WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TKS S.A. v. Sylvia Martial
Case No. D2012-2396
1. The Parties
The Complainant is TKS S.A. of Brussels, Belgium, represented internally.
The Respondent is Sylvia Martial of Marseille, France.
2. The Domain Name and Registrar
The disputed domain name <icewatchfrance.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 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 for the disputed domain name.
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 the Respondent of the Complaint and sent the written notice to the physical addresses provided on the records: Marseille, as provided by the Complainant and confirmed by the Registrar; and Paris, as provided by the Complainant. The proceedings commenced on December 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2012. On December 13 and December 17, 2012, a person named Sylvia Martial (apparently the Respondent), domiciled in Marseille, sent email communications to the Center, in French, stating that she had received the written notice from the Center via courier but had nothing to do with the issue. No further communications were filed with the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties it would be proceeding to Panel Appointment on January 3, 2012.
The Center appointed Daniel Kraus as the sole panelist in this matter on January 11, 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.
After the Panel Appointment, the Panel noted that the email address <@wanadoo.fr>, which was used by the person Sylvia Martial to communicate with the Center, was not included in the Notification of Panel Appointment. Although the concerned Registrar has not confirmed the above-referenced email address as belonging to the Respondent, the Panel has instructed the Center to forward the Notification of Panel Appointment to the indicated email address. The Center subsequently forwarded the Notification of Panel Appointment to the email address <@wanadoo.fr>.
4. Factual Background
The Complainant is the owner of several registered and filed trademarks. The Complainant is in particular the holder of several registrations of the trademark ICEWATCH designating products of class 14 and in particular watches. It is amongst others the owner of a figurative trademark n° 1029087 dated January 7, 2010 which has been registered internationally. It is also the owner of several national trademarks, figurative as well as - and that is the most topical trademark in the present case - the verbal community trademark ICEWATCH n° 005549209, designating products in class 14, filed on December 13, 2006, and registered on August 31, 2012. There are also a number of figurative trademarks which have been filed but no yet registered; in particular in the Benelux countries (n° 1194799 and n° 0911764 filed respectively on January 4, 2010 and December 15, 2011).
The disputed domain name <icewatchfrance.com> was registered on July 19, 2012.
5. Parties’ Contentions
The Complainant first argues that the domain name is identical or confusingly similar to the registered and unregistered trademarks ICEWATCH it owns. In addition, the Complainant argues that it has a reputation and goodwill in respect of the sign ICEWATCH, which designs watches of which the success is not to be demonstrated anymore. Said success was accounted for by leading magazines around the world since at least 2008.
Secondly, the Complainant argues that the Respondent is using the disputed domain name to create deception in the marketplace. Consumers may be deceived while, typing the litigious domain name which includes the reference to France, they would think that they are arriving on the French national website of ICEWATCH. In reality, this is not the case as the website to which the disputed domain name <icewatchfrance.com> leads is not an official website of the Complainant and leads to sales of counterfeit ICEWATCH watches. The Complainant argues that it is suffering or is likely to suffer consequential damages from this behavior.
The Complainant further argues that the Respondent has no rights or legitimate interest in respect of the disputed domain name as she has no authorization to use the trademark, or is not offering goods in a bona fide manner and is not known as an individual company by the name “Icewatch”. The Respondent is hence making a commercial use of the disputed domain name with the intent of commercial gain in order to misleadingly divert internet users.
Finally the Complainant argues that the disputed domain name was registered and is being used in bad faith.
The only correspondences received were two email communications, in French, dated December 13 and December 17, 2012, in which a person named Sylvia Martial, domiciled in Marseille, received the written notice transmitted by the Center via courier and alleged the absence of any connection with the case. The Center did not receive any further communication. The Panel hence considers that the Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following in order to obtain 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 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.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy above.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) of the Policy above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the 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.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, a panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140.
In the following, the Panel will discuss in consecutive order whether each of these requirements are met.
A. Identical or Confusingly Similar
The disputed domain name <icewatchfrance.com> is confusingly similar to the Complainant’s trademark ICEWATCH. Indeed, the disputed domain name reproduces the Complainant’s trademark in its entirety.
The incorporation of a trademark in its entirety may in some cases be sufficient to establish that the domain name is identical or confusingly similar to the complainant’s registered mark (Rapid Share AG, Christian Schmid v. invisibleregistration.com, domain admin, WIPO Case No. D2010-1059; Accor v. Everlasting Friendship Trust, WIPO Case No. D2005-0288).
The mere addition of the geographic term “France” is not sufficient to distinguish the disputed domain name from the Complainant’s ICEWATCH trademark, as it is still confusingly similar (Accor v. Vu Duy Truong, WIPO Case No. D2011-0093; Accor v. Le Don Youn, WIPO Case No. D2008-0705; Accor SA v. Jacoop.org, WIPO Case No. D2007-1257).
Moreover, in the Panel’s view, a likelihood of confusion is given and could lead Internet users to think that the disputed domain name, in one way or another, is associated with the Complainant’s trademark because ICEWATCH branded-watches are sold by the Complainant in France.
In order to be complete, it should also be mentioned here that the mere addition of the gTLD “.com” is irrelevant because the top level domain name is not a distinctive element whilst assessing the identity or confusing similarity between a trademark and a domain name (amongst others see Alstom v. Itete Peru SA, WIPO Case No. D2009-0877). As a result, the Panel considers the disputed domain name is identical or confusingly similar to the Complainant’s trademark ICEWATCH.
B. Rights or Legitimate Interests
As sufficiently shown by the Complainant, the Respondent has never been authorized to use or register the trademark ICEWATCH or to seek any registration of any domain name incorporating said trademark. The Respondent further has no legitimate interests in the disputed domain name, noting that the ICEWATCH trademark preceded the registration of the disputed domain name <icewatchfrance.com> for several years.
In addition, the Respondent is not affiliated with the Complainant nor authorized or licensed to use the ICEWATCH trademark. No bona fide or legitimate use of the disputed domain name can be reasonably claimed (Lego Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
For all these reasons, the Panel is of the opinion that the Respondent has no rights or legitimate interests with respect to the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the reputation of the Complainant’s trademark ICEWATCH, it is difficult to imagine that the Respondent was not aware of the trademark when the disputed domain name was registered.
Where a domain name is so obviously connected with a well known trademark its very use by someone with no connection to the trademark suggests opportunistic bad faith (Lego Iuris AS v. Rainer Stotte, WIPO Case No. D2010-0494; Sanofi Aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
In addition, the knowledge of a corresponding mark at the time of the domain name registration may also suggest bad faith (Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adamand, WIPO Case No. D2006-464; Document Technologies Inc. v. International Electronic Communications Inc, WIPO Case No. D2000-0270). Had the Respondent been in good faith, a quick trademark search would have revealed to him the existence of the Complainant and of its trademark. (Lancôme Parfums et Beauté et Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226). Even without a trademark search but on a search engine such as Google would have shown that the ICEWATCH name is widely used.
Finally, the Complainant has furnished sufficient evidence that the disputed domain name <icewatchfrance.com> leads to a website selling counterfeit ICEWATCH watches. This behavior is clearly not a good faith use (see Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, WIPO Case No. D2012-0136).
All the above suggests that the Respondent was perfectly aware of the existence of the ICEWATCH trademark but wanted to benefit in some way or another from its reputation.
By failing to respond, the Respondent has provided no evidence of good faith use.
For all these reasons, in the Panel’s view, the Respondent’s behaviour does not correspond to a use in good faith. Consequently, the Panel finds that it has been sufficiently established that the Respondent registered and used the disputed domain name in bad faith in accordance with 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 disputed domain name <icewatchfrance.com> be transferred to the Complainant.
Date: February 9, 2013