World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jacob & Company Watches, Inc. v. Name.com/ xiaoming li

Case No. D2012-2414

1. The Parties

The Complainant is Jacob & Company Watches, Inc. of New York, New York, United States of America, represented by Etude de Me Philippe Azzola, Switzerland.

The Respondent is Name.com of Denver, Colorado, United States of America / xiaoming li of Foshan, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <jacobwatchwholesale.com> is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2012. On December 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2012, 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 December 14, 2012 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 December 17, 2012.

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 December 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2012.

The Center appointed Ian Blackshaw as the sole panelist in this matter on January 21, 2013. 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

In 1986, the Complainant opened its business and began designing products under its brand, JACOB & CO.

In the 1990’s, many music industry icons - as well as up and coming recording artists - were taken by the Complainant’s unique creations. Personalities, such as Whitney Houston and Mary J. Blige, recommended the Complainant’s products to a host of their high profile male and female friends, spawning a buzz throughout the music industry, which continues to resonate today.

In 2002, the Complainant launched its “The Five Time Zone Collection”, which combined bold primary colors with multiple time zone technology. The inspiration for the first designs can be found in the fast-paced, international lifestyles of the Complainant’s clients for whom the said the timepieces were created. These included many well-known names, such as Sir Elton John, David Beckham, Justin Timberlake, Bono, Angela Bassett, Naomi Campbell, Sean Combs and Derek Jeter.

Photos of some of these celebrities appear on the Complainant’s website at “www.jacobandco.com”.

The originality and vision achieved by the Complainant has, in the years since its inception, become an international phenomenon.

Thus, for over a quarter of a century, the Complainant’s name is well-known worldwide as the first choice for discerning individuals whose demand for superb craftsmanship is matched with a taste for visionary artistry in both jewelry and fine watch making.

In this context, since the early 2000’s, the Complainant has registered the trademark JACOB & CO. throughout the world.

The Complainant has continuously used this trademark in several European Countries, Switzerland, in the United States of America and in China, for protecting particularly timepieces and watches (see later).

On February 22, 2002, the Complainant also registered the domain name <jacobandco.com> and one year later, i.e. on November 11, 2003, registered two other domain names: <jacobandco.biz> and <jacobandco.info> in which the trademark JACOB & CO. is used.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

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

The Complainant is the full right owner particularly of the trademark JACOB & CO. protected throughout the world and particularly in the United States, Europe, Switzerland and China and notably:

- JACOB & CO., United States trademark renewal No. 2701274 initially filed on September 4, 2001 protecting in class 14: jewelry, namely watches;

- JACOB & CO., Community trademark registration No. 002908762 of October 25, 2002 protecting particularly in class 14: horological and chronometric instruments;

- JACOB & CO., Swiss trademark registration No. 529604 of July 5, 2004 protecting particularly in class 14 for covering watches,

- JACOB & CO., Chinese trademark registration No. 4176452 of June 28, 2007 protecting particularly in class 14: watches; wristwatches; clocks.

Each of these trademarks JACOB & CO. is continuously and particularly used in the aforesaid countries’ territories on all the goods of the Complainant (e.g. watches, boxes) and, more widely throughout the world.

Examples of the goods of the Complainant bearing the mark JACOB & CO. have been provided to the Panel.

Recently, the Complainant noticed the existence of the website “www.jacobwatchwholesale.com” to which the disputed domain name resolves. On the Homepage of this website, appears the following sentence: “Welcome to Jacob & Co Watches Wholesale Online Shop - Buy Cheap Price Iced Out Jacob & Co Watches Online”. Furthermore, there is a warning notice mentioning that:

“all the Jacob & Co watches sell on www.jacobwatchwholesale.com are replicas / copy / imitations though they look all same as originals We just sell them to whom like Jacob & Co watches but unwilling/cannot to pay very expensive prices. If you want to purchase original authentic/authorized Jacobandco watch, you had better go to the official shop. If you buy from us, that means you accept the watches are replicas”.

Everything is made on this website to create and generate a serious violation of the Complainant’s Intellectual Property Rights and a likelihood of confusion and, such approach constitutes an act of unfair competition which causes important damage to the Complainant’s business activity.

This constitutes therefore an unauthorized use of the Complainant’s name and mark as a domain name to sell counterfeit goods.

The Complainant sent on November 20, 2012, a cease and desist letter to the contact address of [ ]@live.com mentioned in the website to which the disputed domain name resolves with a deadline of answering by November 30, 2012.

The Complainant did not receive any response from the owner of the disputed domain name, but noticed that it is no longer possible, for the time being, to reach this disputed domain name.

Nevertheless, the Complainant made a search on InterNIC and Indom websites which revealed that the latest changes on the disputed domain name website had been made on November 20, 2012, corresponding to the date of receipt of the cease and desist letter sent by the Complainant. This, the Complainant submits, is unlikely to be a mere coincidence but a voluntary and deliberate action of the owner of the disputed domain name to avoid responsibilities. Evidence of this has been provided to the Panel.

Furthermore, the registered business name and the trademark JACOB & CO. of the Complainant are composed of the name of JACOB, which has to be regarded as the distinctive element. Contrary to the elements “&” and, “CO.”, this verbal element does not belong to the public domain nor is descriptive, deceptive for designating a business activity in relation to the manufacture and/or the commercialization of any goods and particularly jewelry, watches. Thus, the word JACOB has to be considered as a fanciful, arbitrary and distinctive element of the combination JACOB & CO.

The Center in its previous decisions has considered a contrario that a copy of a registered trademark incorporated in a domain name may constitute an identical sign. See for e.g.: Automobile Dacia S.A. v. Inan Isik, WIPO Case No. DCH2006-0030 and Volvo Automobile (Schweiz) AG / Volvo Trademark Holding AB v. Auto Import Uster, Yves Allemann Verfahren, WIPO Case No. DCH2006-0020). Amongst other decisions, the Center has decided that the addition of other generic, descriptive elements, did not avoid a likelihood of confusion between the mark and the disputed domain name, see for e.g. Six Continents Hotels, Inc. v. Triptih doo, WIPO Case No. D2012-1600.

These decisions are perfectly and totally applicable to the present case. Indeed, the disputed domain name takes over the distinctive element JACOB in association with the generic and descriptive elements “watch”, “wholesale” which are a direct designation of the goods and activity proposed under the disputed domain name. These words “watch” and “wholesale” are not per se distinctive elements protectable alone as a trademark or as a distinctive sign. Consequently, the addition of these elements “watch” and “wholesale” have no consequence on the identity or at least very close similarity between the disputed domain name and the distinctive signs of the Complainant and are not capable of deleting or avoiding any likelihood of confusion between them. This likelihood of confusion is particularly important and serious as the main and dominant element of the trademark and business name of the Complainant is the word distinctive element of JACOB which is widely used on the products, packaging, promotional material and on the website of the Complainant.

This likelihood of confusion is also strengthened by the presence and meaning of “watch” and “wholesale” which are a direct reference of the Complainant’s field of activity which is working with wholesaler, retailer and distributor. Moreover, it is relevant to notice that the title of “Jacob & Co Watch Wholesale” is also used in the disputed domain name, and this contributes to increase the aforesaid likelihood of confusion.

ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name

There is no relationship between the Complainant and the Respondent and the Complainant did not give any authorization to the Respondent to use its trademark and business name JACOB & CO.

The Respondent does not own any Intellectual Property Rights in the mark JACOB or JACOB & CO.

The Respondent did not use the disputed domain name before the Complainant through its Intellectual Property Rights on JACOB and did not use the mark JACOB in offering goods or services before the registration of the disputed domain name.

iii. The disputed domain name was registered and is being used in bad faith

By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark JACOB & CO.

Such an intention can easily be demonstrated from several facts:

The Complainant has used its trademark for more than 10 years and has used the word “JACOB & CO. ” on many jewelry and horological products. The Complainant has promoted its JACOB & CO. products on its website using the domain name <jacobandco.com> since the early 2000’s. The Complainant has acquired a good reputation for its JACOB & CO. products in its business field of activity and with a large celebrity and general public consumers.

The disputed domain name resolves to a website advertising the same products and services as those claimed by the trademark. The Respondent's website refers to the goods and company of the Complainant.

The Respondent uses the expressions “JACOB & CO”, “JACOBWHOLESALE” on its website “www.jacobwatchwholesale.com”. Again, evidence of this has been provided to the Panel. The Respondent, on its website “www.jacobwatchwholesale.com” makes a direct reference to the Complainant, its activity and goods. This demonstrates that the Respondent knows perfectly the Complainant and its website and infringes intentionally its Intellectual Property Rights in its distinctive trademark JACOB & CO. for selling counterfeit goods.

Consequently, the Respondent takes advantage of the fame and the reputation of the Complainant’s trademark JACOB & CO. in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

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

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the Complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

In the present case, the disputed domain name incorporates the most distinctive part of the Complainant’s well-known registered trademark JACOB & CO. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information on the Complainant and its products and services marketed under its well-known registered trademark JACOB & CO.

The Panel agrees with the Complainant’s contentions, for all the reasons and previous UDRP decisions cited by the Complainant, that the addition to the disputed domain name of the words “watch” and “wholesale” do not provide any distinguishing feature for trademark purposes. Indeed, the addition of these words only adds to the confusion, being descriptive of the Complainant’s business and its products and the distribution channels through which it sells them. See also Six Continents Hotels, Inc. v. Ahmed Marzooq, WIPO Case No. D2012-0757 and Harrods Limited v. Simon Harkin Travel, WIPO Case No. D2004-0546 in which the panel held that:

“Although the [d]omain [n]ame consists of the word ‘harrods’ and the word ‘travel’, it is well settled that a domain name suffix, such as the word ‘travel’ in the present case, is merely descriptive and does not add any distinctiveness to the word ‘harrods’, which is the quintessential and distinctive part of the [d]omain [n]ame. See Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the [p]anel held that ‘… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services’. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the [p]anel held that ‘The [d]omain [n]ame consists of the word HARRODS plus a hyphen and the generic term ’poker’. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark. ”

Likewise, the addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity for trademark purposes. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and well-established registered trademark JACOB & CO., in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights in and prior lengthy commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark JACOB & CO. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known trademark JACOB & CO., which the Panel considers, having regard to the references by the Respondent on its website, to which the disputed domain name resolves (including the warranty notice on the website of the disputed domain name mentioning that the products sold on the website are “replicas/ copy/ imitations” of the Complainant’s products), to the Complainant and its products, as cited above by the Complainant, was not by chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is consequentially tarnishing the Complainant’s well-known registered trademark JACOB & CO. and also the valuable goodwill that the Complainant has established in this trademark through prior lengthy commercial use, as evidenced above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name and using it to sell “replicas/ copy/ imitations” of the Complainant’s products, is trading unfairly on the Complainant’s valuable goodwill established in its well-known registered trademark JACOB & CO.

By registering and using the disputed domain name incorporating the well-known registered trademark JACOB & CO., the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name, which incorporates the Complainant’s well-known registered trademark JACOB & CO., by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant‘s trademark and its business activities in the watch industry over a lengthy period of time.

Also, the Panel finds that the Respondent’s use of the disputed domain name by redirecting Internet users interested in the Complainant’s goods to its own website for commercial gain (for the sale of replicas of the Complainant’s products), not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267. Further, in the view of the Panel, the disclaimer, referred to above, on the Respondent’s website, to which the disputed domain name resolves, does not legitimize the Respondent’s illegitimate situation. See paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Again, the failure by the Respondent to answer the Complainant’s cease and desist letter and the Respondent’s subsequent action in response thereto, both of which have been mentioned above by the Complainant, is also evidence of the Respondent’s bad faith. See America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460 and the UDRP cases therein cited. See also Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

Therefore, taking all these particular facts and circumstances into account and for all the above mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

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 name <jacobwatchwholesale.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: January 22, 2013

 

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