WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Officine Panerai A.G. Corp v. PortMedia Holdings Ltd., Portmedia Domains

Case No. D2013-2206

1. The Parties

Complainant is Officine Panerai A.G. Corp of Steinhausen, Switzerland, represented by Winston & Strawn LLP, United States of America.

Respondent is PortMedia Holdings Ltd., Portmedia Domains of Hong Kong, China, represented by ESQwire.com, United States of America.

2. The Domain Name and Registrar

The disputed domain name <luminorpanerai.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2013, the Registrar 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” 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 Respondent of the Complaint, and the proceedings commenced on December 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2014. The Response was filed with the Center on January 24, 2014.

The Center appointed Roberto Bianchi as the sole panelist in this matter on February 4, 2014. 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

Complainant, Panerai, a division of Richemont, is a luxury watch manufacturer founded in 1860. Once the official supplier to the Royal Italian Navy, Complainant later embarked on creating a highly coveted line of timekeeping models for the consumer market. Complainant’s timepiece collections include Luminor and Radiomir. Complainant operates through a worldwide network of authorized dealers. Complainant’s distribution channel includes Tourneau, London Jewelers, Watches of Switzerland Ltd., and Harrods.

Through its website “www.panerai.com” Complainant provides information about its product lines, manufacturing process, support resources, and worldwide activities.

Complainant owns a registration for the U.S. mark PANERAI, Reg. No. 2340290, with a registration date of April 11, 2000, covering goods and services relating to “boxes and cases for watches; jewelry and precious gem stones” as well as chronometers, watches and clocks. Also, Complainant owns a Swiss registration for the PANERAI mark, Reg. No. 627794, registered on April 2, 2012, covering inter alia wrist watches and bracelets. Further, Complainant owns the mark LUMINOR, U.S. Reg. No. 2516018, registered on December 11, 2001, covering jewelry and watches. Also, Complainant owns the mark PANERAI, Hong Kong Reg. No. 300041660, registered on July 3, 2003, covering watches and jewelry. Finally, Complainant owns the Hong Kong mark LUMINOR, Reg. No. 199803559, with a registration date of March 19, 1997, covering watches and jewelry of International Class.

The disputed domain name was registered on May 4, 2005.

On December 30, 2013, as a result of its lookup visit to the website at the disputed domain name, the Center provided a printout of the main page of the “www.luminorpanerai.com” website showing, inter alia, the following “related links”: “Luminor Panerai”, Watches”, “Invicta Watches”, “Mens (SIC) Watches on Sale”, “Top Mens (SIC) Watches”, “Buy Luxury Watches”, “Discount Watches”, New Rolex Watches”, as well as several “sponsored listings” unrelated to Complainant or its products. This web page also contains legends stating, “BUY THIS DOMAIN The domain luminorpanerai.com may be for sale by its owner!” and, “This page provided to the domain owner free by Sedo's Domain Parking. Disclaimer: Domain owner and Sedo maintain no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation.”

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

The disputed domain name is identical or confusingly similar to a trademark or in which Complainant has rights. Due to the extensive use and registration of the PANERAI and LUMINOR Marks around the world, Complainant is confident that the PANERAI and LUMINOR marks would be considered well known and/or famous under the laws of Hong Kong, the United States and Switzerland. Further, Complainant is confident that the PANERAI and LUMINOR Marks should be afforded the status of notorious marks and should therefore enjoy liberal protection under the Paris Convention.

The disputed domain name is confusingly similar to the PANERAI and LUMINOR Marks because it fully incorporates the mark; it adds the term “Luminor,” which is a specific line of watches sold under the PANERAI and LUMINOR Marks and is therefore likely to cause further confusion; and adds the generic Top Level Domain “.com”. Such modifications do not make the disputed domain name less confusing for purposes of the confusingly similar analysis.

Respondent lacks rights or legitimate interests in the disputed domain name. Respondent, who uses the e-mail address […]@whoisprivacyprotect.com and is hiding behind a privacy service, has never been commonly known by any of the PANERAI and LUMINOR Marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted herein.

Respondent has never operated any bona fide or legitimate business under the disputed domain name. Respondent has used the disputed domain name to publish a pay-per-click website that advertises links to third-party websites offering products for sale that compete directly with Complainant and/or which may be counterfeit knockoffs of Complainant’s own products. Such use does not constitute a bona fide or legitimate business use.

Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the PANERAI and LUMINOR marks.

The disputed domain name was registered and is being used in bad faith. Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the PANERAI and LUMINOR marks by virtue of Complainant’s prior registration of those marks in Hong Kong, where Respondent is located, Switzerland, where Complainant is located, and the United States, where the Registrar is located. Registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Policy paragraph 4(a)(iii).

Also, the disputed domain name has been used to publish a website advertising links offering for sale products of Complainant’s competitors and/or counterfeit knock offs of Complainant’s own products or to direct visitors to competing goods and services of others. Such activities fall squarely into the explicit example of bad faith registration and use found in the Policy paragraph 4(b)(iv).

There is no reason for Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of Complainant’s PANERAI and LUMINOR marks. As such, the nature of the domain name itself evidences bad faith registration and use.

Finally, even if Respondent argues that he was somehow unaware of Complainant’s rights in the PANERAI and LUMINOR Marks, had Respondent conducted even a preliminary trademark search, it would have found Complainant’s various trademark registrations in the PANERAI and LUMINOR marks and the websites associated with the marks, and numerous additional references in commerce, on the Internet, and in publications, evidencing Complainant’s use of its marks in connection with Complainant’s goods and services.

B. Respondent

In its Response, Respondent makes the following contentions:

Respondent denies that it registered the disputed domain name in bad faith. Respondent registered this domain name when it was deleted and expired and became available for registration, on May 4, 2005.

Complainant contends that in lieu of defending the action, it advised Complainant’s Counsel that it would voluntarily transfer the disputed domain name to the Complainant. Unfortunately, Complainant refused to accept the transfer and declined to suspend the case.

Respondent had no intent to target Complainant or improperly use its trademark when it registered the disputed domain name, did not register it with Complainant’s trademark in mind, and never intended to target or profit from Complainant’s trademark. Nevertheless, in the interest of saving the cost involved in defending its rights to the disputed domain name and avoiding a further waste of the Panel’s and the parties’ resources, Respondent stipulates for the Panel to transfer the disputed domain name to Complainant. Through this pleading, Respondent reiterates its offer to transfer the disputed domain name and allow Complainant to receive refund of its filing fees before a Panel is appointed. Where a respondent stipulates to transfer a domain name to a complainant, the panel may immediately transfer the domain name, without issuing an opinion on the merits of the case. Accordingly, Respondent requests that the Panel issue an order transferring the disputed domain name to Complainant, without undergoing an analysis under Policy.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case that:

(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 its Response, Respondent agrees to the relief sought by Complainant, in what appears to be an unconditional and unilateral consent to transfer the disputed domain name to Complainant.

In the opinion of the Panel, the fact that Respondent also asserts that it had no intent to target Complainant or improperly use its trademark when it registered the disputed domain name, and that it did not register it with Complainant’s trademark in mind, and never intended to target Complainant or profit from Complainant’s trademark, does not deprive Respondent`s unconditional consent to transfer of its efficacy. In order to grant the remedy of transfer requested by Complainant, the Panel need not address the elements of Policy paragraph 4(a) listed above. See Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207 (holding that because respondent has consented to the relief requested by complainant, it is not necessary to review the facts supporting the claim); see also Infonxx.Inc v. Lou Kerner, WildSites.com, WIPO Case No. D2008-0434 (considering that a genuine unilateral consent to transfer by the respondent provides a basis for an order for transfer without consideration of the paragraph 4(a) elements, citing The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 and Williams-Sonoma Inc., supra.)

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, <luminorpanerai.com>, be transferred to the Complainant.

Roberto Bianchi
Sole Panelist
Date: February 17, 2014