WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Girard-Perregaux SA v. Domain Trooper
Case No. D2001-1432
1. The Parties
The Complainant is Girard-Perregaux SA, a corporation based in Switzerland, having its seat and principal place of business at 1 Place Girardet, 2301 La Chaux-de-Fonds, Switzerland, hereinafter the "Complainant", represented by Anne-Virginie Gaide, B.M.G. Avocats, 8C Av. de Champel, P.O. Box 385, 1211 Geneva 12, Switzerland.
The Respondent is Domain Trooper of 11333 Moorpark St., N. Hollywood, CA 91602, U.S.A., hereinafter the "Respondent".
2. The Domain Name and Registrar
The domain name at issue is <girard-perregaux.com>, hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc., (also known as Verisign, Inc.).
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complainant's complaint by e-mail on December 7, 2001, and by hard copy with annexures on December 10, 2001. On December 11, 2001, the Center transmitted the Acknowledgement of Receipt of Complaint by e-mail to the Complainant.
The Complainant made the required payment to the Center. The formal date for the commencement of this administrative proceeding is December 17, 2001.
On December 12, 2001, the Center transmitted a request for registrar verification to Network Solutions Inc. in connection with this case. On December 14, 2001, Network Solutions Inc., transmitted to the Center by e-mail verification that Network Solutions Inc., is the registrar of the Domain Name, that the Respondent is the current registrant of the Domain Name and that the administrative, billing and technical contacts correspond to the details provided by the Complainant. It also confirmed that the Network Solutions' Service Agreement is in effect, that the Domain Name status is "Active" and that the language of the Service Agreement is English.
Having verified that the complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), on December 17, 2001, the Center transmitted to the Respondent, and to the administrative and technical contacts, the Notification of Complaint and Commencement of Administrative Proceeding, via post/courier and e-mail in accordance with the contact details provided by the Registrar and the Complaint. The notification was also copied to the Complainant via e-mail. The Center advised that the Response was due by January 6, 2002.
Respondent did not submit any Response. Accordingly, the Center sent to the Respondent via e-mail a Notification of Respondent Default on January 8, 2002. This was copied to the Complainant by e-mail. No reply to the Notification of Respondent Default was received from the Respondent.
On January 11, 2002, in view of the Complainant's designation of a single panelist the Center invited Mr. Geert Glas to serve as a panelist and sent him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received Mr. Geert Glas' Statement of Acceptance and Declaration of Impartiality and Independence on January 11, 2001, the Center transmitted to the parties by e-mail on January 16, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date was January 30, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel shall issue its decision based on the Complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules but without the benefit of any Response from the Respondent.
4. Factual Background
The Complainant has been a watch manufacturer in Switzerland since 1791. The complaint is based on trade mark registrations for Girard-Peregaux (with or without hyphen) or GP Girard-Perregaux under international class 14 in many countries including Australia, Brazil, Canada, China, South Korea, Hong Kong, India, Indonesia, International Register (Madrid Agreement), Japan, Saudi Arabia, Singapore, Switzerland, Taiwan, United Kingdom and the USA. The Complainant provided evidence of the Swiss and USA trade mark registrations, copies of which appear in Annex G to the complaint. These are:
1. The word mark GIRARD-PERREGAUX registered in Switzerland under number P-289826 on August 18, 1977.
2. The word mark GIRARD PERREGAUX registered in the USA under number 522,620 on March 21, 1950, and claiming a first use in commerce on June 15, 1929.
The Complainant also offered to submit copies of registration certificates for its trade marks in other countries.
The Respondent registered the Domain Name on October 4, 1999.
There is no relation between the Respondent and the Complainant and there is no evidence that the Respondent is a licensee of the Complainant or that he has obtained authorisation to use the Complainant's trade mark.
The Complainant indicates that it distributes products in all regions of the world and in the year 2000 out of 15,000 watches manufactured, 30% were distributed in North and South America. The Complainant also states that its watches can be found in a number of stores in all the major cities in the USA and attaches a list of retailers who are selling the Complainant's watches in New York and California as Annex E to the complaint.
The Complainant has registered domain names <girard-perregaux.ch> for its Swiss headquarters' web-site, and <girard-perregaux-usa.com> for its web-site in North America.
The Domain Name was connected to a web site that indicated that it was for sale for a price of $5,000 and that offers for less than $3,000 would not be answered. A link marked "legal" led to a page which stated that "All visitors of this web site know that the domain names we sell were formerly used domain names that we are liquidating on behalf of our clients".
5. Parties’ Contentions
The Complainant contends that the Respondent has registered the Domain Name which is identical to trade marks registered and used by the Complainant.
According to the Complainant, the Respondent has no legitimate interest in the Domain Name as it is not authorised by the Complainant to use the name, is not an authorised retailer of the Complainant's products and the Domain Name does not correspond to Respondent's name as shown in the Registrar's WHOIS database. Additionally, the Domain Name is for sale meaning that there is no legitimate use.
The Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant believes that the choice of the words cannot be coincidental as they have no meaning and that the text on the web site offering the Domain Name for sale "makes it perfectly clear that Respondent registered the domain name primarily for selling it to Complainant (who would in all likelihood be the most interested buyer) or to its competitors, for a consideration in excess of the costs related to the registration." The Complainant also argues that by stating that the company who once used the Domain Name is out of business, Respondent took the risk of "misleading users into believing that Complainant had ceased its activities" which is damaging to the Complainant's reputation and tries to create an association between the Respondent's business and the Complainant.
Consequently, the Complainant requires the transfer of the Domain Name to the Complainant.
The Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles that the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trade mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(3) that the Domain Name has been registered and is being used in bad faith.
a. Identical or Confusingly Similar to the Trade Mark
The Domain Name is identical to the Complainant's numerous trade mark registrations.
The Administrative Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
b. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trade mark or to apply for any domain name incorporating its trade mark.
Indeed, as "girard-perregaux" does not have any inherent meaning, any such legitimate right or interest is unlikely to exist.
Moreover, by not filing a response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest he would have in the Domain Name.
Therefore, the Administrative Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
c. Registration and Use in Bad Faith
When registering the Domain Name, the Respondent knowingly and purposefully chose a name which is identical to the Complainant's trade mark. The Respondent could not have been unaware of the Complainant's trade marks. Indeed, the choice by the Respondent of the Domain Name is very unlikely to have resulted from a mere coincidence, especially in view of the fact that the Complainant's trade mark does not have any particular meaning. By doing so, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.
The Panel finds it evident that the Respondent was acting with the intention to sell the Domain Name to the Complainant or to a competitor for valuable consideration in excess of its out-of-pocket expenses. Indeed, the Domain Name leads the visitor to a web-page that features the following:
NO LONGER IN BUSINESS
The Company that once used this domain name is no longer in business!
Buy the domain name that brought you to this site for only $5,000 USD!
...Do Not Email Us With Any Offer Less Than $3,000 USD As We Will Not Respond.
Registration of domain names in view of selling them afterwards does not constitute a bad faith activity per se. However, it does become an activity of bad faith when the domain name owner knows or should have known that he is registering a trademark of a third party. This is clearly the case here.
The Respondent is in default as he did not respond to these proceedings and therefore failed to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the Domain Name. As a consequence, the Respondent has failed to demonstrate any bona fide use of the Domain Name.
Considering the lack of interest of the Respondent in the Domain Name, in the defense of his rights and interests as to the Domain Name and the above facts, the Administrative Panel finds that the Complainant has met its burden under section 4(a)(iii) of the Policy and that the Respondent has registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trade marks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name <girard-perregaux.com> be transferred to the Complainant.
Dated: January 28, 2002