WIPO Arbitration and Mediation Center


Officine Panerai A.G. Corp. v. RAY Prodotti / Registration Private, Domains By Proxy, LLC

Case No. D2014-0548

1. The Parties

Complainant is Officine Panerai A.G. Corp. of Steinhausen, Switzerland, represented by Winston & Strawn LLP, United States of America.

Respondent is RAY Prodotti of Paris, France / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <paneray.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 April 4, 2014. On April 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2014, the Registrar transmitted by email to the Center its verification 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 April 8, 2014 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 April 14, 2014.

The Center verified that 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 April 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2014.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 23, 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

Complainant is an Italian luxury watch manufacturer, founded in 1860. The watches sold under the PANERAI trademark are distributed and commercialized worldwide through its authorized dealers and company-owned boutiques.

Complainant owns several registrations for trademark PANERAI, such as (i) U.S. registration No. 2340290, dated April 11, 2000 to cover "boxes and cases for watches; jewellery and precious gem stones", including also "chronometers, watches and clocks", and (ii) Switzerland registration no. 627794, dated April 2, 2012, which covers wrist watches and bracelets, among other items, as per Annex 5 of the Complaint.

Complainant also owns the domain name <panerai.com> since September 10, 1997.

The disputed domain name <paneray.com> was registered by Respondent on April 2, 2010.

5. Parties' Contentions

A. Complainant

Complainant argues that the disputed domain name <paneray.com> is confusingly similar to the PANERAI marks since it incorporates the mark with the mere misspelling of the expression "panerai" as "paneray".

Moreover, Complainant considers that the addition of the generic top level domian".com" does not make the disputed domain name less confusing, citing previous: F. Hoffmann-La Roche AG v. Private Whois cheapvalium24.com, WIPO Case No. D2012-0089 in this regard.

Complainant also requires special attention to the longstanding PANERAI marks registered in the United States of America in the year 2000 and in Switzerland in 2012, both of which are collectively referred as the "PANERAI Marks".

Additionally, Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name since Respondent has never been commonly known or recognized as "Panerai", nor has ever used any trademark similar to the disputed domain name. In this sense, Complainant cites previous UDRP decisions where respondents had not established rights or legitimate interests since there was no indication that they were commonly known as their respective domain names: Winston, Inc. and Harry Winston, S.A. v.h, WIPO Case No. D2008-1266 and Alstom v. Yulei, WIPO Case No. D2007-0424.

Complainant holds that Respondent has never operated any bona fide or legitimate business under the disputed domain name, and it is using it to promote a website which advertises and sells competing watch products under a "RAY" trademark.

Furthermore, Complainant alleges that the products advertised through the disputed domain name, such as watch bands and watch boxes, were created specially to be used in connection with watches sold under the PANERAI mark. Also, Complainant states that the images of the products advertised under the "RAY" trademark appear to be images of PANERAI watches, as per Annex 6 of the Complaint, which also shows the bad faith of Respondent.

Complainant claims that Respondent has registered and is using the disputed domain name in bad-faith since it must have had knowledge of Complainant's prior trademark registrations and website.

Lastly, Complainant affirms that it has neither granted Respondent any license nor has it otherwise permitted Respondent to use the trademark PANERAI or even to apply for any domain names incorporating said trademark.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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.

The burden of proving these elements is on Complainant.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for PANERAI worldwide.

The Panel finds that the disputed domain name is confusingly similar to such trademark with a mere misspelling of "panerai" as "paneray", substituting only the mark's last letter "i", for "y", which does not alter the word's phonetic pronunciation.

The Panel understands that a domain name containing almost totally of a third party's trademark is sufficient to cause confusion and create false associations misguiding consumers into believing that the domain name is directly related to the products and services provided by the trademark owner.

Therefore, the Panel finds that the disputed domain name <paneray.com> is confusingly similar to Complainant's PANERAI trademark.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition ("WIPO Overview, 2.0") as follows: "[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."

In this case Complainant has provided sufficient prima facie proof of "no rights or legitimate interests", so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant's prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <paneray.com>.

The Panel acknowledges that Complainant has never entered in any agreement, authorization or license whatsoever with Respondent, regarding the use of the trademark PANERA".

Furthermore, it is clear to this Panel that there is no trademark registered, in the name of Respondent, that consists of, or contains, the term "Panerai", nor has Respondent any rights on an unregistered basis to such trademark.

Also, the Panel concurs that Respondent is not commonly known as "Panerai" or "Paneray", and has never used any trademark or service mark similar to the disputed domain name.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain name in question (Policy, Paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant's, rights to the trademark PANERAI at the time of registration of the disputed domain name, considering its notoriety worldwide.

Despite Complainant's allegations, the Panel could not access the disputed domain name's corresponding website to verify the eventual sales of products similar to Complainant's products, or the utilization of images of Complainant's products.

In this sense, the Panel notes that the disputed domain name is not being currently used with an online website, which constitutes "passive holding", which may also, in certain circumstances, constitute evidence of bad faith use. In this sense, the Panel refers to consensus view of WIPO UDRP panels regarding cases involving passive holding, found in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"):

"3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?

See also the relevant section in the WIPO Legal Index.

Consensus view: With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere "parking" by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).

Relevant decisions:

Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, Transfer Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, <jupiterscasino.com> inter alia, Transfer Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, <ladbrokespoker.com> inter alia, TransferWestdev Limited v. Private Data, WIPO Case No. D2007-1903, <numberone.com>, TransferMalayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393, <maybank.com>, Transfer Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, <pentiumgroup.net>, Transfer."

In this case the Complainant's trademark is well known, there was no Response filed, and considering the previous bad faith use of the disputed domain name, the Panel finds the requirement of paragraph 4(a)(iii) has been met.

Moreover, the Panel also agrees that it is highly unlikely that Respondent was unaware of Complainant's rights in respect to the PANERAI trademarks, as Respondent could have conducted a preliminary trademark search and found various trademark registrations for PANERAI and its associated website, as well as additional references in commerce and on the Internet, connecting Complainant's registered marks with its goods and services.

Accordingly, the Panel concludes 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 <paneray.com> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: June 6, 2014