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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Van Cleef & Arpels SA v. Moniker Privacy Services / Domain Administrator

Case No. D2013-1701

1. The Parties

The Complainant is Van Cleef & Arpels SA of Villars-Sur-Glâne, Switzerland, represented by Winston & Strawn LLP, United States of America.

The Respondent is Moniker Privacy Services of Portland, Oregon, United States of America / Domain Administrator of Santa Ana, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <vanclefandarpels.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2013. On October 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, with a reminder on October 8, 2013. On October 8, 2013, 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 October 11, 2013 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 October 14, 2013.

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 with the amended Complaint, and the proceedings commenced on October 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2013.

The Center appointed Gunnar Karnell as the sole panelist in this matter on November 14, 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

The disputed domain name <vanclefandarpels.com> was created on August 24, 2012.

The Complainant requests that the disputed domain name be transferred to the Complainant.

The Complainant, being the owner of numerous VAN CLEEF & ARPELS trademark registrations around the world, draws attention in particular to its longstanding United States registration of November 4, 1986, No. 1,415,794 as well as its registration of the same trademark designating Switzerland, International Registration of February 12, 1966, No. 329323. The Complainant offers extensive international information about its activities on its website “www.vancleefarpels.com”.

5. Parties’ Contentions

A. Complainant

The Complainant sells its watches, jewelry and perfume around the world. It holds a network of some 125 boutiques and selected authorized retailers in Asia, Europe, North and South America. Its trademarks VAN CLEEF & ARPELS are notorious.

The disputed domain name is confusingly similar to the Complainant’s trademarks VAN CLEEF & ARPELS, notwithstanding the typographical error in “vanclef”, that the non-essential element “&” is replaced by “and” and that the generic Top-Level Domain (gTLD) “.com” has been added.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. In the WhoIs database it has referred to itself as “Domain Administrator” with an email address [ ]@gmail.com. It has never been commonly known by the VAN CLEEF & ARPELS trademarks nor any variations thereof and it has never used any trademark or service mark similar to the disputed domain name, by which it could have become known for more than its infringing use. It has not operated any bona fide or legitimate business under the disputed domain name and it is not making a protected noncommercial or fair use of it. The Respondent uses it to direct visitors to a pay-per-click advertising website for links to third parties’ websites offering for sale products that may or may not compete directly with the Complainant’s competitors and/or which may be counterfeit products. The website at the disputed domain name is also used to advertise links to third-parties’ non-competitor sites, not constituting any bona fide or legitimate business use. The Complainant has not granted the Respondent any license, permission or authorization by which it could own or use any domain name registrations confusingly similar to the VAN CLEEF & ARPELS trademarks.

The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with actual or constructive knowledge of the Complainant’s rights in the VAN CLEEF & ARPELS marks by virtue of the Complainant’s prior registrations in the United States and Switzerland. The disputed domain name has been used to publish a website advertising third parties’ websites offering for sale products of the Complainant’s competitors and/or to direct visitors to competing goods and services of others. Linking to third parties’ websites that offer products that compete with those offered under the Complainant’s mark is disruptive use of the disputed domain name in bad faith to the Complainant’s business. The disputed domain name is so evidently connected to the Complainant and its products that its use by an unconnected party shows acts in opportunistic bad faith. Also, even a preliminary trademark search would have revealed to the Respondent the Complainant’s rights and uses founded on its trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non-contradicted request for transfer of the disputed domain name by written evidence and ample reference to earlier UDRP case decisions, leads the Panel to the following conclusions:

A. Identical or Confusingly Similar

The Panel finds that notwithstanding differences, indicated as irrelevant by the Complainant, between the Complainant’s trademarks and the disputed domain name, the latter is confusingly similar to the registered and internationally well-known trademarks VAN CLEEF & ARPELS in which the Complainant has rights. Their registrations in the United States and in Switzerland took effect long before the registration of the disputed domain name.

The Panel finds that the Complainant has made out the first limb of the Policy.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Complainant has made out the second limb of the Policy in that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finds no indication on the record that might impair the Complainant’s assertions regarding facts leading up to its conclusions that the disputed domain name <vanclefandarpels.com> has been registered and used in bad faith. In particular the Panel notes that the disputed domain name is being used for a website containing pay-per-click links, which falls squarely within the example of bad faith registration and use of paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Complainant has made out the third limb of the Policy and that the Respondent has registered and used 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 <vanclefandarpels.com> be transferred to the Complainant.

Gunnar Karnell
Sole Panelist
Date: November 24, 2013

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