WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont International SA v. Shane OHara
Case No. D2013-0044
1. The Parties
The Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Shane OHara of Guildford, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <iwcdiscountshop.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 January 8, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2013, 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” 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 January 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2013.
On January 11, 2013, the Center received an email communication from the Respondent indicating its willingness to transfer the disputed domain name to the Complainant. On the same day, the Center transmitted an email communication to the Complainant inviting it to indicate to the Center if it wished to settle the dispute with the Respondent. The Center did not hear from the Complainant by the specified due date. On February 1, 2013, the Center informed the parties it would proceed with the panel appointment.
On February 1, 2013, the Respondent sent an email communication as following:
“I did give a formal response. The domain is yours if you want it. there was no intent to breach any trademark or copyright at any time. Please contact me and we can arrange transfer.”
The Center acknowledged receipt of the above communication on the same day.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 7, 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 Complainant is the owner of the IWC trademark and brand (hereafter “IWC”), a premium brand in the international luxury watch segment. The Complainant has proved to own United States and United Kingdom trademark registrations for the IWC trademark as well as the domain name <iwc.com>.
The Complainant’s trademark registrations for the trademark IWC, registered since August 1982, long predate the disputed domain name registration. The domain name <iwc.com> also predates the disputed domain name registration.
The disputed domain name <iwcdiscountshop.com>, which was registered on April 29, 2009, resolves to a parking page containing, among others, a number of pay-per-click links to websites offering products relating to the Complainant and to the Complainant's competitors.
5. Parties’ Contentions
The Complainant claims that:
The disputed domain name <iwcdiscountshop.com> is confusingly similar to the IWC trademark because it fully incorporates the IWC trademark. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“The fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”). Also, the disputed domain name <iwcdiscountshop.com> is confusingly similar to the IWC trademark because it consists of the IWC trademark, with only the inclusion of generic terms “discount” and “shop”, and the generic top-level domain “.com”. See F. Hoffmann-La Roche AG v. Private Whois cheapvalium24.com, WIPO Case No. D2012-0089 (finding that the disputed domain name <cheapvalium24.com> was confusingly similar to the Complainant's trademark where the disputed domain name incorporated the Complainant’s VALIUM trademark in full, and only differed from the Complainant's trademark by adding the generic terms "cheap" and "24" to the name).
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
Before the dispute, the Respondent had not been using the disputed domain name in connection with a bona fide offering of goods and services;
At the time of the registration of the disputed domain name, the Respondent was not generally known by the name IWC or by any confusingly similar name.
The Respondent does not own any rights in the name or marks IWC. The Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks or to apply for the registration of the disputed domain name.
The Respondent knew or should have known the Complainant’s trademarks at the time of the registration of the disputed domain name.
The disputed domain name resolves to a website containing a number of pay-per-click links to websites offering products relating to the Complainant and to its competitors;
The disputed domain name <iwcdiscountshop.com> has been registered and is being used by the Respondent in bad faith.
The Respondent on receipt of the Center’s Notification of Complaint, on January 11, 2013, sent an email to the Center indicating its willingness to transfer the disputed domain name to the Complainant.
On February 1, 2013, the Respondent, in response to the Center's email informing the parties that it would proceed with the panel appointment, sent an email communication as following:
“I did give a formal response. The domain is yours if you want it. there was no intent to breach any trademark or copyright at any time. Please contact me and we can arrange transfer”.
However, the Respondent has not put in any formal Response in these proceedings.
Accordingly, the Respondent is formally in default in this proceeding.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use providing an efficient and quick tool.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either canceled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As was noted by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, “A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).”
This Panel does not find that a unilateral consent to transfer a disputed domain name by itself satisfies the three elements of paragraph 4(a) of the Policy, but deems that, where the complainant has established its rights on a trademark that is identical or confusingly similar to the disputed domain name (as it is in the present case), a consent to transfer by the respondent provides a basis for an order for transfer without the need to consider the paragraphs 4(a)(ii) and 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 <iwcdiscountshop.com> be transferred to the Complainant.
Date: February 20, 2013