WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lange Uhren GmbH v. Whois Privacy Services Pty Ltd / Domain Hostmaster, Customer ID: 97459717259019/ Dzone Inc. Mike Kerry
Case No. D2013-1699
1. The Parties
1.1 The Complainant is Lange Uhren GmbH, of Bellevue-Geneva, Switzerland, represented by Winston & Strawn LLP, United States of America.
1.2 The Respondent is Whois Privacy Services Pty Ltd. Domain Hostmaster Customer ID: 97459717259019, of Fortitude Valley, Australia; Dzone Inc. Mike Kerry, of gwangju, Republic of Korea.
2. The Domain Name and Registrar
2.1 The disputed domain name <langesohne.net> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2013. At the time of the Complaint the name recorded on the publically available WhoIs database in relation to the Domain Name was “Whois Privacy Services Pty Ltd / Domain Hostmaster, Customer ID: 97459717259019”.
3.2 On October 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 2, 2013, the Registrar transmitted by email to the Center its verification response disclosing “Dzone Inc. Mike Kerry” as the registrant for the Domain Name. The Center sent an email communication to the Complainant on October 4, 2013 providing the registrant and associated contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 7, 2013.
3.3 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”).
3.4 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 October 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2013.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 11, 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
4.1 The Complainant is a company incorporated under the laws of Germany and founded in the early 1990s. It is a leading provider of luxury wrist and pocket watches and forms part of the Richemont group of companies.
4.2 The Complainant offers its luxury watches for sale across the world under the trade name A. LANGE & SÖHNE through a network of boutiques and authorized retailers. There are currently over 140 authorised retailers in Asia, Europe, and North and South America. Additionally, the Complainant has opened a number of boutique stores, selling exclusively its “A. LANGE & SÖHNE” banded timepieces in various locations across the globe, including in Dubai, Hong Kong, Milan, Moscow, and New York.
4.3 The Complainant is the owner of various marks around the world that comprise or incorporate the terms “Lange” or “A. Lange & Söhne”. They include:
(i) United States trade mark registration no. 2430848. for the word mark A. LANGE & SÖHNE, having a registration date of February 27, 2001, and covering “watches,” among other items in class 14;
(ii) Australian trade mark registration no. 788155 for the word mark LANGE, with a registration date of March 12, 1999, and covering “watches and chronometric instruments” among other items in class 14; and
(iii) South Korean trade mark registration no. 4004707800000 with a registration date of May 26, 2000, and covering “watch bands and watch bracelets” among other items in class 14 which takes the following form:
4.4 The Domain Name was registered on June 19, 2008. The current registrant of the Domain Name would appear to be a company or individual based in South Korea.
4.5 As at September 2013 the Domain Name was being used to display a page that displayed all the hallmarks of being a pay-per-click parking page. The links displayed on that page appear to have linked to various websites in relation to various products. However, they included links to websites for jewellery and luxury watches.
4.6 As at the date of this decision the Domain Name, when typed into a browser in the United Kingdom (the location of the panellist appointed to deal with this matter), links to a Sedo parking page.
5. Parties’ Contentions
5.1 The Complainant contends that it has achieved a “high volume of industry and media attention”. It refers to various awards that it has won in relation to its products including, in 2009, the prestigious "Aiguille d'Or" Award at the Grand Prix de l’Horlogerie. It also claims that the “A. LANGE & SÖHNE brand” has been named Germany’s top luxury brand three times in a row (in 2007, 2009 and 2011) by the German business news magazine WIRTSCHAFTSWOCHE.
5.2 The Complainant refers to its various trade mark registrations and contends that due to, inter alia, their “extensive use” these marks “have become famous under the laws of Germany, South Korea, the United States, and Australia” and have “obtained the status of a notorious mark and therefore enjoy liberal protection under the Paris Convention”.
5.3 The Complainant contends that the Domain Name is confusingly similar to its A. LANGE & SÖHNE marks because it contains the dominant elements of the mark “LANGE & SOHNE,” merely omits non-critical elements (the ampersand and “A.”), and adds the generic Top Level Domain (“gTLD”) “.net”.
5.4 The Complainant further contends that the Respondent has never been commonly known by the “A. LANGE & SÖHNE marks, nor any variations thereof and has never used any trade mark or service mark similar to the [o]ffending Domain”. Further, it contends that the Respondent has never operated any bona fide or legitimate business under the Domain Name and is not making a protected non-commercial or fair use of the Domain Name. Instead, it claims that the Respondent is using the Domain Name to direct visitors to a pay-per-click advertising website which advertises links to various third-party websites, offering for sale products which may or may not compete directly with the Complainant’s goods and/or which may be counterfeit products.
5.5 The Complainant also confirms that the Complainant has not granted the Respondent any license, permission, or authorisation by which it could own or use any domain name registrations which are confusingly similar to its marks.
5.6 The Complainant further claims that the Respondent registered the Domain Name with either actual or constructive knowledge of the Complainant’s rights in the A. LANGE & SÖHNE marks by virtue of Complainant’s prior registration of those marks with the trade mark office of South Korea, where the Respondent is located; the United States, where the Respondent’s websites are said to be targeted; Australia, where the Registrar is located, and Germany, where the Complainant is located.
5.7 Further, the Respondent’s pay-per-click use of the Domain Name is said to fall within the scope of paragraph 4(b)(iv) of the Policy.
5.8 Further, the nature of the Domain Name itself is said to evidence bad faith registration and use.
5.9 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel has already made reference to the fact that the Complainant is the owner of various marks that either comprise or incorporate the term “A. Lange & Söhne”. The Panel also accepts that a sensible (and as far as the Panel is aware, the only sensible) reading of the Domain Name is as the two terms “Lange” and “Sohne” in combination with the addition of the “.net” gTLD. Given that the “A.” and an ampersand are not particularly striking aspects of the marks relied upon, the lack of “A.” and an ampersand from the Domain Name does not prevent a finding of confusing similarity. In the words of the Complainant, these elements are “non-critical”.
6.5 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 It is reasonably clear in this case that the Domain Name has been and continues to be used by the Respondent in connection with a “domain name parking” or “pay-per-click” service. The evidence of that use is limited to a print out in September 2013 and the Domain Name appears to have been registered a number of years earlier. However, there is no evidence or argument before the Panel to suggest that there has been any other use.
6.7 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”)). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267). Indeed, such a finding is a positive indicator of the fact that no rights or legitimate interests exist (see Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).
6.8 Therefore, in this case the assessment of rights or legitimate interests essentially boils down to the question: is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.9 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained under that heading below, the Panel has reached the conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant’s trade marks. In the circumstances, the Panel also finds that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 The Complainant puts forward various arguments as to why the Domain Name has been registered and used in bad faith. So far as bad faith registration is concerned it includes an argument of “constructive notice”. It is an argument that rarely succeeds and the Panel rejects it in this case. The reasons why are addressed in paragraph 3.4 of the WIPO Overview 2.0.
6.11 Nevertheless, the Panel concludes that there has been bad faith registration and use in this case. The reason for this is as the Complainant contends the Domain Name itself evidences bad faith registration and use. As the Panel has already recorded, the Domain Name can be read, and as far as the Panel is aware can only be sensible read, as the two terms “Lange” and “Söhne”. Given this, it is difficult to understand how those terms might have come to be registered other than because of their associations with the Complainant.
6.12 The Panel understands (although there is no evidence to this effect before it) that “Lange” is not an uncommon German surname and the word “Söhne” is the German word for sons. Given this it is not completely impossible that the Domain Name might have been registered for some purpose unconnected with the Complainant. However, that is mere speculation on the part of the Panel and there is nothing to support such a finding in this case. Indeed, everything before the Panel suggests the opposite.
6.13 Particularly relevant in this respect is the fame that the Complainant contends that it has developed in its mark and the evidence provided in this respect (some of which pre-dates the date of the Domain Name’s registration). Further, there is no obvious legitimate reason why a person or entity prima facie located in the Republic of Korea would have chosen such a term for registration. Given that fame and in the absence of any explanation from the Respondent, the Panel holds that the most likely reason why the Domain Name was registered was with the knowledge of, and with the intention of taking advantage in some manner or other of the similarity of, the Domain Name to the Complainant’s trade mark rights
6.14 When one adds to this the actual use of the Domain Name in connection with a Domain Name parking page, the obvious conclusion is that it was with this or a similar use in mind that the Domain Name was registered. Further, the Panel accepts that such use falls within the scope of paragraph 4(b)(iv) of the Policy.
6.15 Accordingly, the Panel holds that the Domain Name has been registered and used in bad faith and the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <langesohne.net> be transferred to the Complainant.
Date: November 16, 2013