WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Manufacture Jaeger-LeCoultre S.A v. Whois Privacy Services Pty Ltd. / Quantec, LLC/Novo Point, LLC, Damon Nelson
Case No. D2014-0642
1. The Parties
The Complainant is Manufacture Jaeger-LeCoultre S.A of Le Sentier, Switzerland, represented by Winston & Strawn LLP, United States of America (“US”).
The Respondent is Whois Privacy Services Pty Ltd. of Queensland, Australia / Quantec, LLC/Novo Point, LLC, Damon Nelson of Texas, US, represented by Gary N. Schepps, United States of America.
2. The Domain Name and Registrar
The disputed domain name <jaegerlecoulture.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2014. On April 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2014, 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. On April 24, 2014, the Registrar provided a copy of an order issued by the United States District Court for the Northern District of Texas, Dallas Division, relating to the disputed domain name. The Center sent an email communication to the Complainant on April 24, 2014 providing notice of the court order to the Complainant. The Center sent an email communication to the Complainant on April 29, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On May 2, 2014, the Complainant filed a request for suspension pending the outcome of the court proceedings. This is discussed further in section 6 below.
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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 28, 2014.
The Center appointed Adam Taylor as the sole panelist in this matter on June 4, 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 incorporated in Switzerland. Since the nineteenth century, the Complainant and its predecessors have been providers of luxury wrist watches and clocks marketed and sold under the trade name “Jaeger-LeCoultre”. The Complainant offers its products for sale through an international network of Jaeger-LeCoultre boutiques, including one in New York, as well as through over 800 authorised retailers worldwide.
The Complainant’s main website is at “www.jaeger-lecoultre.com”.
The Complainant invokes a number of registered trade marks for JAEGER-LECOULTRE, which appear to have been originally owned by the Complainant but since assigned to Richemont International SA, also incorporated in Switzerland. These include: Australian trade mark No.106019 filed April 30, 1951, Swiss trade mark No. 311357 filed March 20, 1962 and US trade mark No. 1339139 filed June 28, 1982, all in international class 14.
The disputed domain name was registered on May 28, 2005.
A screenshot dated April 16, 2014 shows the disputed domain name being used for a pay-per-click website with links to subject-headings referring to the Complainant, to competitors of the Complainant and to watches and related products (Annex 6 of the Complaint).
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions:
Identical or Confusingly Similar
Due to the extensive use and registration of the Complainant’s marks throughout the world, they have become famous, including under the laws of Australia, Switzerland and the US.
The disputed domain name is confusingly similar to the Complainant’s JAEGER-LECOULTRE trade mark because it simply replaces “coultre” with “coulture” and omits the hyphen.
Rights or Legitimate Interests
The Respondent lacks rights or legitimate interests in the disputed domain name. It hides behind a privacy service and has never commonly been known by the Complainant’s mark – other than in connection with its infringing use.
The Respondent has never operated a bona fide or legitimate business under the disputed domain name and is not making a protected noncommercial or fair use thereof. The Respondent is using the disputed domain name to direct visitors to a pay-per-click advertising site advertising links to third party sites offering products which may or may not compete directly with the Complainant and/or which may be counterfeits. The Complainant has not granted the Respondent any licence to own domain names which are confusingly similar to its trade marks.
Registered and Used in Bad Faith
The Respondent registered the disputed domain name with actual or constructive knowledge of the Complainant’s marks by virtue of the Complainant’s prior registration of marks in Australia, where the Respondent is located, in Switzerland, where the Complainant is located, and in the US where the Respondent’s website is targeted.
Also the disputed domain name has been used to publish a site advertising third party sites which offer products of the Complainant’s competitors. Such activities fall within paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
There is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s marks. Also the nature of the domain name itself evidences bad faith registration and use
Even if the Respondent argues that it was somehow unaware of the Complainant’s rights in its marks, the Respondent would have found the Complainant’s trade mark registrations by conducting even a preliminary trade mark search.
The Response consists of a letter from the Respondent’s lawyers, which is summarised below:
The Respondent accepts that JAEGER-LECOULTRE is a famous brand name. For that reason, “LeCoulture” is not confusingly similar as it is an obvious take-off, combining “Jaeger” with the term “culture”.
Because of the litigation, the disputed domain name was frozen and the Respondent has been unable to gain control of the DNS server. So the Respondent has been unable to begin its use of the disputed domain name because the Registrar has frozen the disputed domain name pointing to the prior owner’s pages. Since the Respondent has not yet used the disputed domain name, as a matter of law the Respondent has not used the disputed domain name in bad faith.
The Respondent does not intend to redirect the disputed domain name to competitors of the Complainant and the Respondent has never agreed to such use.
Once the courts have resolved the litigation and control of the disputed domain name is provided to the Respondent, it can start its intended use of the disputed domain name, which is for noncommercial commentary on the cultural significance of the Complainant’s watches and how, over time, culture has evolved as reflected by the changing watch styles. The Respondent has a clear legitimate and lawful interest in using the disputed domain name.
6. Discussion and Findings
A. Court Proceedings
The Complainant requests suspension of the proceeding until the US litigation is terminated. The Complainant offers to monitor the litigation and inform the Center once the litigation is terminated. Alternatively the Complainant requests that the case be dismissed without prejudice.
The Complainant says that it was unaware of the litigation when it filed the Complaint as the identities of the underlying registrants, who are parties to the litigation, only became apparent when the privacy service disclosed this information following filing of the Complaint.
The Respondent has made no comment on the Complainant’s request for suspension / dismissal.
Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate or continue a UDRP proceeding where the disputed domain name is the subject of other pending legal proceedings.
Paragraph 4.14 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“…A panel may determine (as happens in rare instances) that a UDRP dispute cannot be evaluated separately from such ongoing court proceeding, and may terminate or suspend the UDRP case on that basis, normally (in the case of termination) without prejudice to the filing of a future UDRP complaint pending resolution or discontinuation of such court proceeding. As to any previous court proceedings, it is in the UDRP panel's discretion to determine what weight to ascribe thereto, in light of all circumstances…
Courts are not bound by UDRP panel determinations; where a domain name subject to a UDRP panel decision becomes subject to a court proceeding (for example, because a respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such court case is generally acknowledged to represent a de novo hearing of the case under national law.”
The gist of the Complainant’s case for suspension / dismissal is that it was unaware of the court proceedings when it filed the Complaint, implying that it may have delayed filing the Complaint had it known of those proceedings at the time.
However, the Complaint has now been filed and the question for the Panel is whether there is any reason as to why the UDRP dispute cannot be evaluated separately from the court proceedings. The Complainant has not specifically addressed this question.
The Panel has limited information about the court proceedings. The only court document on the record is the order of the US District Court for the Northern District of Texas, Dallas Division, dated February 28, 2014 (“the Order”). It is clear from this that the proceedings relate, at least in part, to a receivership in place over the assets of Novo Point, LLC / Quantec, LLC (“the Novo Point / Quantec Assets”) – which entities were confirmed as the underlying registrant of the disputed domain name by the privacy service following service of the Complaint.
The Registrar sent the Order to the Center, which duly forwarded it to the Parties.
The Panel accepts that the Complainant had no prior knowledge of the court proceedings, and further notes that the Complainant has not brought any further specifics as to these proceedings to the Panel’s attention. Assuming that the disputed domain name is included within the Novo Point / Quantec Assets referred to in the Order (this is nowhere specified), the only material parts of the Order appear to be:
1. rejection of the receiver’s request for a hearing or proceeding to determine ownership of the Novo Point / Quantec Assets;
2. return of all Assets to Novo Point / Quantec’s designated agent by March 7, 2014;
3. winding down of the receivership; and
4. denial of a request for an order enjoining any third-party actions regarding the Novo Point / Quantec Assets for sixty days to twelve months on the basis that “[i]f the court lacks jurisdiction over the disputes regarding the ownership of the Novo Point and Quantec receivership assets, it would seem that it also lacks jurisdiction to enjoin third-party claims dealing with this matter, particularly those claims that have already been filed, litigated, or arbitrated or are in the process of being litigated or arbitrated”.
Accordingly, the only document available to the Panel relating to the court proceedings expressly states that the court has no power to prevent third-party claims relating to the Novo Point / Quantec Assets, which are to be returned to the control of those entities.
The Panel does not, in these circumstances, find that the present dispute should be suspended or terminated on the basis that it cannot be evaluated separately from such ongoing court proceeding. The Panel will therefore proceed to a decision.
The Panel notes, however, that this decision is without prejudice to any action the relevant court may deem appropriate or necessary in furtherance of the Order. The Panel further notes that nothing in the Complainant's conduct appears to have sought to undermine or contradict the relevant court’s discretion in this matter.
B. Identical or Confusingly Similar
The registered trade marks asserted by the Complainant are in fact owned by Richemont International SA (“Richemont”). The Panel understands that the Complainant is a subsidiary of Richemont. In the circumstances of this case, the Panel is prepared to infer the existence of a licence and/or authorization from Richemont to the Complainant. See paragraph 1.8 of WIPO Overview 2.0. In any case, the Respondent admits that “Jaeger-LeCoultre” is a famous brand name has effectively conceded that the Complainant possesses common law rights. The Panel therefore finds that the Complainant has established that it has rights in a trade mark for purposes of the Policy.
The Respondent claims that the disputed domain name is not confusingly similar because it is “an obvious take-off”, combining “Jaeger” with the term “culture”. However, that is not quite correct because the second part of the disputed domain name is “lecoulture” whereas “culture” in French (incorporating the definite article) is “la culture”. The second part of the disputed domain name uses “le” instead of “la” and adds “o” after the “c”.
In the Panel’s view therefore, the most that can be said is that the second part of the disputed domain name is a misspelling of the Complainant’s trade mark which alludes indirectly to the French word for culture. However, the variation from Complainant’s mark is slight and both the disputed domain name and the trade mark share the distinctive word “Jaeger”. The Panel has little doubt that there remains a high likelihood of Internet user confusion and that the disputed domain name is therefore confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services.
The only evidence of use of the disputed domain name before the Panel is the parking page with links for watches and related products. Clearly use of the disputed domain name for advertising links related to the trade mark value of the Complainant’s non-descriptive trade mark does not constitute a bona fide offering of goods or services – see paragraph 2.6 of WIPO Overview 2.0.
Furthermore, the Respondent disclaims any responsibility for this use of the disputed domain name and has put forward a different alleged intended use of the disputed domain name. This is discussed further in section D below. For the moment it suffices to say that the Respondent has not provided any evidence supporting its alleged intended non-commercial use of the disputed domain name and that, in the Panel’s view, the Respondent’s mere assertion does not constitute evidence that paragraph 4(c)(i) of the Policy applies.
Nor is there any evidence that paragraph 4(c) (ii) of the Policy applies in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
As mentioned above, the Respondent has sought to distance itself from the parking page at the disputed domain name. The Respondent makes no attempt to defend that use of the disputed domain name. Instead, it claims that the parking page was the responsibility of the “prior owner” and that it has only remained in place because the disputed domain name was “frozen” by the Registrar as a result of the pending legal proceedings.
The Respondent claims that, for this reason, it has not yet begun its intended use of the disputed domain name which is “for non-commercial commentary on the cultural significance of the Complainant’s watches and how, over time, culture has evolved as reflected by the changing watch styles”. It claims that it will start this use of the disputed domain name once the courts have resolved the litigation and provided control of the disputed domain name to the Respondent.
In these circumstances, where the Respondent claims that a “prior owner” is responsible for a parking page which appeared on the disputed domain name during the Respondent’s “watch”, the Panel would expect to see some proof, such as a screenshot showing the parking page in place on a date before the Respondent acquired the disputed domain name, documents evidencing the date and details of the transaction whereby the Respondent acquired the disputed domain name from the alleged prior owner and/or correspondence relating to the alleged freezing of the disputed domain name by the Registrar. But there is not a single piece of evidence supporting the Respondent’s claims as to its alleged lack of responsibility for the parking page or indeed as to its alleged intended purpose in acquiring the disputed domain name.
For those reasons, the Panel is not convinced by the Respondent’s denial of responsibility for the parking page. In the Panel’s view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, comprising the Complainant’s distinctive trade mark, in connection with a parking page with links to products relating to the Complainant’s industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
In the circumstances of this case, the Panel is unpersuaded by the Respondent’s unsupported assertions regarding its intended use of the disputed domain name for noncommercial commentary.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <jaegerlecoulture.com> be transferred to the Complainant.
Date: June 18, 2014