WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Glashütter Uhrenbetrieb GmbH v. Abdulkudus Trading Company Pty Ltd
Case No. DAU2017-0001
1. The Parties
The Complainant is Glashütter Uhrenbetrieb GmbH of Glashütte, Germany, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Abdulkudus Trading Company Pty Ltd of Lidcombe, New South Wales, Australia with registrant contact details given as Virginie Trottier of Strasbourg, France.
2. The Domain Name and Registrar
The Disputed Domain Name <glashuette-original.com.au> is registered with TPP Wholesale Pty Ltd.
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2017. On January 13, 2017, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On January 17, 2017, TPP Wholesale Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 25, 2017, the Complainant filed an amended Complaint to correct an administrative formality. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a further amended Complaint on January 27, 2017.
The Center verified that the further amended Complaint (hereafter referred to as the "Complaint") satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 January 30, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 20, 2017.
The Center appointed Philip N. Argy as the sole panelist in this matter on February 27, 2017. 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.
Although the Complaint names the respondent as "Abdulkudus Trading Company Pty Ltd/Virginie Trottier", in fact the sole registrant of the Disputed Domain Name is Abdulkudus Trading Company Pty Ltd, as the Registrar confirmed in its verification response. Ms. Trottier is simply nominated as the Registrant Contact, Tech Contact, Admin Contact and Billing Contact. As defined in paragraph 1 of the Rules, the "Respondent means the registered holder of a domain name against which a complaint is initiated." The Panel has therefore deleted Ms. Trottier as a named respondent in the proceedings. The Registrar furnished the Center with a street address, email address, and fax number for the Respondent in Strasbourg, France. The Complainant provided the Center with an additional email address.
Delivery of the Written Notice of the Complaint, as required by the Rules, was attempted at the street address in Strasbourg, France, advised by the Registrar. The delivery was refused and the package was thereafter destroyed by the courier at the Center's request. The Center also attempted to fax the prescribed Written Notice of the Complaint to the fax number provided by the Registrar. The case file shows that the fax number given did not answer on five occasions. The case file also shows that the Complaint was sent by email in accordance with the Rules, to four email addresses. In the absence of any indication that the emails were not delivered when transmitted on January 30, 2017, the Panel is satisfied that the Respondent was properly notified of the proceedings in accordance with the Rules.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested.
The Complainant is the owner of the luxury watch brand GLASHÜTTE ORIGINAL and its corresponding logo. The Complainant's predecessors began making timepieces in Germany in the mid-1800s. Since at least 1927, and long prior to the creation of the Disputed Domain Name, the Complainant used the GLASHÜTTE ORIGINAL trademark (the "GO Mark") for the first time in connection with what has become one of the most famous industry leaders in prestigious luxury wristwatches. Since then, the Complainant has continually used the GO Mark in commerce and has gained both common-law and registered trademark rights in respect of it.
The Complainant first registered the GO Mark in Australia in classes 14 and 18 in October 2000 in both word form and in the form of a logo embodying the word mark.
The GO Mark is extensively used, promoted and protected by the Complainant worldwide in relation to luxury wristwatches. The Complainant's corporate website at "www.glashuette-original.com" is used to promote the brand and the Complainant's products and services on the Internet. The Complainant's parent company is The Swatch Group AG which is publicly traded on various stock exchanges around the world. The GO Mark is also extensively promoted on social media platforms and there is a collectors' market for older examples of products bearing the GO Mark.
The Disputed Domain Name was registered on November 3, 2016, and currently resolves to a website with pay-per-click links.
5. Parties' Contentions
The Complaint rests on the three grounds required to be proven by the Policy:
i. The Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii. The Disputed Domain Name was registered or is being used in bad faith.
In support of the first ground the Complainant cited its numerous registered trademarks for GLASHÜTTE ORIGINAL as well as its primary domain name of <glashuette-original.com>.
For the second ground the Complainant relied on the lack of any authorization for the Respondent to make use of the Complainant's mark, as well as the global renown of the Complainant's marks, including in Australia.
For the third ground the Complainant provided evidence of actual bad faith use, as well as relying upon the provisions of the Policy which essentially deem the Respondent to have registered and used the Disputed Domain Name in bad faith based on its attempt to sell the Disputed Domain Name to the Complainant for EUR 5,000 and the significant history of abusive domain name registrations for which the Respondent's email address is the nominated contact email.
The Respondent did not file any Response nor acknowledge any of the Center's communications.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complaint was accompanied by voluminous evidence of the Complainant's extensive trademark rights and usage over nearly 100 years. For the purposes of this proceeding the Panel is overwhelmingly satisfied that the Complainant is the registered proprietor of the word mark GLASHÜTTE ORIGINAL as well as logo marks that include the words GLASHÜTTE and ORIGINAL. The Panel understands that the letter "ü may be represented without the umlaut as "ue", noting in this regard that the Complainant's main website is found at "www.glashuette-original.com".
The Panel is therefore satisfied that the Complainant not only has rights in the registered trademark GLASHÜTTE ORIGINAL but it also has common law trademark rights from extensive usage of GLASHUETTE-ORIGINAL as a variant of its trademark (the "Variant Mark"). Whilst the Complainant argues that the Disputed Domain Name is identical to the GO Mark, the Panel is more comfortable finding them to be confusingly similar. The Panel is also entirely satisfied that, through extensive use, the Complainant has acquired common law rights in the Variant Mark. Accordingly, for the purposes of paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the GO Mark and identical to the Variant Mark, in both of which the Complainant clearly has rights.
B. Rights or Legitimate Interests
In relation to the second limb of the Policy the Complainant first set out to negate the operation of paragraph 4(c) by demonstrating that none of the circumstances referred to in that paragraph apply to the Respondent in the present dispute. The substantial volume of evidence presented by the Complainant supports a finding that the use of the Disputed Domain Name by the Respondent is not a bona fide offering of goods or services within the meaning of the Policy. The pay-per-click website, to which the Disputed Domain Name resolves, promotes businesses and brands competitive with the Complainant in the wristwatch industry, thus diverting customers and potential customers to competing goods and services.
The Respondent is not known by the Disputed Domain Name. Nor is there any evidence that it supplies products under the GO Mark or the Variant Mark whether wristwatches or otherwise. Indeed an online search of the public Australian Business Register using the Australian Business Number included in the registration particulars for the Disputed Domain Name reveals that the Respondent is a company doing business under the trading name Elchami Halal Butchery in Lidcombe, a suburb of Sydney, Australia. In any event, the discrepancy between its apparent business and the use to which the Disputed Domain Name is being put, namely, in promoting timepieces competitive with those of the Complainant, means that the Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant has also satisfied the Panel that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name without intent for commercial gain, thus precluding it from obtaining any protection from paragraph 4(c)(iii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
The evidence in support of the Complainant's position under the third limb of the Policy is overwhelming. First, the evidence shows that a person claiming to represent the Respondent made an unsolicited offer to sell the Disputed Domain Name to the Complainant for EUR 5,000, which is self-evidently in excess of the cost of registration for the purposes of paragraph 4(b)(i) of the Policy. When the Complainant counter-offered to purchase the Disputed Domain Name for EUR 300, the person purporting to represent the Respondent made a counteroffer of EUR 2,000.
Furthermore, under paragraph 4(b)(iv) of the Policy bad faith registration and use is taken to exist when a domain name is used to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a complainant's mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The evidence is clear that this is precisely the use to which the Disputed Domain Name is being put.
Independently of paragraphs 4(b)(i) and (iv), the Complainant has provided ample evidence to demonstrate that the Disputed Domain Name was registered in bad faith – the Panel sees no basis on which a person in Australia, at the time the Disputed Domain Name was registered, could have chosen that form without being aware of the GO Mark and the Complainant. Despite there being no Response, in light of the evidence provided by the Complainant, the Panel considers that any such submission would lack credibility. The same can be said in relation to use of the Disputed Domain Name – there can be no doubt that whoever is controlling the Disputed Domain Name is doing so without the Complainant's authority to divert business from the Complainant in bad faith.
The Panel accordingly finds in the Complainant's favour on all three limbs of the Policy leaving only the appropriate remedy to be determined.
Under paragraph 4(i) of the Policy the remedies available to a successful complainant are limited to cancellation of the disputed domain name or transfer of the registration to the complainant "provided that the complainant is otherwise eligible to hold that domain name". In this respect the Policy differs from the Uniform Dispute Resolution Policy ("UDRP") because there are specified eligibility criteria to be met for registration of third-level domain names under any of the open second-level domains under the ".au" country code Top-Level Domain. For present purposes, as the owner of the current Australian registration for the GO Mark, the Complainant is eligible to become the registrant of the Disputed Domain Name and the Panel so finds.
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <glashuette-original.com.au> be transferred to the Complainant.
Philip N. Argy
Date: March 13, 2017