the non use of the domain name <omegawatch.com> by the Respondent, the Panel finds that in this case the “passive holding” infers bad faith, also in light of the above-mentioned conduct of prior registrations by the Respondent of domain names corresponding to registered marks. As also established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As an additional circumstance evidencing bad faith, the Panel notes that there has been no Response and, in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the disputed domain names were registered and are being used in bad faith.
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 <glashuttewatch.com> be transferred to Glashütter Uhrenbetrieb GmbH and <omegawatch.biz> be transferred to Omega SA.
Sole PanelistDated: May 19, 2011