WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TISSOT SA v. China, Datangguangchang
Case No. D2011-2186
1. The Parties
The Complainant is TISSOT SA of le Locle, Switzerland, represented by M&B Avocats, France.
The Respondent is China, Datangguangchang of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <montres-tissot-pas-cher.com> is registered with GoDaddy.com, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2011. On December 13, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 13, 2011, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Complainant filed an amended Complaint on December 23, 2011.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on December 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2012.
The Center appointed Martine Dehaut as the sole panelist in this matter on January 24, 2012. 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, TISSOT SA is the owner of the TISSOT Community trademark No. 000225698 and international trademark No. 532550, registered, inter alia, in class 8 and 14 relating to jewelry, horological and chronometric instruments and watches.
TISSOT SA is a famous Swiss watch manufacturer. Owing to the high quality standards that TISSOT represents, TISSOT watches are distributed around the world through a selective distribution network. Such a distribution system is necessary to guarantee to the consumers the appropriate advice regarding the TISSOT products and ensure that TISSOT meets the high quality standard expected by the clients.
Accordingly, TISSOT watches are sold by selected distributors on the basis of specified criteria. The selected distributors undertake not to sell the contractual goods to unauthorized distributors. Such agreements comply with the provisions of the EU Commission regulation No. 330/2010 regarding vertical agreements.
According to the evidence submitted by the Complainant, it has a major presence on the Internet and is intensively advertised over the world.
The disputed domain name <montres-tissot-pas-cher.com> was registered on August 29, 2011.
The disputed domain name resolves to an active website (hereinafter, the concerned website) selling watches presented as TISSOT watches. According to the Complainant, on the following webpage, “www.montres-tissot-pas-cher.com”, the Respondent declares to be part of the “Kingswinford Jewellers”, which is one of the Complainant’s authorized retailers in the United Kingdom of Great Britain and Northern Ireland. According to the Complainant, it is stated that “www.montres-tissot-pas-cher.com - is part of the Kingswinford jewelers group; All our watches advertised on our site are 100% genuine. You can rest assured that any watch you order from us has come direct from the manufacturer … We are official stockists of all the brands features on our site”.
However, as result of the Complainant’s verification with the “Kingswinfords Jellewers” the latter confirmed that it had never had any connection or affiliation with the website “www.montres-tissot-pas-cher.com”.
According to the Complainant, the concerned webpage consists of the exact reproduction and translation of the “About Us” section of the Kingswindford Jeweller’s website.
Furthermore, the Complainant as well as some of its selected retailers received complaints from confused customers who had unsuccessfully tried to buy TISSOT watches from “www.montres-tissot-pas-cher.com” website. Unfortunately, the confused consumers were informed that the ordered articles were no longer available and were asked to pay 30% of the watch price in order to be reimbursed of the amount they have already transferred.
It results from different sources of information received by the Complainant that the watches displayed for sale on “www.montres-tissot-pas-cher.com” website are in fact fake TISSOT watches.
The actions conducted by the “Fédération de l’industrie horlogère Suisse” FH, on behalf of the Complainant, to resolve the situation, remained unsuccessful; the Respondent changed its hosting provider several times. In fact, after each take down, the website operator posted the website content with a new host.
5. Parties’ Contentions
The Complainant argues that the Respondent falsely presents himself as an official TISSOT retailer and has registered and used the disputed domain name without any authorization. The disputed domain name identically reproduces the trademark TISSOT. In fact, the TISSOT trademark is clearly identifiable, as it is separated by a dash from the other words composing the disputed domain name. Its association with the word “montres” undoubtedly leads to confusion on the part of the consumers likely to believe that the website, to which the disputed domain name resolves, is related to the Complainant or that the Complainant has authorized the Respondent to sell TISSOT watches on that website.
Moreover, the Complainant demonstrates that the distinctive symbol of the Complainant’s brand, namely a white “T” letter in a black square and a white cross in a red square, is reproduced on the home page of the concerned website.
It clearly results from such a presentation that the Respondent is using the disputed domain name in bad faith to attract for commercial gain Internet users by creating a likelihood of confusion with the TISSOT brand as to the source, sponsorship, affiliation or endorsement of the concerned website. In this respect, the Complainant has submitted evidence of several complaints from customers who had accessed to the concerned website.
Furthermore, according to the Complainant the fact that the Respondent kept changing its hosting providers, as result of actions taken by the Complainant to amicably resolve the dispute, and did not answer to the Complainant’s demands, demonstrates that it is not making a legitimate and fair use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to the paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right; 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.
A. Identical or Confusingly Similar
The disputed domain name reproduces the Complainant’s TISSOT trademark, which can be clearly seen due to the dash separating each verbal element of the disputed domain name. The fact that the disputed domain name incorporates the words “montres” “pas” and “cher” is not likely to prevent a consumer from being confused as to the origin of the goods or services presented on the concerned website. On the contrary, the use of the French word “montres”, just before the TISSOT trademark, strengthens the risk of confusion, as it directly describes the product of the Complainant.
In numerous cases, UDRP panels took the view that the addition of descriptive words to a trademark, incorporated in a domain name, does not avoid the domain name being confusingly similar to the said trademark. (See Hoffmann-La Roche Inc. v. Wei-Chun HSIA, WIPO Case No. D2008-0923).
Based on the foregoing, the Panel finds that the disputed domain name is confusingly similar to the TISSOT trademark of the Complainant and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As expressly stated by the Complainant, the Respondent, although it declares to be part of the Complainant’s authorized retailer Kingswinford Jewellers, is neither related to the Complainant nor forms part of the Complainant’s selective distribution system.
The question of whether an authorized retailer or unauthorized agent of authentic products can register and use a domain name incorporating the Complainant’s trademark has been discussed in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and some relevant cases, such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227.
According to the consensus view, “[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder”.
In the present case, the Panel is of the opinion that the Respondent does not fit the above-noted requirements.
In fact, the evidence submitted by the Complainant clearly shows that the Respondent is not an authorized reseller of TISSOT watches, although it presents itself as an official reseller. This Panel finds that the Respondent has no legitimate interests or rights in the disputed domain name.
Finally, the Respondent has failed to respond to the Complaint and thus has not challenged the Complainant’s assertions in this respect. Based on the above, the Panel considers that the Complainant has complied with the condition set forth in the paragrah 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In the present case, the Complainant has submitted sufficient evidence to support the allegation that the disputed domain name has been registered and used in bad faith. In fact, the Respondent has used the disputed domain name to direct Internet users to a website displaying fake TISSOT watches. The behavior of the Respondent, which consists in reproducing the website of the Complainant’s authorized retailer “Kingswinford Jewellers” with the purpose to mislead the consumers as to the source, affiliation or endorsement of the Respondent website, demonstrates that the Respondent is not making a bona fide use of the disputed domain name and is damaging the TISSOT’s image, pursuant to paragraph 4(b)(iv) of the Policy.
Finally, the behavior of the Respondent, who has changed its hosting provider several times, obviously confirms the bad faith conduct of the Respondent.
Taking into account the Respondent’s failure to reply to the Complaint and provide any counter arguments to prove the registration and use of the disputed domain for a bona fide commercial or noncommercial activity, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. Therefore, the Complainant has also fulfilled the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <montres-tissot-pas-cher.com> be transferred to the Complainant.
Dated: February 7, 2012