WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bucherer AG and Bucherer Montres SA v. Jewelmak Inc.
Case No. D2013-1105
1. The Parties
The Complainants are Bucherer AG (the “first Complainant”) and Burcherer Montres SA (the “second Complainant”) of Lucerne, Switzerland, represented by Meyerlustenberger Lachenal Rechtsanwälte, Switzerland.
The Respondent is Jewelmak Inc. of New York, New York, United States of America (“USA”), represented by Leibensperger Law P.C., USA.
2. The Domain Name and Registrar
The disputed domain name <buchererusa.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2013. On June 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 June 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2013. On July 11, 2013, the Respondent requested an extension of 10 business days to file a Response with the Center. On the same date, the Center acknowledged receipt of the Respondent’s request and invited the Complainant to comment thereon. The Complainant did not provide any comments. The Center granted the Respondent an extension of time to file a Response until July 27, 2013. The Respondent did not submit any response. Accordingly, on July 31, 2013, the Center informed the parties about the commencement of the panel appointment process and reminded that any late response would be forwarded to the Administrative Panel (upon appointment) for its consideration and further procedural steps, if any.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on August 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.
4. Factual Background
In the absence of a Response, the Panel relies on the evidence adduced by the Complainant which it finds to be true.
The Complainants belong to the Bucherer Group. The first Complainant is the retailer within the group, a watch and jewellery specialist, stocking exclusive world class brandings such as “Rolex”, “Carl F Bucherer”, “Chopard”, “Piaget”, “IWC”, “Audemars Piguet”, “Gerard-Perregaux”, “Tag Heuer”, “Tudor”, “Baume” and “Mercier”, “Longines”, “Rado” and “Gucci”. The second Complainant is a watch manufacturer which continues the tradition of watch making which began in 1919 under the name of the company’s founder Carl F Bucherer. The second Complainant also successfully designs and manufactures various jewellery collections most of them under the BUCHERER trademark.
The Bucherer Group was founded in 1888 by the businessmen and industrialist Carl Friederich Bucherer when he opened his first watch and jewellery store in Lucerne, Switzerland. The family run business is currently in its third generation and run by Jörg G Bucherer who is the Chairman of the Board of Directors. Today the core group has approximately 1,200 employees and leads a Swiss watch and jewellery retail sector.
At Annex 5 to the Complaint is a print out from a historic encyclopaedia of Switzerland which refers to the history of Bucherer. The Bucherer group is distinctive in that it is retailer, manufacturer and wholesaler in one. The materials used by it are bought on the world markets, illuminating wholesalers agents and other intermediaries to offer top quality products to the consumers.
The Complainants maintain that BUCHERER is one of the best known brands in Switzerland and is also very well known abroad. This is due to an outstanding range of almost 50,000 different items and to the expertise of its employees. All the stores belonging to the Bucherer group are located in international shopping districts and world famous resorts which makes the trademark BUCHERER most visible to the consumers.
The Complainants produce evidence as to their trademark rights in the mark BUCHERER. In particular, the first Complainant is the owner of trademark registrations for the mark BUCHERER set out at Annex 6 to the Complaint. This mark has been registered as early as 1983.
1. The wordmark BUCHERER (CH 2P-326249) registered in Switzerland for goods in class 14.
2. The wordmark BUCHERER (CH P-418777) registered in Switzerland for services in classes 37 and 42.
3. The figurative mark Bucherer Diamond (CH P-450044) registered in Switzerland for goods in class 14.
4. The figurative mark Bucherer Mogok Collection (CH P-461095) registered in Switzerland in class 14.
5. Bucherer plus the word loyalty/club figurative mark (CH P-469392) registered in class 14.
In addition, the second Complainant is the holder of a trademark registration CARL F BUCHERER (CH P-478346) registered in class 14.
Evidence is also given as to the ownership of domain names bearing the name “Bucherer” including <bucherer.ch> (Annex 8 to the Complaint) and <bucherer.com> (Annex 9 to the Complaint). The website hosted under <bucherer.ch> leads to the Swiss section of the website hosted under the domain name <bucherer.com>. It presents the range of watches, diamonds and other jewellery and contains information on the Bucherer Group and Complainants such as their history business values, company structure and locations.
The disputed domain name was created on August 23, 2000. It resolves to the Respondent’s website “www.jewelmak.com” on which jewelery can be purchased.
5. Parties' Contentions
The Complainants submit:
1. The disputed domain name is confusingly similar to a trademark or service mark in which the Complainants have rights.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
3. The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainants have rights in the mark BUCHERER. The disputed domain name consists of the word “bucherer” plus “usa”. In the Panel’s view the suffix “usa” is purely descriptive and represents a geographic association with the USA. It therefore finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Complainants submit that there is no evidence that the Respondent has been commonly known by the disputed domain name <buchererusa.com>. By contrast the Complainants are internationally very well known under the trademark BUCHERER and its domain names incorporating the name “Bucherer”. The Respondent’s use of the disputed domain name cannot be considered a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Respondent did not file a Response. It follows that the Panel finds for the Complainants in respect of this element.
C. Registered and Used in Bad Faith
In the absence of evidence from the Respondent, it is unknown why it registered the disputed domain name.
The Complainants submit that the disputed domain name is capable of creating a likelihood of confusing as to the source, sponsorship and affiliation with the Complainants’ trademark BUCHERER. The Respondent commercially benefits from the connection, the consumer assumes, between the disputed domain name and the Complainants’ trademarks and this constitutes evidence of bad faith registration and use. The Complainants submit that the word “usa”, used as a suffix in the disputed domain name, is likely to create in the minds of the consumer the assumption that the disputed domain name is owned by an American branch of the Complainants. Therefore it follows according to the Complainants that the Respondent is taking advantage of an association between the reputation of the trademark BUCHERER and the Complainants’ link to Switzerland and high quality watches and jewellery. The Respondent is therefore seeking commercial gain out of the disputed domain name registration by wrongly using the reputation of the Complainants. There is no link at all between the name “Jewelmak” as used by the Respondent and the Complainants.
The Panel accepts the submission and finds for the Complainant in respect of this element.
For the foregoing reasons, in accordance with paragraphs 4(1) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <buchererusa.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: August 27, 2013