WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont International SA v. jin pan Kleiser
Case No. D2013-0041
1. The Parties
Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America (“US”).
Respondent is jin pan Kleiser of Jupiter, Kansas, US.
2. The Domain Name and Registrar
The disputed domain name <iwcreplicaswatches.net> (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 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent was listed as the registrant and providing the contact details, and informing the Center that the Domain Name was in the registry’s redemption period. Following email communications between the Center and the Registrar regarding renewal of the Domain Name, Complainant confirmed on January 24, 2013, that it renewed the Domain Name. On January 24, 2013, Complainant submitted an “amended” set of Annexes to the Complaint.
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 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2013. On February 5, 2013, the Center received an email communication sent from the email address of Respondent as listed in the Registrar’s WhoIs database and confirmed by the Registrar in its verification response, in which an individual named J. Kleiser claimed not to be Respondent, nor to have any involvement in the proceeding. Respondent did not submit any formal Response. Accordingly, the Center notified Respondent’s default on February 18, 2013.
The Center appointed Clive L. Elliott as the sole panelist in this matter on February 21, 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 November 29, 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 and China.
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 “watches” and “replica”, and the generic top-level domain “.net”.
Complainant states that Respondent lacks rights or legitimate interests in the Domain Name as Respondent, who uses the email “…@msn.com” and has referred to itself in the WhoIs database as “jin pan Kleiser”, has never been commonly known by the IWC trademark 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 its 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 website is 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.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Issues
On January 24, 2013 Complainant submitted an “amended” set of Annexes. The Center advised that it has compared those Annexes to the Annexes that were initially submitted, and it appears that only Annex 1 was altered (the new Annex 1 is a WhoIs printout from Domain Tools and shows the new expiration date, instead of a WhoIs printout from the Registrar with the old expiration date). The original Annexes were sent to Respondent as part of the “Notification of Complaint” and it has been noted that Complainant copied Respondent on its email communication of January 24, 2013. Notwithstanding this, the “amended” set of Annexes will be taken into account, and the Panel deems appropriate to proceed with the issuance of its decision in this case.
B. 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 its IWC Trademark, in that it consists of the IWC Trademark with the addition of the generic terms “watches” and “replica”, and the gTLD “.net”.
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.
C. 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 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.
D. Registered and Used in Bad Faith
The panel concludes that Respondent has intentionally attempted to attract for commercial gain Internet users to its website or others 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 used 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 Domain Name <iwcreplicaswatches.net> be transferred to Complainant.
Clive L. Elliott
Date: March 1, 2013