WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
H. Stern Comercio E Industria SA v. Private Whois hsternjewelry.com
Case No. D2011-1631
1. The Parties
Complainant is H. Stern Comercio E Industria SA of Rio de Janeiro, Brazil, represented by Cabinet Escande, France.
Respondent is Private Whois hsternjewelry.com of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <hsternjewelry.com> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2011. On September 27, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On September 29, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that 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”), 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 October 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 25, 2011.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on November 3, 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
Credible evidence in the Complaint and its Annexes reveals the following essential facts: Complainant is a long established jeweler with more than 160 stores and worldwide sales. The name H.STERN is the subject of numerous United States of America and European Community trademarks owned by Complainant and its affiliates (Annexes 4 and 5 to the Complaint list eight such marks), primarily in Class 14 and pertaining to jewelry and related items. The first of these listed trademarks dates from 1981 and the most recent from 2009. Complainant also owns at least two domain names (<hstern.net> and <hstern.com.br>) which it uses in connection with its business activities. The disputed domain name was registered on or about January 26, 2011. The disputed domain name resolves to a site that sells jewelry. Complainant’s lawyers sent Respondent two electronic cease and desist letter concerning the disputed domain name on June 28, 2011 and August 3, 2011, but apparently received no reply. Further facts are mentioned below to the extent pertinent to this decision.
5. Parties’ Contentions
Complainant submits that: the disputed domain name incorporates the totality of its well-known H.STERN trademarks and is obviously confusingly similar to them; that it has never licensed or given permission to Respondent to use its trademarks; that Respondent can only have registered the disputed domain name in bad faith with knowledge of Complainant’s trademarks and longstanding business; and that Respondent then used the disputed domain name in a manner so as deliberately to take advantage of the goodwill developed in the name and trademark H.STERN with a view to diverting business to a website unconnected to Complainant. Complainant adds, inter alia, that Respondent has also displayed Complainant’s copyrighted images on the website to which the disputed domain name resolves. Complainant accordingly asks that the disputed domain name be transferred to it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name includes the entirety of Complainant’s long-registered trademark H.STERN deleting only the full stop between “h” and “stern”. The addition of the word “jewelry” to the disputed domain name does not diminish the confusing similarity with Complainant’s trademarks, but rather augments it as the sale of jewelry is a principal part of Complainant’s business. Accordingly the first element of paragraph 4(a) of the Policy is readily proven.
B. Rights or Legitimate Interests
Complainant affirms that it has never granted Respondent the right to use or register its trademarks either in connection with a domain name or a bona fide offering of goods and services. Furthermore, it appears that Respondent never answered Complainant’s cease and desist letters or at any time asserted any basis for its rights to the disputed domain name. In the absence of any Response from Respondent, Complainant has, as it pleads, here established “a prima facie case that Respondent has no rights in the disputed domain name”. The second element of paragraph 4(a) of the Policy is thus also proven.
C. Registered and Used in Bad Faith
Complainant has submitted convincing evidence of the fame and notoriety of its trademarked name and business, including it being featured and advertised in major fashion magazines and its jewelry being identified as worn by celebrities and film stars. In the Panel’s view, Respondent’s registration of the disputed domain name incorporating Complainant’s long-standing name and trademarks for promoting the sale of jewelry at the beginning of 2011 cannot have been serendipitous, and can only have been in bad faith. The same analysis goes to Respondent’s use of the disputed domain name to sell jewelry by means of the disputed domain name; the evidence shows this to be an attempt to divert customers to Respondent through unauthorized and bad faith use of Complainant’s trademarks and renown. The third element of paragraph 4(a) of the Policy is accordingly also proven.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hsternjewelry.com> be transferred to Complainant.
Dated: November 4, 2011