World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accurist Watches Limited v. Whois Privacy Services Pty Limited / Dana Daste

Case No. D2011-1328

1. The Parties

The Complainant is Accurist Watches Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Marks & Clerk Solicitors, United Kingdom.

The Respondent is Whois Privacy Services Pty Limited of Queensland, Australia and Dana Daste of Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <accurist.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2011. On August 4, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2011, the Registrar 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 Complainant on August 5, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 10, 2011.

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 August 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2011. The Response was filed with the Center on August 26, 2011.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 7, 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 Complainant is a watch manufacturer located in the United Kingdom and has been making and selling watches under the ACCURIST name since 1942. The Complainant owns many trademark registrations for the ACCURIST trademark around the world, namely:

United Kingdom Registration No. 617719, filed on February 2, 1942

United Kingdom Registration No. 1489757, filed on February 3, 1992

CTM Registration No. 71159, filed on April 1, 1996

Canadian Registration No. UCA 21518, registered on June 21, 1945

Australian Registration No. 513072, registered on June 19, 1989

Hong Kong Registration No. 1990B1596, registered on May 31, 1988

Jersey Registration No. 1368, registered on October 21, 1959

Norwegian Registration No. 144508, filed on June 20, 1989

Gibraltar Registration No. 2170, registered on August 30, 1963

Jordanian Registration No. 649, registered on June 24, 1945

South African Registration No. 1423/45, registered on June 26, 1945

Zimbabwean Registration No. 762/1959, registered on February 2, 1942

The Complainant owns the domain name <accurist.co.uk>, and has operated a website in association with that domain name since 1999.

The Complainant is the only brand to be formally associated with the Greenwich Observatory. In 1997, the Complainant provided the official Millennium countdown clock to the Greenwich Observatory. The Complainant has for 22 years, from 1986 to 2008 sponsored the British Telecom speaking clock service. The Complainant has won industry awards, including the UK Jewellery award for “Volume Watch Brand of the Year” in 1997. The Complainant has also won the “Customer Service Award” in 2001 and in 2008 launched its “British Real Time” website.

The Respondent purchased the disputed domain name <accurist.com> in May 1997 from an auction site, and at the time the Complaint was filed, the disputed domain name reverted to a website which was effectively a “parking site” which offered the disputed domain name for sale, provided links to a variety of third parties, including other watch makers and sellers, and provided links to third parties which featured pornographic material and content.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant owns many trademark registrations for the trademark ACCURIST in various jurisdictions, notably in the United Kingdom (namely: UK Registration Nos. 617719 and 1489757), and CTM Registration No. 71159, which dates back to as early as February 2, 1942. The Respondent has registered the disputed domain name <accurist.com> which is identical to the Complainant’s registered trademark, except for the addition of the “.com” designation. The Complainant contends that the addition of a gTLD designation does not distinguish the disputed domain name from the Complainant’s trademark.

Rights or Legitimate Interests

The Respondent is not publicly known by the ACCURIST name, and the Complainant submits that the Respondent cannot have any rights or legitimate interests in the disputed domain name, because the Complainant has exclusive rights to the trademark ACCURIST in the United Kingdom, and internationally. The Complainant contends that the word “accurist” is a coined word and has no meaning in the English language, and is, therefore, not a generic or common English word. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which provides links to third party websites which are direct competitors of the Complainant, and to pornographic sites, which are detrimental to the goodwill and reputation of the Complainant.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent must have known about the Complainant’s rights in the trademark ACCURIST when she registered a confusingly similar domain name; (ii) the Respondent registered and is using a confusingly similar domain name which reverts to a website which provides links to websites of direct competitors of the Complainant, and to pornographic sites and material for purposes of monetary gain; and (iii) the Respondent registered and is using a confusingly similar domain name in an attempt to interfere with the Complainant’s business and to divert Internet users, who are looking for the Complainant’s website to the Respondent’s website.

B. Respondent

The Respondent contends that she legally purchased the disputed domain name as an investment, by way of public auction from a sanctioned ICANN Registrar. The Respondent submits that she was not aware of the Complainant or of the Complainant’s rights in the ACCURIST trademark. The Respondent submits that she purchased the disputed domain name because the Respondent believed the word “accurist” to be a generic, common word meaning “a person who is precise without error”. The Respondent cites the definition of “accurist” from the UrbanDictionary.com as:

“A person who insists upon accuracy, especially in verbal and written communication. A person who does not permit use of one’s best guess in lieu of actual fact. A person with a low tolerance for creative license outside of artistic endeavors.”

The Respondent also claims that there are other third parties who use the name “accurist” in their company name, and that the Complainant does not have exclusive rights to the disputed domain name.

The Respondent contends that she has legitimate rights and interests in the disputed domain name and is using the domain name in association with a “parking site”. The Respondent claims she is using a management company, which automatically generates the links and ads to which the “parking site” features.

The Respondent submits that she purchased and is using the disputed domain name in good faith, that she was not aware of the Complainant, and that a third party decides what links and ads are featured on its website.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has 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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights in the mark ACCURIST by virtue of United Kingdom Registration Nos. 617719 and 148757, and CTM Registration No. 71159, and by the other registrations listed in the Complaint.

The Panel further finds that the domain name <accurist.com> is identical to the Complainant’s registered trademark ACCURIST, except for the addition of the gTLD designation, “.com”. The addition of such a gTLD designation does not serve to distinguish the disputed domain name from the Complainant’s trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

On reading the evidence and submissions filed by both parties, the Panel is prepared to accept the Complainant’s contention that its ACCURIST trademark and its associated products have developed a significant reputation in the United Kingdom, Europe and internationally.

The Panel is not convinced by the Respondent’s contention that she was unaware of the Complainant or of the Complainant’s trademark ACCURIST in view of the evidence submitted by the Complainant. In order to convince the Panel, in the presence of strong evidence of multiple trademark registrations in countries around the world, together with substantial recognition and awards and a long established Internet presence through the website “ww.accurist.co.uk”, the Respondent needed to make more than a bald statement that she was unaware of the Complainant’s rights. The Panel is therefore prepared to infer that the Respondent was likely aware of the Complainant’s ACCURIST trademark when she purchased the dispute domain name.

On balance, the Panel is prepared to accept that “accurist” is a coined word. The Panel acknowledges the definition provided by the website ”www.urbandictionary.com”, but concludes that a single reference in this kind of online resource is not sufficient to establish primary generic character for a word/mark.

Further, the Panel finds no evidence that the Respondent is commonly known by the name ACCURIST, or that the Respondent was licensed or authorized by the Complainant to use the trademark ACCURIST, or has any other form of legitimate interests in the ACCURIST name.

The Panel is also prepared to find that the Respondent has not demonstrated a bona fide use of the disputed domain name. At the time the Complaint was filed, the disputed domain name reverted to a website which provided links to other parties which provided products which were directly competitive to the Complainant’s products, or provided links to pornographic websites and material.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraphs 4(a)(ii) and 4(b) of the Policy.

C. Registered and Used in Bad Faith

The Panel, upon review of the evidence filed in the Complaint and the Response, finds that the Respondent registered and has used the disputed domain name in bad faith.

In view of the findings in the above section 6(b), the Panel finds that the word “accurist” is a coined word, that the Complainants has trademark rights in the trademark ACCURIST, and that the Respondent was likely aware of the Complainant’s trademark rights when she purchased the confusingly similar domain name. Furthermore, the Panel finds that the disputed domain name reverts to a website which provides links to other websites operated by direct competitors of the Complainant, or to third party websites which feature pornographic content and material.

The Panel is also prepared to find that the use of the confusingly similar disputed domain name <accurist.com> in association with a website that provides links to websites which feature pornographic material and content to be detrimental to the goodwill and reputation of the Complainant’s trademark ACCURIST.

Accordingly, the Panel is prepared to find that the Respondent has registered and is using the disputed domain name in bad faith under the Policy.

Therefore, the Panel finds that the Complainant has satisfied the requirements under paragraphs 4(a)(iii) 4(c) under the Policy.

7. Decision

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 <accurist.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Dated: September 21, 2011

 

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