WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Parmigiani Fleurier SA v. J Lyons
Case No. D2012-2308
1. The Parties
The Complainant is Parmigiani Fleurier SA of Fleurier, Switzerland, represented by Sipara, United Kingdom of Great Britain and Northern Ireland.
The Respondent is J Lyons of Florida, United States of America (“USA”).
2. The Disputed Domain Name and Registrar
The Disputed Domain Name is <parmigianifleurier.com> which was registered with Moniker Online Services, LLC (the “Registrar”) on March 7, 2010.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 26, 2012, the Registrar transmitted by email to the Center its verification response confirming that the 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”), 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 November 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2012.
The Center appointed Philip N. Argy as the sole panelist in this matter on January 8, 2013. 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.
All other administrative requirements appear to have been satisfied.
4. Factual Background
The following facts, taken from the Complaint, remain uncontested.
The Complainant was incorporated in 1990 as a designer and manufacturer of fine Swiss watches. It can trace its history back to 1976 when the founder of the Complainant started his own master watchmaking business. The Complainant has an annual turnover of USD 64 million and an annual advertising and promotional expenditure of over USD 21 million. It also has a wholly-owned subsidiary based in Miami, Florida, USA - close to the Respondent.
The Complainant’s website at “www.parmigiani.ch” achieves 47,000 page-views per month and the Complainant is the registered proprietor of numerous trade marks for the brands PARMIGIANI and PARMIGIANI FLEURIER throughout the world including in the USA, where the Respondent is located.
5. Parties’ Contentions
The Complaint is based on the following grounds: that the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trademark PARMIGIANI FLEURIER; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that the Disputed Domain Name was registered and is being used in bad faith.
The Complainant’s relevant submissions are recorded and addressed in sufficient detail in section 6 below.
The Respondent did not reply to the Complainant’s contentions nor to any communications from the Center.
6. Discussion and Findings
The Complainant has the onus of proving that each of the three limbs of the Policy, on which it relies, has been made out.
A. Identical or Confusingly Similar
The Complainant has proved to the satisfaction of the Panel that it has trademark rights in PARMIGIANI and PARMIGIANI FLEURIER.
The Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) “.com”, which is an integral and technical part of a domain name, and the lack of a space between PARMIGIANI and FLEURIER, may be disregarded in the determination of confusing similarity under the terms of the Policy (see, for example, Arthur Guinness Son & Co (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
The Panel agrees and has no hesitation in finding that the Disputed Domain Name is identical to the Complainant’s registered trademark PARMIGIANI FLEURIER.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent lacks any right or legitimate interest in respect of the Disputed Domain Name. Accordingly, the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the Disputed Domain Name (See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the absence of a Response, there is no evidence before the Panel to explain the Respondent’s use of the Complainant’s distinctive trademark PARMIGIANI FLEURIER. Furthermore, in a letter dated October 4, 2012, the Complainant invited the Respondent to inform the Complainant of any specific reasons for his choice of the Disputed Domain Name. The Respondent failed to reply. The Respondent’s cause is not assisted by the fact that the Disputed Domain Name is for sale for USD 7,695 on Sedo.com suggesting that the Respondent is seeking to make a commercial gain by exploiting the value in the brand developed by the Complainant. That is not, in the Panel’s opinion, a legitimate interest for the purposes of the Policy.
When combined with the fact that the Complainant’s USA subsidiary is based in Miami, Florida, which is close to the Respondent’s location, the Panel can only conclude that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submissions that the Respondent’s choice of the Disputed Domain Name prevents the Complainant from reflecting its distinctive PARMIGIANI FLEURIER trademark in the “.com” gTLD, that the reputation of its trademark is such that the Respondent in all likelihood knew or should have known of it at the time the Disputed Domain Name was registered, and that the listing of the Disputed Domain Name at Sedo.com for a price in excess of the out-of-pocket costs directly related to the Disputed Domain Name evidences an intention on the part of the Respondent to profit from his registration of the Disputed Domain Name as per paragraph 4(b) of the Policy.
Accordingly, the Complainant has made good the third limb 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 Disputed Domain Name <parmigianifleurier.com> be transferred to the Complainant.
Philip N. Argy
Date: January 19, 2013