WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harry Winston Inc. v. Didi Nurrohman
Case No. D2012-2050
1. The Parties
The Complainant is Harry Winston Inc. of New York, New York, United States of America, represented by Dreitler True LLC, United States of America.
The Respondent is Didi Nurrohman of Depok, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <harrywinston-engagementrings.org> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, the Registrar 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 October 30, 2012. An email communication from the Respondent was received by the Center on October 30, 2012. The Center acknowledged receipt of the Respondent’s communication and transmitted a possible settlement email to the Parties on October 30, 2012. On November 5, 2012, an email communication from the Complainant was received by the Center. The Center acknowledged receipt of and replied to the Complainant’s communication.
In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on November 20, 2012.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 23, 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 a New York corporation which in conjunction with a related Swiss company, Harry Winston S.A., has for many years been widely-known for supplying high-class jewelry to celebrities, royalty and movie stars worldwide. The Complainant’s documentation shows that the WINSTON or HARRY WINSTON marks for diamonds, watches and other jewelry products have acquired a worldwide recognition. From 1998 to 2011, sales of Winston products have totaled over USD 2.4 billion.
The Complainant owns United States registered trademarks for WINSTON, HARRY WINSTON, HARRY WINSTON DIAMOND, HW HARRY WINSTON. The oldest of these registrations dates back to 1968.
The Complainant is well-known for marketing engagement rings as part of its jewelry range. A significant portion of its website “www.harrywinston.com” is devoted to engagement rings.
The Respondent registered the disputed domain name on May 27, 2012. On the website accessed by the disputed domain name are links to jewelry-related websites of competitors of the Complainant as well as advertisements for other companies that sell engagement rings. The main page contains links to articles that purport to contain information on Harry Winston engagement rings.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The addition of the generic words “engagement rings” to the trademark stresses the link between the famous jewelry firm and its engagement rings which are one of the Complainant’s main selling items.
The Respondent has no rights or legitimate interests entitling it to reflect the Complainant’s trademark in the disputed domain name. The Complainant gave the Respondent none. None of the situations in paragraph 4(c) of the Policy have been made out by the Respondent.
The disputed domain name was registered and is being used in bad faith. The Respondent is confusing Internet users into thinking that his website is associated with or endorsed by the Complainant. The Respondent is profiting from such confusion. The Complainant’s marks are being diluted by his activities. The Complainant’s trademarks and products are well-known worldwide and the Respondent is capitalizing on the fame of the Complainant’s marks and business.
The Respondent did not reply to the Complainant’s contentions. However, on October 30, 2012, he emailed the Center saying that he had deleted the web address and apologizing for the “accident in our trademark domain name ‘Harry Winston’”. He did not offer to transfer the disputed domain name to the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a 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 the disputed domain name is confusingly similar to the Complainant’s registered trademark HARRY WINSTON. This is so because the added generic words in the disputed domain name are connected with a type of jewelry for which the Complainant is well-known.
Also, many decisions under the Policy show that if a domain name incorporates a mark in its entirety, it is confusingly similar despite the addition of other words. See Dell Inc. v George Dell and Dell Net Solutions, WIPO Case No. D2004-0512.
Paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights or legitimate interests, such as would permit the Respondent to reflect the Complainant’s trademark in a domain name and has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
In the absence of a formal Response on the merits and in the absence of any claim by the Respondent under paragraph 4(c) of the Policy, the Panel is able to conclude that paragraph 4(a)(ii) of the Policy has been satisfied.
Had the Respondent chosen to file a Response, it could have sought to establish one of the three limbs of paragraph 4(c) of the Policy which could have provided a defence. However, it has not done so.
C. Registered and Used in Bad Faith
The Panel has no doubt that the disputed domain name was registered and is being used in bad faith.
This is yet another example of an opportunistic cybersquatter using a well-known brand name and trademark in the hope of attracting Internet users who might believe that the Respondent has some connection with or endorsement from the Complainant.
By offering products online of competitors of the Complainant, the Respondent is tarnishing and diluting the Complainant’s trademarks. It defies belief that the Respondent knew nothing of the Complainant at the time he registered the disputed domain name. Otherwise, why would he advertise jewelry on his website? The “.org” suffix is not relatively often used for websites which offer goods for sale and rather leads to the inference that the Respondent had tried to register the “.com” version but had been unsuccessful.
Paragraph 4(a)(iii) of the Policy is easily established in this case.
The Respondent’s email to the Center referred to above seems to imply that he has seen the error of his ways in seeking to benefit from the fame of the Complainant’s trademarks.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <harrywinston-engagementrings.org> be transferred to the Complainant.
Sir Ian Barker
Date: December 5, 2012