WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rivoli Group LLC v. Brilliant Watches Co. L.L.C.
Case No. D2010-1654
1. The Parties
Complainant is Rivoli Group LLC of Dubai, United Arab Emirates represented by Al Tamimi & Company, United Arab Emirates.
Respondent is Brilliant Watches Co. L.L.C. of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <rivoliwatch.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2010. On October 1, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 1, 2010, GoDaddy.com, Inc. 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 October 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2010. No formal Response was filed with the Center, however on October 23, 2010, Respondent sent the email communication described below.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on November 4, 2010. 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 owns numerous trademarks that include the term “Rivoli.” Many of these rights have only been registered by Complainant in the past few years. However, there is a history of litigation over the trademark RIVOLI between Complainant and a company that appears related to Respondent.1 Prior decisions in the Abu Dhabi Courts of Appeal and Supreme Federal Court have established that Complainant owns trademark rights in the RIVOLI mark as well as trademark rights in the mark RIVOLI in combination with a design, Abu Dhabi Civil Appeal 920-2000, April 4, 2004; Appeal No. 264 of 26 Supreme Justice Civil Cassation, January 29, 2008. In that litigation, commenced in 2000, the Supreme Court also ordered cancellation of registrations of the RIVOLI mark previously made by the company related to Respondent.
Complainant also owns several domain names containing the term “rivoligroup.”
The disputed domain name was registered August 8, 2000 and presently re-directs to a website at “www.brilliantwatches.com” promoting watches, including watches bearing the RIVOLI mark.2
5. Parties’ Contentions
Complainant avers that it has used the RIVOLI mark for its business in luxury watches and other goods in the United Arab Emirates since 1976; that it presently sells the marked goods through over 200 stores throughout the United Arab Emirates and Arabian Gulf states; that it employs 900 people; that it has a website that averages 850,000 visits per month and that its business is prominent in the field of watches, among other things. Complainant provides extensive description and proof of its promotional activities under the “Rivoli” name and avers that it enjoys annual sales revenues of between two hundred and two hundred fifty million USD.
Complainant avers that it discovered the existence of the disputed domain name in May 2010.
Complainant appends records evidencing several recent registrations for trademarks including the term “Rivoli,” made in various countries. Complainant also appends trademark registration listings for the mark RIVOLI (single word) alone in neighboring Gulf states, for example in Oman (dated May 6, 2000, registration number 22401 in class 42 and 22402 in class 37), Bahrain (dated May 13, 2000, registration number 1081 in class 42 and number 1082 in class 37). These latter registrations are in the name of International Watch Co. LLC., however, and not in Complainant’s name.3
In relatively detailed legal allegations, Complainant contends that the disputed domain name is confusingly similar to marks in which Complainant has rights, that Respondent has no rights or legitimate interests in use of the disputed domain name and that Respondent ‘s registration and use of the disputed domain name is in bad faith under the Policy.
On the basis of the above, Complainant requests transfer, or in the alternative, cancellation of the disputed domain name.
Respondent’s sole response to the Complaint was a brief email to the Center on October 23, 2010, which, owing to its brevity, is quoted below:
“With the reference of above case we like to inform you that the Rivoli Brand Watches we are selling since 1994 in different markets such as U.A.E., UK, Russia, Qatar, Saudi Arabia, Kuwait, Pakistan, Jordan, India and many african countries. Our Brand registration in U.A.E. was cancelled and we stop selling in U.A.E. market. But we still have RIVOLI Brand registered in Pakistan, India, Kuwait and also in Swiss. we are actively selling this brand in Pakistan.till date. The “www.rivoliwatch.com” we register to promate our brand in different market and not in any bad intentions. Kindly go ahead with single panelist and do the need full.”
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not make a formal response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). 4
A. Identical or Confusingly Similar
Although the disputed domain name <rivoliwatch.com> is not identical to Complainant’s trademarks, the Panel agrees that the disputed domain name is confusingly similar to Complainant’s RIVOLI trademark.
The Panel first notes that the registrations described above from the year 2000 for the mark RIVOLI are in the name of International Watch Co. LLC., and not in Complainant’s name. While the Complaint alleges that registrations belonging to companies associated with its corporate group are attached to the Complaint, the Complaint omits any information respecting the relationship between Complainant and the International Watch Co. LLC. Consequently the Panel disregards those registrations for the purpose of assessing standing under the first element.
In these circumstances, however, as noted above, the Abu Dhabi courts’ confirmation of Complainant’s trademark rights in the course of previous litigation is sufficient to establish Complainant’s rights in the RIVOLI mark for the purposes of the Policy.
Panels disregard domain name suffixes in evaluating confusing similarity. E.g., VAT Holding AG v. vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The disputed domain name in dispute incorporates Complainant’s RIVOLI trademark in its entirety, adding only the descriptive word “watch.” The Panel finds that Respondent’s addition of the descriptive term does not negate the confusion created by Respondent’s complete inclusion of the RIVOLI trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
The Panel agrees with the Complainant that the addition of the descriptive term instead increases the risk of confusion experienced by Internet users because the disputed domain name implies that Respondent is offering Complainant’s goods. E.g., bwin Interactive Entertainment AG v. Andrei Gladchish, WIPO Case No. D2009-0167 (citrin Accor Société Anonyme à Directoire et Conseil de surveillance v. Tigrerai Partner, WIPO Case No. D2002-0625).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondent is not commonly known by the disputed domain name, and that Respondent has no license or authorization from Complainant to use the RIVOLI trademark. In the absence of opposition to these allegations by Respondent, the Panel accepts as true these undisputed factual averments by Complainant.
Annexes to the Complaint and publicly available evidence viewed by the Panel online show that the disputed domain name is being used to promote products of Complainant’s competitors, including Respondent, and watches alleged in the promotions to be RIVOLI watches. The Panel therefore finds that this use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. E.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784.
Finally, the Panel agrees with Complainant that the record establishes that there is no bona fide offering of goods or services by Respondent. While Respondent contends in its email to the Center that it sells “Rivoli Brand Watches,” in the civil litigation in the United Arab Emirates courts, it was alleged that the watches were not genuine. In the absence of any proof by Respondent to the contrary, the Panel infers from this and other circumstances on the record that Respondent fails to establish that it is making bona fide offers of products under the RIVOLI trademark; Respondent’s commercial activities undertaken through use of the disputed domain name are not bona fide under the Policy.5 See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374, cited in Hoffmann-La Roche Inc. v. Aneko Bohner, supra.
Filing no substantial response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oreal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a lack of conceivable good faith uses for the domain name or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers based on the record before it, and on the basis of a balance of probabilities, that Respondent was aware of Complainant’s reputation and product name which was in widespread use in the United Arab Emirates many years before Respondent’s registration. In fact, the disputed domain name was registered a few months after Respondent’s apparently related company was sued over the RIVOLI mark in the Abu Dhabi courts.
The Panel further infers, based on the record and on a balance of probabilities, that Respondent registered the disputed domain name seemingly intending to trade on the value of Complainant’s reputation. The Panel finds, based on the record and the same evidentiary standard mentioned above, that the Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s brand. The Panel concludes, therefore, that the disputed domain name was registered in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain name by Respondent, as elaborated below.
Currently available online screens from Respondent’s website show that the disputed domain name is used to promote sales of its watches, which are in competition with Complainant’s watches. This constitutes use in bad faith when considered along with all the other circumstances of this case. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
With the addition of the word ”watch” to Complainant’s RIVOLI trademark, the Panel finds, based on the record before it, that there is no conceivable legitimate use for the domain name <rivoliwatch.com> by Respondent. See Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
The Panel therefore concludes, on the basis of a balance of probabilities and the record before it, that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <rivoliwatch.com> be transferred to Complainant.
Nasser A. Khasawneh
Dated: November 18, 2010
1 Exhibits including official certificates by UAE authorities appear to establish common majority share ownership between the respondent in the referenced civil court cases, Brilliant Electronics Est., and Respondent in this proceeding, Brilliant Watches Co. L.L.C.
2 The present content of the website is consistent with Complainant’s exhibits of the websites as it allegedly appeared on September 27, 2010. The Panel has undertaken limited research by visiting the website to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
3 The Omani and Bahraini registrations are considered by the Panel below.
4 Although Respondent refrained from filing a Response, the Panel has considered the content of Respondent’s email communication to the Center.
5 Moreover, since Respondent’s website also promotes products of Complainant’s competitors, this case is distinguishable from instances in which a respondent uses the disputed domain name to make bona fide offers solely respecting products that are legitimately sold under the RIVOLI mark or that a complainant itself placed on the market.