WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont International SA v. brandon gill
Case No. D2013-0037
1. The Parties
Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America.
Respondent is Brandon Gill of Portland, Oregon, United States of America.
2. The Domain Name and Registrar
The disputed domain name <iwcreplicawatchs.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2013. On January 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 9, 2013, the Registrar 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 January 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2013.
The Center appointed Clive L. Elliott as the sole panelist in this matter on February 12, 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.
4. Factual Background
The Domain Name was registered with the Registrar on August 26, 2011.
5. Parties’ Contentions
Complainant is the owner of the IWC trademark and brand (hereafter “IWC”). IWC was founded in 1868 and has been making watches since then.
Complainant states that all genuine IWC watches are distributed throughout a worldwide network of IWC boutiques and authorized IWC retailers, of which there are currently over 150 in Africa, Asia, Australia, Europe, North America, and South America. Complainant contends that in 2009, IWC began opening its own boutiques, selling exclusively IWC watches, and that there are now IWC boutiques in strategic locations across the world, including in Hong Kong, Paris, New York City, Sao Paulo, Abu Dhabi, and Moscow.
Complainant asserts that it operates its extensive website featuring information about its activities at ‘‘www.iwc.com’’.
Complainant contends that its IWC trademark, covering watches, was registered on August 17, 1982 in the United States, and has a first use date of 1874 together with a first use in commerce date of 1917. Complainant submits that due to the extensive use and registration of the IWC trademark around the world, the IWC trademark has become famous under the laws of the United States.
Complainant submits that the Domain Name is confusingly similar to IWC trademark because it consists of the IWC trademark with the addition of the generic terms “watchs” [sic] and “replica”, and the generic top-level domain “.com.”
Complainant states that Respondent lacks rights or legitimate interests in the Domain Name as Respondent, who uses the email “cheapwatchesoutlet@[...].com” and has referred to itself in the WhoIs database as “brandon gill”, has never been commonly known by the IWC mark nor any variations thereof, and has never used any trademark or service mark similar to the Domain Name by which it may have come to be known, other than the infringing use noted herein.
Complainant claims that Respondent has never operated any bona fide or legitimate business under the Domain Name, and is not making a protected noncommercial or fair use of the Domain Name. Rather, Respondent is using the Domain Name to publish websites that offer products for sale that compete directly with Complainant and/or which may be counterfeit copies of Complainant’s own products.
Complainant states that it has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any IWC trademark.
Complainant alleges that Respondent registered the Domain Name with either actual or constructive knowledge of Complainant’s rights in the IWC trademark by virtue of Complainant’s prior registration of that mark with the trademark office of the United States, where Respondent’s websites are targeted, and where Respondent is a resident.
Complainant submits that there is no reason for Respondent to have registered the Domain Name other than to trade off the reputation and goodwill of Complainant’s mark and as such, the nature of the Domain Name itself evidences bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant provides clear evidence that the IWC trademark, (the “IWC Trademark”) covering watches, has been used since in or about 1874 and that due to the extensive use and registration of the IWC Trademark around the world, it is well-known if not famous. As a result of its long-standing use in relation to watches Complainant owns rights, through registration and at common law, in the IWC Trademark.
It is clear that the IWC Trademark is exclusively associated with Complainant. It is also clear that by virtue of its widespread and long-standing use and the repute of the IWC Trademark that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived. Complainant argues that the Domain Name is confusingly similar to itsIWC Trademark, in that it consists of the IWC Trademark with the addition of the generic term “watchs” [sic] and “replica”, and the generic top-level domain “.com.” This is likely to confuse and deceive consumers as to the true nature of the goods they are purchasing and the origin of those goods. Further, the overall impression must be that the Domain Name is necessarily connected in some way to Complainant and/or its IWC Trademark.
On this basis the Panel finds:
a) Complainant has rights in respect of the IWC Trademark.
b) The Domain Name is confusingly similar to the IWC Trademark.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
B. Rights or Legitimate Interests
As noted above, Complainant contends that Respondent is using the Domain Name to publish websites that offer products for sale that compete directly with Complainant and/or which may be counterfeit copies of Complainant’s own products. In the absence of any denial, the Panel infers that through these activities Respondent is using a deliberately similar version of Complainant’s very well-known IWC Trademark and Complainant’s significant goodwill and reputation to attract Internet traffic.
The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
The Panel concludes that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites or other websites with which it is associated, thereby creating a likelihood of confusion with Complainant and/or the IWC Trademark. In the absence of any explanation from Respondent the Panel finds that it registered and is using the Domain Name in bad faith. That is, so as to take bad faith advantage of Internet users who may wish to purchase Complainant’s genuine and well-known branded goods.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s IWC Trademark very significantly pre-dated Respondent’s registration of the Domain Name and in light of the long-established use and widespread protection of the IWC Trademark that Respondent knew or ought to have known of Complainant’s prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met.
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 <iwcreplicawatchs.com> be transferred to the Complainant.
Clive L. Elliott
Date: February 28, 2013