WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cartier International A.G. v. Domain May be for Sale, Check Afternic.com, Domain Admin, Domain Registries Foundation

Case No. D2016-1534

1. The Parties

The Complainant is Cartier International A.G. of Steinhausen, Switzerland, internally represented.

The Respondent is Domain May be for Sale, Check Afternic.com, Domain Admin, Domain Registries Foundation, Domain Registries Foundation of Panama, represented by Willenken Wilson Loh & Delgado, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cartierwomensinitiaitive.com> 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 July 27, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2016. The Response was filed with the Center on August 22, 2016.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 5, 2016. 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 jewelry and watch manufacturer founded in 1847. It is also involved in the promotion of arts and social causes, being involved in a number of programs and initiatives such as the Fondation Cartier pour l’ art Contemporain, the Cartier Charitable Foundation and notably the Cartier Women’s Initiative – an ongoing program aimed at encouraging and inspiring woman entrepreneurs through monetary awards (Annex 6 to the Complaint).

In addition to several other trademark registrations, the Complainant is the owner of:

- the International registration No. 307,293 for CARTIER registered on January 4, 1966 and successively renewed;

- the Panama trademark registration No. 21066 for CARTIER, registered on November 24, 2976 and successively renewed; and

- the United States of America trademark registration No. 759,201 for CARTIER, registered on October 29, 1963 and successively renewed (Annex 5 to the Complaint).

The disputed domain name, registered on May 19, 2016, currently does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it operates close to 300 boutiques in 125 countries across the six continents, in addition to selling its jewelry and watches through boutiques and other high-end retailers. Furthermore, the CARTIER brand is ranked number 58 among the Interbrand’s Top 100 Best Global Brands for 2014 and one of the top five best luxury brands.

According to the Complainant, the disputed domain name is substantially identical and confusingly similar to its famous CARTIER trademark, being the non-distinctive, descriptive terms (“womensinitiaitive”) a misspelt reference to the long established “Cartier Women’s Initiative” associated with the Complainant.

As to the absence of rights or legitimate interests, the Complainant argues that:

i. the Respondent has never been commonly known by the CARTIER trademark, nor has it acquired any registered trademarks or trade names corresponding to the disputed domain name;

ii. the Respondent has never operated a legitimate business under the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name (past use indicated pay-per-click linking to third parties websites that may compete with the Complainant), and

iii. the Respondent registered the disputed domain name without the Complainant’s authorization, license or permission.

Furthermore the Complainant asserts that the Respondent registered the disputed domain name with actual or constructive knowledge of the Complainant’s trademark in view of the Complainant’s prior trademark registrations in the United States of America, to where the Respondent’s website was targeted and the Registrar is located as well as in Panama, where the Respondent is located. Moreover, in view of the nature of the disputed domain name there is no reason for the Respondent to have registered it other than to trade off on the substantial reputation and goodwill of the Complainant’s mark.

As to the use of the disputed domain name in bad faith the Complainant contends that the website that resolved from it contained links to third-party websites offering for sale competing products and services.

Lastly, if the Respondent had conducted a preliminary trademark search, it would have found the Complainant’s various trademark registration and websites associated therewith.

B. Respondent

The Respondent claims to be a Panamanian company trading in the acquisition and holding of domain names in high volume.

According to the Respondent, it has a dispute resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe correspond to a trademark and it typically agrees to voluntarily transfer domain names in an effort to avoid litigation and administrative proceedings.

The Respondent furthermore states that it contacted the Complainant offering the voluntary transfer of the disputed domain name but the Complainant never responded.

As a conclusion, without admitting fault or liability and without substantively responding to the allegations raised by the Complainant, the Respondent accepts to voluntarily transfer the disputed domain name without findings of fact or conclusions as to the merits of the case under the URDP.

6. Discussion and Findings

Firstly the Panel has to address the Respondent’s request of the voluntary transfer of the disputed domain name without findings of fact or conclusions as to the merits of the case under the UDRP.

A Panel may at its discretion order transfer of the domain name if the respondent has given its consent and unambiguous consent to transfer without findings under the Policy, paragraph 4(a). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Some panels have declined to grant a remedy solely on the basis of respondent’s consent where the complainant objects or because the panel finds a broader interest in reaching a substantive determination.

In the present case, having the Respondent declared that it exploits the business of acquiring and holding domain names in high volume this Panel finds a broader interest in reaching a substantive determination on the merits, given that those who choose to exploit the registration of domain names for profit – commonly referred to as domainers – should make the necessary preliminary trademark searches to avoid undue domain name registrations.

As the panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007‑1141 stated, “[a]lthough there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”

Therefore, considering all the circumstances of the present case, the Panel will proceed to a decision on the merits, and analyze the three requisite elements under paragraph 4(a) of the Policy which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(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.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Complainant has established its rights in the CARTIER trademark (Annex 6 to the Complaint).

The addition of the generic term “womensinitiaitive” is not sufficient to escape a finding of confusing similarity, especially considering that the Complainant has been sponsoring its “Cartier Women’s Initiative” program. In this Panel’s view, the disputed domain name clearly characterizes what has been commonly referred to as typosquatting where the Respondent in view of the misspelling of “initiative” created the disputed domain name which can be easily associated by Internet users with the Complainant and its program “Cartier Women’s Initiative”.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) 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.

In the present case, the Respondent used the disputed domain name in connection with pay-per-click links to third party websites that may compete with the Complainant’s products and services what clearly cannot be considered a bona fide offering of goods or services.

In addition to that, the absence of any indication that the Respondent has been commonly known by the disputed domain name, or that it has acquired any registered trademarks or trade names corresponding to the disputed domain name, as well as the Complainant’s statement that no authorization, license or permission had been given for the Respondent to register and use the disputed domain name corroborate with the indication of the Respondent’s lack of rights or legitimate interests in the disputed domain name.

Moreover, the Panel notes that the Respondent has not asserted any rights or legitimate interests in respect of the disputed domain name in its Response. On the contrary, the Respondent has consented to the transfer of the disputed domain name, which may demonstrate that it has no legitimate interests in the disputed domain name.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the use of the disputed domain name in connection with a parked website that displays links or pay-per-click advertisements related to the Complainant’s business characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant’s trademark.

Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s trademark, thus unfairly capitalizing on the CARTIER trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.

For the reasons above, the Panel finds that the Respondent’s amounts to bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.

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

Wilson Pinheiro Jabur
Sole Panelist
Date: September 19, 2016