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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Van Cleef & Arpels SA v. Henry Rich

Case No. D2013-1565

1. The Parties

The Complainant is Van Cleef & Arpels SA of Villars-Sur-Glâne, Switzerland, represented by Winston & Strawn LLP, United States of America.

The Respondent is Henry Rich of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <vancleefarpel.net> 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 September 5, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 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 September 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 2, 2013.

The Center appointed Isabel Davies as the sole panelist in this matter on October 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 Complainant owns trade mark registrations around the world for Van Cleef & Arpels (THE VAN CLEEF & ARPELS Marks) including a US mark No. 1,415,794 dated November 4, 1986 and an International Registration No. 329323 registered on February 12, 1966, designating Switzerland in relation to luxury jewelry and watches industry.

The disputed domain name was registered on November 18, 2012.

5. Parties’ Contentions

A. Complainant

(i). The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

1. The Complainant states that as, owner of the VAN CLEEF & ARPELS Marks, it is a premiere brand in the luxury watch, jewelry, and perfume markets.

2. It is stated that the Complainant’s predecessor in title was founded in Paris in 1906 by Alfred van Cleef and Charles Arpels. In that same year, the business opened its first boutique in the prestigious “Place Vendôme” in Paris. Since that time, the Complainant and its predecessors in title have used the VAN CLEEF & ARPELS trademark in relation to the design, manufacture and sale of some of the finest and most exquisite works of jewelry in the world. The Complainant’s business has since expanded to also include luxury watches and fragrances.

3. The Complainant states that it sells its watches, jewelry and perfume around the world, with a network of over 125 boutiques and carefully selected authorized retailers in Asia, Europe, North America, and South America.

4. The Complainant operates its extensive website featuring information about its activities in Asia, Europe, and North and South America at “www.vancleefarpels.com”.

5. The Complaint includes an exhibit evidencing Complainant’s trademark registrations around the world and the Complainant avers that the VAN CLEEF & ARPELS Marks have obtained the status of a notorious mark and therefore enjoy liberal protection under the Paris Convention.

6. The Complainant states that the disputed domain name is confusingly similar because it fully incorporates the VAN CLEEF & ARPELS Marks, and merely removes the non-essential element (the ampersand), an “s” at the end of “arpels,” and adds the generic top-level domain “.net” and this is sufficient to establish identity or confusing similarity for purposes of the Policy

(ii). The Respondent has no rights or legitimate interests in respect of the disputed domain name; (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

1. The Complainant states that the Respondent lacks rights or legitimate interests in the disputed domain name as the Respondent, who has referred to itself in the WhoIs database as “Henry Rich” with an email address of […]@hotmail.com, has never been commonly known by the VAN CLEEF & ARPELS MARKS nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted herein.

2. The Complainant states that the Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected non-commercial or fair use of the disputed domain name. The Respondent is using the disputed domain name to direct visitors to a commercial search engine which also advertises links to third-party websites offering for sale products which may or may not compete directly with the Complainant’s competitors and/or be counterfeit products. Such use does not constitute a bona fide or legitimate business use. Further, even if the Respondent were to claim that GoDaddy is operating the site without the Respondent’s permission, it is the Respondent who is ultimately responsible for the content of the disputed domain name.

3. The Complainant states that it has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the VAN CLEEF & ARPELS Marks.

(iii) The disputed domain name was registered and is being used in bad faith. (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

1. The Complainant avers that the Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the VAN CLEEF & ARPELS Marks by virtue of the Complainant’s prior registration of that mark with the trademark office of the United States, where the Respondent’s websites are targeted and where the Respondent is located, and Switzerland, where the Complainant is located. They claim that registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Policy paragraph 4(a)(iii).

2. Also, the disputed domain name has been used to publish websites offering for sale products of Complainant’s competitors and/or or to direct visitors to competing goods and services of others thereby falling into the explicit example of bad faith registration and use found in the Policy at paragraph 4(b)(iv).

3. Further, the Complainant states, the disputed domain name links to third-party websites that offer products in competition with those offered under the Complainant’s mark and/or to a commercial search engine with links to the products of the Complainant’s competitors. Such activities are disruptive to the Complainant’s business and therefore conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iii).

4. The Complainant asserts that there is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant’s mark. As such, the nature of the domain name itself evidences bad faith registration and use.

5. Finally the Complainant states that even if the Respondent argues that he was somehow unaware of the Complainant’s rights in the VAN CLEEF & ARPELS Marks, had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s trademark registration in the VAN CLEEF & ARPELS Marks and the websites associated with the VAN CLEEF & ARPELS Marks, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its mark in connection with the Complainant’s goods or services.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, however sent an e-mail on September 11, 2013, with the following content: [“I didn’t use that domain, why and how can u lock my domain???”].

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a), that must be established by the complainant to obtain relief. These elements are that:

(i) The respondent’s disputed domain name is identical or confusingly similar to a trade mark 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 respondent’s disputed domain name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of, or requirement under, the Rules, including the respondent’s failure to file a response.

In the absence of a response, the panel may also accept as true the factual allegations in the complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the panel is to decide the complaint on the basis of the statements and documents submitted. The Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is owner of a premiere brand of luxury watches, jewelry and perfume and that the VAN CLEEF & ARPELS Marks are well known.

The Panel accepts that the disputed domain name is confusingly similar and that removing the ampersand and the “s” on the end of “Arpels” and adding “.net” does not distinguish the disputed domain name from the VAN CLEEF & ARPELS Marks (Deloitte Touche Tohmatsu v. Robert Thorp, WIPO Case No. D2001-1431, finding that the elimination of the ampersand in the disputed domain name <deloittetouche.net> did not distinguish it from Complainant’s DELOITTE & TOUCHE Mark. See also Oki Data Ams., Inc. v. ASD, Inc., WIPO Case No. D2001-0903 “[T]he 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.”; Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name, for example “.net”, does not affect the domain name for purposes of assessing whether the domain name is confusingly similar.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent lacks rights or legitimate interests in the disputed domain name.

It accepts that the Respondent, who has referred to itself in the WhoIs database as “Henry Rich” with an email address of […]@hotmail.com, has never been commonly known by the VAN CLEEF & ARPELS Marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted herein. (Harry Winston, Inc. and Harry Winston, S.A. v. h, WIPO Case No. D2008-1266, finding that Respondent had not established rights or legitimate interests pursuant to Policy paragraph 4(c)(ii) in the disputed domain name <harrywinstondiamond.com>, where there was no evidence that Respondent was commonly known by the domain name; see also Alstom v. Yulei, WIPO Case No. D2007-0424, finding that respondent had not established rights or legitimate interests in the disputed domain name where there is no indication that the Respondent is commonly known by the disputed domain name <alstom-china.com> and/or is using the domain name in connection with a bona fide offering of goods or services.

The Panel accepts that the Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name. Respondent is using the disputed domain name to direct visitors to a commercial search engine which also advertises links to third-party websites offering for sale products which may or may not compete directly with Complainant’s competitors and/or be counterfeit products. (America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374,“In the Panel’s opinion it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”; MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324, finding that Respondent’s use of the <wwwmastercard.com> domain name in connection with a website which contains links to other websites offering services of Complainant and Complainant’s competitors did not constitute use of the domain name in connection with a bona fide offering of goods or services); F. Hoffmann-La Roche AG v. Samir Kumar, WIPO Case No. D2008-0808, the offering of a “search service totally unrelated to Complainant […] is neither a bona fide use, nor a commercial or fair use of the domain name.”

The Panel accepts that the Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the VAN CLEEF & ARPELS Marks. (Nokia Corp. v. Nokiagirls.com, WIPO Case No. D2000-0102, finding absence of license permitting respondent to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).

C. Registered and Used in Bad Faith

The Panel accepts that the Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the VAN CLEEF & ARPELS Marks by virtue of the Complainant’s prior registration of that mark with the trademark office of the United States of America, where the Respondent’s websites are targeted and where the Respondent is located, and Switzerland, where Complainant is located. Registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Policy paragraph 4(a)(iii). (Exxon Mobil Corp. v. Fisher, WIPO Case No. D2000-1412.

The Panel also accepts that, the disputed domain name has been used to publish websites offering for sale products of Complainant’s competitors and/or or to direct visitors to competing goods and services of others. The Panel accepts that such activities fall into the explicit example of bad faith registration and use found in the Policy at paragraph 4(b)(iv) (Nokia Corp. v. Private, WIPO Case No. D2000-1271, finding bad faith registration and use pursuant to Policy paragraph 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark.

Further, the Panel is satisfied that the disputed domain name linked to third-party websites that offered products in competition with those offered under the Complainant’s mark and/or to a commercial search engine with links to the products of the Complainant’s competitors. Such activities are disruptive to the Complainant’s business and therefore evidence that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iii). See S.A.S. Jean Cassegrain v. Yeon-Gu Kim, WIPO Case No. D2005-0275, finding that Respondent’s offer to sell competing products on the website identified by the contested <longchampkorea.net> domain name evidenced bad faith in Respondent’s conduct; see also Puckett, Individually v. Miller, WIPO Case No. D2000-0297, finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy paragraph 4(b)(iii).

The Panel agrees that there is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant’s mark. As such, the nature of the domain name itself evidences bad faith registration and use. See Charles Jorden Holding AG v. AAIM, WIPO Case No. D2000-0403, finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”.

Finally, the Panel also accepts that even if the Respondent argues that he was somehow unaware of the Complainant’s rights in the VAN CLEEF & ARPELS Marks, had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s trademark registration in the VAN CLEEF & ARPELS Marks and the websites associated with the VAN CLEEF & ARPELS Marks, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its mark in connection with the Complainant’s goods or services.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

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 <vancleefarpel.net> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: November 4, 2013

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