WIPO Arbitration and Mediation Center


Van Cleef & Arpels SA v. Sanjeev Prakash

Case No. D2013-1648

1. The Parties

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

The Respondent is Sanjeev Prakash of Columbus, Ohio, US, represented by Predieri Legal Services LLC, US.

2. The Domain Names and Registrar

The disputed domain names <a-graceful-leaf-of-pave-set-diamonds-curls-in-van-cleef-arpels.com>, <a-little-modern-masterwork-by-van-cleef-arpels-presents-a-oval.com>, <artisans-cartier-van-cleef-and-arpels-winston-bulgari-tiffany.com>, <kennedy-proposed-jackie-with-van-cleef-arpels-engagement-ring.com>, <van-cleef-arpel-oval-sapphire-sleek-wide-ring-2-baguette-tracks.com>, <van-cleef-arpels-to-make-womens-gold-and-pave-set-diamond-band.com> and <van-cleef-arpel-the-contract-bracelet-for-our-contract-18-v-37.com> are 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 19, 2013. On September 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 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 September 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2013. The Response was filed with the Center on October 11, 2013. As Section B of the Response states that “The Respondent consents to the transfer of all websites that are the subject of this Case No. D2013-1648”, the Center sent an email communication to the Parties on October 11, 2013 regarding a possible settlement of the dispute and the possibility to request a suspension of the proceedings to try to reach an amicable solution to the dispute and sent reminders on October 14 and 16, 2013. No response was received. Accordingly, on October 18, 2013, the Center notified the Parties of the commencement of panel appointment process.

The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on October 29, 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.

The proceedings are conducted in English as this is the language of the registration agreement for the disputed domain names.

On November 1, 2013, the Respondent’s representative filed with the Center via email its Response agreeing to transfer all the websites with which the Complaint is concerned.

On November 12, the decision due date was extended to November 19, 2013.

4. Factual Background

The Complainant is a well-known jeweler that was founded in Paris in 1906 by Alfred van Cleef and Charles Arpels. 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 fine jewelry. The Complainant’s business has since expanded to also include luxury watches and fragrances.

The Complainant sells its watches, jewelry, and perfume around the world through a network of over 125 self-operated boutiques and carefully selected retailers in Asia, Europe, North America and South America. Its official website is located at “www.vancleefarpels.com”.

The Complainant owns a Switzerland-based international trademark registration since 1966 for VAN CLEEF & ARPELS in international class 14 covering precious metals among other jewelry pieces. The Complainant also owns a federal trademark registration in the US since 1986 for VAN CLEEF & ARPELS in international class 14 with respect to jewelry and watches.

The Respondent registered the disputed domain names between December 28, 2012, and January 11, 2013. Some of the disputed domain names resolve to websites describing jewelry collections from the Complainant and other luxury brands, including pictures of celebrities modeling the jewels and apparently offering Complainant's and competing goods and services of others for sale. Some of the disputed domain names resolve to websites including pay-per-click links to third parties' websites that offer products in competition with those offered under Complainant's trademark.

5. Parties’ Contentions

A. Complainant

The Complainant’s factual and legal contentions can be summarized as follows:

i. The Complainant’s VAN CLEEF & ARPELS mark has become famous under the laws of the US and Switzerland due to its extensive use and registration around the world;

ii. The disputed domain names are confusingly similar within the meaning of the Policy because they fully incorporate the VAN CLEEF & ARPELS mark, and merely remove the non-essential element (the ampersand); add hypens, and generic terms associated with Complainant’s line of business such as “rings” and “jewelry”, and other references such as “Jackie Kennedy”;

iii. The 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 mark;

iv. The Respondent has never been commonly known by the VAN CLEEF & ARPELS mark nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain names, other than the infringing use noted herein;

v. The Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making a protected non-commercial or fair use of them;

vi. The inclusion of blogs or references in the disputed domain names, containing pay-per-click links to third-party websites offering for sale goods and services that compete directly with the Complainant, and which may relate to counterfeit goods, does not constitute a bona fide or legitimate business use;

vii. The Respondent registered the disputed domain names with either actual or constructive knowledge of Complainant’s rights in the VAN CLEEF & ARPELS mark by virtue of preexisting trademark registrations in the US, where the Respondent’s websites are targeted and where the Respondent is a resident, and Switzerland, where the Complainant is located;

viii. The disputed domain names have been used to publish websites directing visitors to competing goods and services of others, which activity falls squarely into the explicit example of bad faith registration and use found in paragraph 4(b)(iv) of the Policy;

ix. Several of the disputed domain names resolve to websites with links to third-party sites that offer products in competition with those offered under the Complainant’s mark. Such activities are disruptive to Complainant’s business and therefore conclusive evidence that the Respondent registered and are using the disputed domain names in bad faith pursuant to Policy paragraph 4(b)(iii);

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

xi. Even if Respondent argues that he 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 registration in the VAN CLEEF & ARPELS mark and the websites associated with the mark evidencing Complainant’s use of its mark in connection with the Complainant’s goods or services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions but it did convey on two separate occasions its acquiescence to the transfer of the websites associated with the disputed domain names.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that:

i. the disputed domain name 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 in respect of the disputed domain name; and

iii. the disputed domain name was registered and is being used in bad faith.

A. Consent to Relief

As a preliminary matter, the Panel notes that the Respondent has timely filed a Response on October 11, 2013 with the sole purpose of acquiescing to the transfer of the websites associated with the disputed domain names. Following the Panel’s appointment, the Respondent affirmed its consent to the relief sought in the Complaint by its communication of November 1, 2013.

In evaluating these submissions, paragraph 15(a) of the Rules provides that the Panel shall decide the 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.

Neither the Policy nor the Rules address the effect of a Respondent’s acceptance to the remedy requested by a Complainant in UDRP proceedings.

However, paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) considers whether a UDRP panel can decide a case on the basis of a respondent’s consent to transfer, as follows:

“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone. Some panels have done so on the basis of giving effect to party agreement as to outcome (sometimes, where the parties so request, on a no-fault basis), with a few also by deeming such consent to satisfy the requirement of the three elements of the UDRP (sometimes by virtue of deemed admission). Some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits; for example, because the panel needs to be certain that the complainant has shown that it possesses relevant trademark rights, or because there is ambiguity as to the genuineness of the respondent’s consent, or because the respondent has not expressly admitted bad faith, or because the panel finds there is a conduct or other aspect to the proceedings which warrants a full determination on the record, or because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g. in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP).”

Considering the above pathways, the Panel has decided to dispense with its analysis of the three elements under paragraph 4(a) of the Policy with a view to giving effect to the Respondent’s unambiguous and ratified consent to the redress sought by the Complainant.

In doing so, the Panel has paid regard to the fact that the Complainant remained silent after being copied, first on the Response filed on October 11, 2013, and later on the email of November 1, 2013 restating Respondent’s acquiescence to the remedy requested in the Complaint. In the Panel’s mind, this silence implies that the basis for the decision to order transfer is immaterial to the Complainant.

Notwithstanding the foregoing, the Panel acknowledges that had it proceeded to a decision on the merits, the Complainant would have prevailed on substantive grounds too.

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 names <a-graceful-leaf-of-pave-set-diamonds-curls-in-van-cleef-arpels.com>, <a-little-modern-masterwork-by-van-cleef-arpels-presents-a-oval.com>, <kennedy-proposed-jackie-with-van-cleef-arpels-engagement-ring.com>, <van-cleef-arpel-oval-sapphire-sleek-wide-ring-2-baguette-tracks.com>, <van-cleef-arpels-to-make-womens-gold-and-pave-set-diamond-band.com> and <van-cleef-arpel-the-contract-bracelet-for-our-contract-18-v-37.com> be transferred to the Complainant.

The Panel also orders that the disputed domain name <artisans-cartier-van-cleef-and-arpels-winston-bulgari-tiffany.com> be transferred. This decision is without prejudice to any third party rights in the marks contained in the disputed domain name <artisans-cartier-van-cleef-and-arpels-winston-bulgari-tiffany.com> other than VAN CLEEF & ARPELS.

Reynaldo Urtiaga Escobar
Sole Panelist
Date: November 19, 2013