WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Officine Panerai A.G. Corp v. Nuri Fodul a/k/a kuvarsitwatch
Case No. D2013-2205
1. The Parties
The Complainant is Officine Panerai A.G. Corp of Steinhausen, Switzerland, represented by Winston & Strawn LLP, United States of America (“U.S.”).
The Respondent is Nuri Fodul a/k/a kuvarsitwatch of Gaziantep, Turkey.
2. The Domain Name and Registrar
The disputed domain name <luminor-panerai.com> 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 December 19, 2013. On December 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 January 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 26, 2014. On January 6, 2014, the Center received an email communication from the Respondent. However, the Respondent did not submit any formal response. The Center informed the parties of the commencement of the panel appointment process on January 27, 2014. On January 29, 2014, the Center received another email communication from the Respondent.
The Center appointed Jon Lang as the sole panelist in this matter on February 10, 2014. 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 is a division of Richemont and is located and doing business in Switzerland. It is a world famous luxury watch manufacturer designing and marketing to consumers its Luminor and Radiomir timepiece collections. Within these collections, are a variety of well-known models, including the Regatta, Marina Automatic, Radiomir Chrono, L’Astronomo and Luminor Marina time pieces. The Complainant operates through a network of authorized dealers across six continents. In addition to its branded boutiques, the Complainant’s distribution channel includes Tourneau, London Jewelers, Watches of Switzerland Ltd., and Harrods.
The Complainant operates an extensive website featuring information about its product lines, manufacturing processes, support resources, and worldwide activities (at “www.panerai.com”).
The Complainant has a number of relevant trade mark registrations1:
U.S. Reg. No. 2340290 for PANERAI (registration date: April 11, 2000), for a variety of goods and services, including chronometers, watches and clocks.
U.S. Reg. No. 2516018 for LUMINOR (registration date December 11, 2001) and covering jewelry and watches.
Switzerland Reg. No. 627794 for PANERAI (registration date: April 2, 2012) for wristwatches and bracelets, among other items.
Turkey Reg. No. 193925 for OFFICINE PANERAI FIRENZE (registration date: May 18, 1999) covering boxes and cases for watches, jewelry and precious stones, chronometers, watches and clocks.
Turkey Reg. No. 195745 for LUMINOR (registration date: June 11, 1999) covering watches and jewelry.
Little is known about the Respondent. He registered <luminor-panerai.com> (hereafter the ‘Domain Name’) on January 1, 2010. His e-mails of January 6, 2014 and January 29, 2014 referred to earlier, reveal little other than disinterest in the Domain Name and these proceedings, the earlier e-mail (sent following notification of the proceedings) stating “Hello i cannot find ( luminor-panerai.com ) on my godaddy account ! What can i do ? and i did not make any payment just i received email from godaddy domain was renewed please see below”, and the later e-mail (sent following notification that the due date for a Response had passed and that a Panel would be appointed) stating, “hi what are you saying. I don't understand luminor-panerai.com not mine anymore. I can not see that domain on my list at godaddy.com I don't want”
5. Parties’ Contentions
Due to extensive use and registration of the PANERAI Marks around the world, the Complainant is confident that the PANERAI and LUMINOR marks would be considered well known and/or famous under the laws of the United States, Switzerland, and Turkey. Further, the Complainant is confident that the PANERAI and LUMINOR Marks should be afforded the status of notorious marks and should therefore enjoy liberal protection under the Paris Convention.
The Domain Name is confusingly similar to the PANERAI and LUMINOR Marks because it fully incorporates those marks, merely adding a hyphen (and the generic Top-Level Domain ‘.com’).
Rights or Legitimate Interests
The Respondent lacks rights or legitimate interests in the Domain Name. The Respondent goes by the name of “Nuri Fodul” and “kuvarsitwatch”. He has never been commonly known by the PANERAI or LUMINOR Marks nor any variations thereof, and has never used any trademark or service mark similar to the Domain Name by which he may have come to be known (other than the use complained of).
The Respondent has never operated any bona fide or legitimate business using the Domain Name and is not making a noncommercial or fair use of it. The Respondent has used the Domain Name to publish a
pay-per-click website that advertises links to third-party websites offering products for sale that compete directly with those of the Complainant and/or which may be counterfeit ‘knock-offs’ of the Complainant’s own products. Such use does not constitute a bona fide or legitimate business use.
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 PANERAI and LUMINOR Marks.
The Respondent registered the Domain Name with either actual or constructive knowledge of the Complainant’s rights in the PANERAI and LUMINOR Marks by virtue of Complainant’s prior registration of those marks in Turkey, where Respondent is located; the United States, where the Registrar is located and where the Respondent’s website is targeted; and Switzerland, where the Complainant is located.
Registration of a confusingly similar domain name despite such actual or constructive knowledge, without proper cause, evidences bad faith registration within the meaning of the Policy.
The Domain Name has been used to publish a website advertising links offering for sale products of the Complainant’s competitors and/or counterfeit ‘knock-offs’ of the Complainant’s own products, or to direct visitors to competing goods and services of others. Such activities fall squarely within the explicit example of bad faith registration and use found in the Policy at paragraph 4(b)(iv).
Moreover, such activity is disruptive to the Complainant’s business providing yet further evidence that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(b)(iii) of the Policy.
There is no reason for the Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s PANERAI and LUMINOR Marks. As such, the nature of the Domain Name itself evidences bad faith registration and use.
Finally, even if the Respondent were to argue that he was somehow unaware of the Complainant’s rights in the PANERAI and LUMINOR Marks, had the Respondent conducted even a preliminary trademark search, he would have found the Complainant’s various trademark registrations for the PANERAI and LUMINOR Marks and the websites associated with those marks, and numerous additional references evidencing the Complainant’s use of its marks in connection with its goods and services.
The Respondent did not formally reply to the Complainant’s contentions and nothing in either of the e-mails referred to earlier from the Respondent provides anything even close to resembling an answer to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is:
(i) identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its PANERAI and LUMINOR Marks.
The Domain Name incorporates both marks in their entirety. The only addition to the Domain Name beyond the PANERAI and LUMINOR Marks (apart from the ‘.com’ suffix, which may be ignored for comparison purposes) is a hyphen between the two marks. Thus the PANERAI and LUMINOR Marks are the Domain Name’s dominant, (if not only) elements. However, their combination means that the Domain Name is not identical to either the PANERAI Mark or the LUMINOR Mark and accordingly, the question of confusing similarity falls to be decided.
Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
Given the distinctive nature of both the PANERAI and LUMINOR Marks, each readily recognisable within the Domain Name, the Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s PANERAI and LUMINOR Marks. The fact that they are separated by a hyphen, makes each mark all the more recognizable - the two separate marks are not conflated, but kept apart.
Even if one were to adopt a possibly slightly higher burden and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the domain name in issue and the complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that there is some form of association between the Respondent (the owner of the Domain Name) and the Complainant, particularly as an Internet user looking for watches of quality might expect to see the PANERAI Mark and LUMINOR Mark appearing together.
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy and thus this element of paragraph 4(a) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that he does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests for the purposes of the Policy.
Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves i.e. a parking page containing links to websites of others offering competing products, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put. Moreover, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name he did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. This seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that a domain name, which so obviously takes advantage of the fame of the trademarks to which it is confusingly similar, is being used in connection with a bona fide offering in circumstances where such domain name resolves to a parking page of the type described. As paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear, it is possible, in certain circumstances, for use of a domain name for advertising purposes, (including parking pages) to provide a legitimate interest within the meaning of the Policy. For instance, if a registrant intends to profit from the descriptive element of a domain name without intending to take advantage of a third party’s rights. However, as the panel noted in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, if the owner of the domain name is using it 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)”. The Respondent’s choice of domain name here seems a clear attempt to unfairly capitalise on or otherwise take advantage of the Complainant’s PANERAI and LUMINOR Marks.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and his e-mails referred to earlier do not address the substance of the Complaint. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As a general observation, it seems to this Panel that it is extremely likely, particularly given the use made of the Domain Name by the Respondent, that he was aware of the Complainant’s PANERAI and LUMINOR Marks at the time of registration.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. Paragraph 4(b)(iv) of the Policy provides that a complainant may demonstrate bad faith registration and use by showing that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. The Complainant advances a number of contentions in support of its allegation of bad faith, including those circumstances described in paragraph 4(b)(iv) of the Policy.
In the Panel’s view, the circumstances of this case fall squarely within paragraph 4(b)(iv) of the Policy. (The Panel need not therefore make any findings in relation to the other contentions advanced by the Complainant).
Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <luminor-panerai.com> be transferred to the Complainant.
Date: February 19, 2014
1 The Panel has performed independent limited factual research and has confirmed through the relevant online trademark databases that the trademarks are in fact currently owned by the Complainant.