WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Van Cleef & Arpels SA v. Above.com Domain Privacy / Transure Enterprise Ltd

Case No. D2013-1579

1. The Parties

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

Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia/ Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <vancleefarpel.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 12, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 13, 2013.

The Center verified that the Complaint together with the amended 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 September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 9, 2013.

The Center appointed Eduardo Machado as the sole panelist in this matter on October 22, 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

Complainant is a company incorporated in Switzerland and the owner of registrations for the trademark VAN CLEEF & ARPELS in numerous jurisdictions worldwide, including United States of America Registration No 1,415,794, dated November 4, 1984; Australia Registration No. 709724, dated May 31, 1996; and International Registration No. 329323, covering watches, jewelry pieces etc.

Respondent in this administrative proceeding is Above.com Domain Privacy, with an address in Australia/ Transure Enterprise Ltd of Tortola, British Virgin Islands.

The disputed domain name <vancleefarpel.com> was registered on May 23, 2012.

5. Parties’ Contentions

A. Complainant

Complainant has alleged that:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

The disputed domain name is confusingly similar to the VAN CLEEF & ARPELS marks because it merely excludes a certain non-essential element of the mark.

The omission of non-essential elements does not render the disputed domain name any less confusing for purposes of the confusingly similar analysis. The disputed domain name is further confusingly similar because it misspells one essential element of the mark, “arpels” by eliminating the “s” at the end.

Respondent’s conduct, commonly referred to as "typo squatting", creates a virtually identical and/or confusingly similar mark to Complainant’s trademark under paragraph 4(a)(i) of the Policy.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent 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.

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 or be counterfeit products.

Complainant 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 the VAN CLEEF & ARPELS marks.

The disputed domain name was registered and is being used in bad faith

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 Complainant’s prior registration of that mark with the trademark office of the United States of America, where Respondent’s websites are targeted, Great Britain, where Respondent is a resident, 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).

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 disputed domain name resolves to websites that offer products in competition with those offered under Complainant’s mark and/or to a commercial search engine with links to the products of Complainant’s competitors.

There is no reason for Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of Complainant’s mark.

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

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the trademark VAN CLEEF & ARPELS, which predate, by at least twenty seven years, the date of registration of the disputed domain name.

The Panel also finds that the disputed domain name is indeed confusingly similar because it misspells one essential element of Complainant’s mark, i.e.: the element “arpels” excluding the letter “s”.

In accordance with paragraph 4(a)(i) of the Policy, Respondent’s conduct, usually referred to as “typo squatting", creates a virtually identical and/or confusingly similar domain name to the Complainant’s trademark.

The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that Respondent failed to demonstrate any of the circumstances provided in paragraph 4(c) of the Policy.

Respondent has also failed to show that it has acquired any trademark rights in respect of the disputed domain name.

Complainant has not authorised, licensed, or permitted Respondent to register or use the disputed domain name nor use the trademark or similar mark.

The Panel finds that 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 various products, including jewelry.

In light of this, it is clear that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Panel therefore finds that the Complaint satisfies the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of Respondent:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

At the time this decision was issued, the disputed domain name resolved to a commercial search engine with links to websites offering products of Complainant’s competitors which is strong evidence of bad faith.

The Panel therefore concludes that Respondent’s registration and use of the disputed domain name falls under paragraph 4(b)(iv) of the Policy.

The failure of Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has also been fulfilled.

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.com> be transferred to Complainant.

Eduardo Machado
Sole Panelist
Date: November 5, 2013