WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

APM MONACO SAM v. Gregory Jackson, Cavages co.LTD

Case No. D2019-1330

1. The Parties

Complainant is APM Monaco Sam, Monaco, represented by Advance China IP Law Office, China.

Respondent is Gregory Jackson, Cavages co.LTD, United States of America.

2. The Domain Names and Registrar

The disputed domain names <apmjewellery.com>, <buyampmonaco.com>, and <mcapmjewellery.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2019. On June 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 12, 2019, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 12, 2019.

The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on July 24, 2019. 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 operates the jewellery brand APM MONACO. Complainant was created in 1982. Complainant has opened over 200 retail stores around the world, covering 25 countries and districts, including Monaco, United States of America (“US”), United Kingdom, France, China, Singapore, Australia, etc. The US is a significant market with multiple storefronts. The products of Complainant are also published and promoted on Complainant’s website “www.apm.mc”.

Complainant is the proprietor of the following trademark registrations (hereinafter the “Trademark”):

- International Registration No. 1280118, designating 25 countries, including the European Union and the US registered on September 17, 2015, for goods in class 14 (inter alia jewellery goods);
- United States trademark No. 5,047,470, for goods in class 14 (inter alia jewellery goods), enjoying the priority date of the aforementioned International Registration;

The disputed domain names <apmjewellery.com>, <buyampmonaco.com>, and <mcapmjewellery.com> were registered on April 25, 2019, April 29, 2019 and May 15, 2019 respectively. The disputed domain names resolved to websites that had a similar look and feel to the Complainant’s official website. The disputed domain names no longer resolve to active websites.

5. Parties’ Contentions

A. Complainant

Complainant first argues that the disputed domain names are confusingly similar to Complainant’s well known Trademark. Since the domain name suffix generic Top-Level Domain “.com” does not act as distinguishing meaning, the main parts of the disputed domain names are “apmjewellery”, “buyampmonaco”, and “mcapmjewellery”. “Jewellery” is the descriptive term for the goods Complainant sells, “buy” is a descriptive verb, and “mc” is shorten for Monaco. This means that these terms cannot act as distinguishing parts. “apm”, “apmmonaco” and “apm” are respectively being the dominant part of the disputed domain names. The disputed domain names <apmjewellery.com> and <mcapmjewellery.com> have the same dominant feature as that in the Trademark, and <buyampmonaco.com> consists of an obvious misspelling of the Trademark. Therefore, Complainant affirms that the disputed domain names would easily cause confusing similarity with Complainant’s mark. The high reputation of the Trademark further reinforces such confusion.

Complainant states that Respondent has no trademark or service mark right in respect of the disputed domain names. Complainant has never licensed or authorized Respondent to use the Trademark or register a relevant domain name. Respondent is not in possession of a business name or personal name concerning with “apmjewellery”, “mcapmjewellery”, or “buyampmonaco”. The name of Respondent is totally different from the Trademark. Respondent has no rights or interests in the disputed domain names based on re-selling products with the Trademark on its websites. Without authorization expressed by trademark holder, the act of reselling does not directly generate any right for the seller to use or register a trademark as domain name and Respondent has neither been well known in the public nor successfully obtained legitimate rights and interests by using the disputed domain names. Respondent offers goods on the websites under the disputed domain names for commercial gain rather than bona fide. The front page of the websites has been significantly marked with the Trademark in the prominent place. Moreover, Respondent advertises and sells “APM MONACO” jewellery in the websites, with pictures that are exactly the same as those published on Complainant’s official website. Respondent is using the disputed domain names for a website including Complainant’s Trademark significantly marked on the front page and exactly the same pictures as those published in Complainant’s official website.

Respondent registered and uses the disputed domain names while being aware of the Trademark, which constitutes bad faith. After continuous and extensive market operation and promotion in the global market, especially in the US market, the Trademark has been well known and recognized in US as well as around the world.

At the time of registering the disputed domain names, Respondent should have been aware of the Trademark. It implies that Respondent should have known the Trademark well, which is sufficiently proved by the contents of the websites. Respondent used and published the Trademark in the prominent place at the website home page, advertised, and sold jewellery goods, which were branded with the Trademark, and used the same brand introduction and promoting pictures upon which Complainant owns prior copyrights.

Respondent registered the disputed domain names primarily for the purpose of disrupting the normal business of Complainant, which constitutes bad faith.

To promote the products globally, Complainant has already registered and built up its official website “www.apm.mc”. However, Respondent named the disputed domain websites as “APM Monaco – Fashion Jewellery Brand from Monaco”, placed the Trademark at the remarkable position of the websites and promoted “APM MONACO” jewellery for sale, but with lower prices. Such domain names and websites undoubtedly confuse the Internet users and severely affect the normal promotion and business of Complainant.

Complainant has never authorized Respondent to use their APM MONACO trademark or to sell APM MONACO jewellery. As seen in the overall layouts and contents of the websites, Respondent deliberately copies Complainant’s official website, attempting to deceive Internet users and to make them mistakenly believe that the websites of the disputed domain names are authorized by or related to Complainant to some extent.

By using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites of disputed domain names, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of products and services on the websites.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

- the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

Where Complainant holds a registered Trademark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.

In cases where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will be normally considered confusingly similar to that mark for purpose of UDRP standing.¹ A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.²

The disputed domain names <apmjewellery.com> and <mcapmjewellery.com> have the same dominant feature as that in the Trademark and <buyampmonaco.com> consists an obvious misspelling of the Trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in a disputed domain name. ³

Once a complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained their burden under the second element of the UDRP.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. ⁴ Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.⁵

Based on the record in this proceeding the Panel considers it most likely that Respondent was aware of Complainant and the Trademark when registering the disputed domain names. In the absence of any reply by Respondent, the Panel concludes that Respondent registered the disputed domain name in order to trade on the goodwill and reputation of Complainant’s mark through the creation of Internet user confusion. ⁶

The Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The disputed domain names were registered years after Complainant first registered its Trademark.

It is clear from the evidence on the record provided by Complainant with respect to the extent of use of its Trademark that the Trademark has been well known and recognized in US as well as around the world.

At the time of registering the disputed domain names, Respondent should have been aware of the Trademark. It implies that Respondent should have known the Trademark well, which is in any event independently proved by the contents of the websites. Respondent named the disputed domain websites as “APM Monaco – Fashion Jewellery Brand from Monaco”, used and published the Trademark in the prominent place at the website home page; advertised and sold jewellery goods, which were branded with the Trademark, with lower prices than Complainant’s prices, and copies Complainant’s official website by copying the overall layouts and contents of Complainant’s websites.

Respondent induces Internet users to mistakenly believe that its websites are Complainant’s official website, by creating confusion, for the purpose of attracting Internet users, especially in US, to visit the websites under the disputed domain names, buy goods displayed on the websites and having monetary gain. By using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites of disputed domain names, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of products and services on the websites.

Respondent registered the disputed domain names primarily for the purpose of disrupting the normal business of Complainant, which constitutes bad faith.

For all these reasons and in the absence of any countervailing evidence, the Panel is satisfied that the disputed domain names are being used in bad faith.

The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.

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 names, <apmjewellery.com>, <buyampmonaco.com>, and <mcapmjewellery.com> be transferred to Complainant.

Richard C.K. van Oerle
Sole Panelist
Date: August 2, 2019

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.