WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont International S.A. v. Admin Domain, Domain Admin and Domain Admin
Case No. D2012-0032
1. The Parties
The Complainant is Richemont International, S.A. of Villars-sur-Glâne, Switzerland, represented by Edwards Wildman Palmer UK LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Admin Domain of Geneva, Switzerland, Domain Admin of New York, United States of America (the “US”), and Domain Admin of Paris, France.
2. The Domain Names and Registrar
The disputed domain names <cartierchina.com>, <cartierjewelrystore.com>, <cartieronsale.com>, <cartierstyle.com> and <iwcboutique.com> are registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2012. On January 11, 2012, the Center transmitted by email to a request for registrar verification in connection with the disputed domain name. On January 19, 2012, Dotster, 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 January 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2012.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on February 20, 2012. 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 the registered owner of the trademark IWC in relation to goods in Class 14 (watches and their components), see inter alia Swiss registration No. P-469777, registered February 22, 2000; and US registration No 1,205,403, registered August 17, 1982. The Complainant is the registered owner by a wholly owned subsidiary, of the trademark CARTIER, inter alia in relation to goods in Class 14 including watches and jewelry, see amongst others international registration No. 307293, registered January 4, 1966; and China registration No. 7155424, registered July 14, 2010.
The date of registration of each of the disputed domain names is as follows: <iwcboutique.com>, March 29, 2009; <cartierchina.com> July 2, 2010; <cartierstyle.com> February 20, 2009; <cartierjewellerystore.com> July 19, 2010; and <cartieronsale.com> March 8, 2009.
5. Parties’ Contentions
The Complainant contends that the controlling party for each of the disputed domain names is the same, because: the websites for all the disputed domain names are hosted and made available to the Internet by the same Registrar; the disputed domain names are all recorded as delegated to the same Name Servers; the disputed domain names initially had the same six Internet Protocol (IP) addresses; and they each wholly incorporate the Complainant’s trademarks. Further, the contact addresses supplied by the registrant are, according to the Complainant, false, in that they each correspond to the physical address of one of the Complainant’s own stores.
Further, the Complainant asserts that at least until July 19, 2011 the websites to which the disputed domain names resolve were identical in form and content. On or about September 16, 2011 and October 31, 2011 respectively the websites at the disputed domain names <cartieronsale.com> and <cartierjewelrystore.com> were set up to sell goods which the Complainant asserts are counterfeit. The Complainant asserts that subsequently the website at the disputed domain name <cartieronsale.com> was being redeveloped as “Sunshine Glasses Designer Shades Sunglasses Discount Store” to sell goods bearing third party marks, including those of several of the Complainant’s competitors. Images of the website generated on December 19, 2011, attached to the Complaint, bear this out, according to the Complainant.
The Complainant contends that all the disputed domain names at issue are either identical or confusingly similar to its registered trademarks IWC or CARTIER. The Complainant asserts that the trademarks IWC and CARTIER are both unique and distinctive, and are not registered anywhere in the world by any third party in relation to watches (for IWC) or watches and jewelry (for CARTIER). Both IWC and CARTIER have developed a formidable presence on the Internet, according to the Complainant, by way of the Complainant own websites.
Further, the disputed domain name <iwcboutique.com> wholly incorporates the Complainant’s trademark IWC, and the addition of the generic term “boutique” does not distinguish the disputed domain name from the Complainant’s marks, a fortiori because the Complainant’s goods are commonly sold in boutiques. The addition of the geographical term “China” in the disputed domain name <cartierchina.com> does not distinguish the disputed domain name from the CARTIER trademark, as a geographical term is not distinctive and the Complainant asserts it has a successful and developing business presence in China. Further the Complainant asserts that in relation to <cartierstyle.com> the addition of “style” does not remove substantial similarity given that the term is non-distinctive in relation to luxury goods; in relation to <cartieronsale.com> the addition of “on sale” amounts to an adoption of descriptive material which is not generally sufficient to overcome an allegation that a disputed domain name is identical or confusingly similar to a trademark; and in relation to <cartierjewelrystore.com>, the addition of the term “jewelry” (US spelling of that word) does not prevent but rather enhances likelihood of confusion since it refers to the Complainant’s line of business.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names since it has not granted any third party rights in either trademark. The Respondent is not known by any of the disputed domain names, which have clearly been selected by reference to the Complainant’s trademarks IWC and CARTIER.
Further, the Complainant contends that the live disputed domain names (<cartieronsale.com> and <cartierjewelrystore.com>) are offering goods for sale and therefore the Respondent is not making legitimate noncommercial or fair use of the relevant disputed domain names. The undeveloped disputed domain names (all the other disputed domain names) resolve to websites that provide “pay-per-click” links to third party websites, establishing, the Complainant contends, that the undeveloped disputed domain names are being commercially monetized by way of pay-per-click advertising. The Respondent’s purpose was therefore to confuse Internet users and divert them to its websites for its own benefit and profit, not for any legitimate or noncommercial purpose, according to the Complainant.
The live disputed domain names do not satisfy any of the requirements set out in Oki Data (Oki Data Americas, Inc v ASD, Inc, WIPO Case No. D2001-0903.), the Complainant asserts. This is because goods there offered are, according to the Complainant, counterfeit and therefore not bona fide. In addition the true relationship with the Complainant is not accurately and prominently displayed; rather the websites use a similar deep red colour scheme, suggesting an affiliation with Cartier International AG. The Complainant also asserts that the redeveloped website at <cartieronsale.com> apparently intends to sell goods bearing third party trademarks, including those of competitors, which takes the Respondent’s activities outside the sphere of bona fide offering of goods. The website at <cartierjewelrystore.com> does not include any reference to the relationship between the Respondent and the Complainant.
In relation to bad faith, the Complainant contends that the fact that the Complainant’s trademarks IWC and CARTIER are so well-known in relation to luxury goods, and have been incorporated wholesale in the disputed domain names to be used in connection with the sale of CARTIER branded goods supports a finding of bad faith. Further, by incorporating the Complainant’s trademarks in several domain names, the Respondent has prevented the Complainant from adding them to its own portfolio of domain names closely reflecting its trademarks. The Respondent has thus prevented the Complainant’s development of a valuable marketing tool.
Further, the Complainant contends that the Respondent is intentionally using the disputed domain names to attract and divert consumers searching for the Complainant’s goods and services. Due to the similarities with the Complainant’s trademarks, consumers intending to visit the Complainant’s websites and erroneously entering the disputed domain names in their browsers will instead be taken to the Respondent’s websites. The Complainant asserts that the use of the disputed domain names is clearly intended to deceive and divert customers to the Respondent’s own websites, where goods established by the Complainant to be counterfeit are offered for sale. Thus the Respondent’s activities may tarnish the Complainant’s trademarks by association with inferior counterfeit goods.
The Complainant also contends that by using the disputed domain names, the Respondent creates a likelihood of confusion with its trademarks, deceptively leading consumers to believe that the Respondent is the Complainant, or connected with it or authorized by it. The close resemblance with the Complainant’s trademarks shows the Respondent’s intent to deceive and divert, for the purpose of selling counterfeit goods.
The Complainant also contends that the Respondent has used copyright protected images of CARTIER goods, together with prominent displays of the Complainant’s relevant trademarks on the websites to which the live disputed domain names resolve. A significant amount of other content from the Complainant’s own websites is also said to have been copied, such as certain product care recommendations. This further demonstrates the Respondent’s intention to create confusion, and using images identical to those appearing on the Complainant’s website has previously been held by UDRP panels to indicate an attempt to create a false impression of association.
Finally, the Complainant contends that the undeveloped disputed domain names are used to generate revenue from sponsored links to third parties, constituting registration and use in bad faith, as has been repeatedly found by UDRP panels.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Procedural issue: Consolidation of Proceedings
If a panel determines that it would be procedurally efficient and fair and equitable to all parties, consolidation of multiple registrants as respondents in a single administrative proceeding may be appropriate. The complainant must demonstrate that the domain names or the websites to which they resolve are subject to common control (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei, WIPO Case No. D2011-1541). In the present case, the Complainant advances a number of relevant facts: all the disputed domain names have the same Registrar and the same DNS server; they initially each had the same six IP addresses; they are all concerned with brands owned by the Complainant; the registrant name is given as “Domain Admin” or “Admin Domain” in each case; according to the Complainant the postal addresses given correspond to the addresses of its own sites in various cities, so that there is falsity in each address as it cannot be the real address of the registrant; prior to redevelopment the content of each of the websites was identical (or in fact very close; in the Panel’s observation there appear to be some differences in the hyperlinks although in layout etc they are very similar); and the style and date of redevelopment of <cartieronsale.com> and <cartierjuwelerystore.com> are about the same. The Complainant also asserts that on December 19, 2011 the <cartieronsale.com> website was preparing to sell goods bearing third party trademarks including those of competitors of the Complainant, and the <cartierjewelrystore.com> website was being used to sell counterfeit goods.
When the Center took a snapshot of those two websites on January 23, 2012 both returned an Error message indicating the url could not be retrieved. When the Panel accessed those sites on February 29, 2012, <cartieronsale.com> resolved to a website offering for sale software at very substantial discounts, whereas cartierjewelrystore.com resolved to a website purporting to offer Cartier jewelry for sale and also carrying some other advertising. The Panel also notes that the date of registration of each of the disputed domain names is different: <iwcboutique.com> was created on March 29, 2009; <cartierchina.com> was created on July 2, 2010; <cartierstyle.com> was created on February 20, 2009; <cartierjewellerystore.com> was created on July 19, 2010; and <cartieronsale.com> on March 8, 2009.
Nonetheless the Panel notes that: all five disputed domain names initially had the same six IP addresses; that they all have the same Registrar and DNS server; they all incorporate trademarks belonging to the Complainant or its affiliates; in each case the postal address provided, coincides with the physical addresses of stores of the Complainant; the name of the registrant in each case is Domain Admin or Admin Domain; and the websites to which each disputed domain name resolves have been established to operate in a manner that coincides with two well-known modes of turning a domain name incorporating another’s famous trademark to account. All these facts taken together are sufficient to persuade the Panel that the disputed domain names are subject to common control by the same person or company. Further, the issues to which consideration of each of the disputed domain names gives rise can be satisfactorily dealt with in a single decision.
The Panel therefore allows the consolidation.
B. Identical or Confusingly Similar
The Complainant either directly or through a wholly owned subsidiary owns the trademarks IWC and CARTIER. None of the disputed domain names is identical to either of the Complainant’s trademarks at issue. However, each of the disputed domain names incorporates one of the Complainant’s marks in its entirety as its first and most prominent component. The addition of the generic terms “boutique”, “china”, “style”, “jewelrystore” or “onsale” do not in any case distinguish the respective disputed domain names from the Complainant’s relevant trademarks. Rather, each of the generic terms tends to enhance or confirm the confusing similarity: the Complainant’s goods are commonly sold in boutiques and/or jewelry stores; the Complainant does business in China; its goods are on sale in a number of ways, including online; and jewelry, watches and the like are commonly associated with a certain style or stylishness.
Accordingly the Panel holds that the disputed domain names are confusingly similar to the Complainant’s trademarks IWC and CARTIER as the case may be.
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent has not been authorized or licensed to reflect its trademarks in the disputed domain names, nor has the Respondent obtained any other license or authorization in respect of those trademarks from the Complainant. The Respondent is not known by any of the disputed domain names.
The material advanced by the Complainant establishes that in each case, the Respondent has sought to turn the disputed domain name incorporating the Complainant’s trademark to account, or intends to do so, either by way of click-through payments or by offering counterfeit or unrelated goods for sale. Such practices do not give rise to rights or legitimate interests on the part of the Respondent. There is no evidence before the Panel of a bona fide offering of goods or services on any of the websites resolving to the disputed domain names, nor of any non-profit fair use. Further, the Respondent has apparently supplied false postal address details at the time of registration of the disputed domain names.
Accordingly the Panel holds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
D. Registered and Used in Bad Faith
The trademarks IWC and CARTIER are both well-known in the area of luxury watches and jewelry, as the Complainant asserts. Where such a mark has been incorporated into a domain name, a panel is entitled to conclude the registration was in bad faith. In relation to the disputed domain names, and given the Panel’s finding concerning common control, the addition of the terms “boutique” and “jewelrystore” further supports the conclusion that at the time of registration of all the disputed domain names, the Respondent was well aware of the trademarks concerned and their attendant goodwill around the world. The Complainant’s trademarks are distinctive in relation to watches and jewelry.
Further supporting the conclusion of registration in bad faith, and also supporting a finding of use in bad faith, is the fact that the websites established in respect of each of the disputed domain names imply knowledge of the Complainant, its business of selling luxury watches and jewelry under the CARTIER and IWC trademarks, and the fact the trademarks concerned are well-known and will attract the attention of consumers on the Internet. There is sufficient evidence before the Panel that the Respondent uses or has used each of the disputed domain names either in relation to the sale via the Internet of counterfeit goods, or goods from competing luxury goods businesses, or to generate click-through license fees. Most of the hyperlinks appearing in the various relevant websites are related to watches and jewelry.
Accordingly the Panel holds that all the disputed domain names were registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <iwcboutique.com>, <cartierchina.com>, <cartierstyle.com>, <cartieronsale.com> and <cartierjewelrystore.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Dated: March 5, 2011