WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont International SA v. Hrach Aghajanyan / “This Domain Name is for sale...”
Case No. D2015-0543
1. The Parties
Complainant is Richemont International SA of Villars-sur-Glâne, Switzerland, represented by Winston & Strawn LLP, United States of America (“USA”).
Respondent is Hrach Aghajanyan / “This Domain Name is for sale...” of Panorama City, California, USA.
2. The Domain Name and Registrar
The disputed domain name is <vacheronconstatin.watch> which 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 March 27, 2015. On March 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for the Response was May 3, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 4, 2015.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 11, 2015. This Panel finds that it was properly constituted. This 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 has rights over the VACHERON CONSTANTIN (and design) mark for which it holds the following trademark registrations: registration No. 3114414 with the United States Patent and Trademark Office, registered on July 11, 2006 in class 14; and registration No. P-408839 with the Swiss Federal Institute of Intellectual Property, registered on February 21, 1994 in class 14.
The disputed domain name was created on May 23, 2014.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant is the owner of the VACHERON CONSTANTIN trademark, and operates under the trade name Vacheron Constantin. Vacheron Constantin’s origins date back to 1755, making it the oldest continuous watch maker in the world.
All genuine VACHERON CONSTANTIN watches are distributed throughout a worldwide network of Vacheron Constantin boutiques and authorized Vacheron Constantin retailers. There are currently over 280 authorized retailers worldwide and over 40 exclusive boutiques located in strategic cities across the globe. Vacheron Constantin operates its website at “www.vacheron-constantin.com”.
Due to the extensive use and registration of the VACHERON CONSTANTIN mark around the world, Complainant is confident that the VACHERON CONSTANTIN mark would be considered well known and/or famous under the laws of Switzerland and the USA. Further, Complainant is confident that the VACHERON CONSTANTIN mark should be afforded the status of notorious mark and should therefore enjoy liberal protection under the Paris Convention.
The disputed domain name is confusingly similar to the VACHERON CONSTANTIN mark because it fully incorporates the VACHERON CONSTANTIN mark with the appearance of a typo “constatin” in place of “constantin”, and merely adds the generic Top-Level Domain (gTLD)“.watch”. Such minor alterations do not render the disputed domain name less confusing for purposes of the confusingly similar analysis.
Respondent lacks rights or legitimate interest in the disputed domain name. Respondent has never been commonly known by the VACHERON CONSTANTIN mark nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known.
Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a protected noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name as a pay-per-click advertising site to advertise links to third-party sites offering for sale products and services in direct competition with those offered under Complainant’s mark. Such use does not constitute a bona fide or legitimate business use.
Complainant has not granted Respondent any license, permission or authorization by which it could own or use any domain names which are confusingly similar to the VACHERON CONSTANTIN mark.
Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the VACHERON CONSTANTIN mark by virtue of Complainant’s prior registration of that mark with the trademark office of the USA, where Respondent and the Registrar are located and where Respondent’s disputed domain name is directed as well as Switzerland, where Complainant is located. Registration of a confusingly similar domain name despite such actual or constructive knowledge evidences bad faith registration within the meaning of the Policy. Had Respondent conducted even a preliminary trademark search, it would have found Complainant’s trademark registration for VACHERON CONSTANTIN and the websites associated with the mark, and numerous additional references in commerce, on the Internet, and in publications, evidencing Complainant’s use of its mark in connection with Complainant’s goods and services.
Respondent has registered the disputed domain name to advertise links to third-party businesses which offer products and services in direct competition with those offered under Complainant’s mark. Past panels have found that such behavior is an attempt to disrupt Complainant’s business and therefore evidence of bad faith.
There is no reason for Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of Complainant’s mark. As such, the nature of the disputed domain name itself evidences bad faith registration and use.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant.1 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the VACHERON CONSTANTIN (and design) trademark.
The disputed domain name incorporates almost identically such Complainant’s trademark, except for a letter “n”. Such variation is not enough to either avoid confusing similarity or prevent the likelihood of confusion.2
Thus this Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has never authorized Respondent to use any domain name similar to its VACHERON CONSTANTIN trademark and that Respondent has never been known by the disputed domain name or such trademark.
Complainant considers that its trademark would be deemed famous under the laws of Switzerland and the USA, and/or should be afforded the status of notorious under the Paris Convention. However, Complainant did not provide any evidence to support its allegations.3 In any event, it is undisputed that Complainant’s trademark has international presence, that its registration preceded by a number of years the creation of the disputed domain name and that the disputed domain name is almost identical to Complainant’s trademark.
Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.4 From the documentation that is on the file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which is almost identical to Complainant’s trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainant’s registration of its VACHERON CONSTANTIN trademark preceded the creation of the disputed domain name (including in the USA, country where Respondent is domiciled pursuant to the Registrar’s report), Complainant’s international presence and that Complainant’s trademark is composed of two words which confers to it certain distinctiveness, this Panel is of the view that Respondent must have been aware of the existence of Complainant’s trademark at the time it obtained the registration of the disputed domain name.
Complainant contends that Respondent uses the disputed domain name as a pay-per-click advertising site to advertise links to third-party sites offering for sale products and services in direct competition with those offered under Complainant’s trademark, having provided a printout of the website associated to the disputed domain name. However, this Panel notices that such printout does not show any legend or word suggesting a link to Complainant’s competitors or products competing with Complainant’s.
The use of a domain name for a parking website which may generate pay-per-click revenue is not, per se, evidence of bad faith. However, where the disputed domain name incorporates another’s trademark, coupled with just a minor typographical error variation (practice commonly known as “typosquatting” 5 ), where the gTLD associated to the disputed domain name (i.e., “.watch”) is descriptive of a product Complainant markets under its trademark, and where the website associated to the disputed domain name shows sponsored links, there is no doubt that by creating a likelihood of confusion with Complainant’s trademark Respondent is intentionally attempting to attract Internet users for financial gain.6
The fact that the website associated to the disputed domain name appears to be a generic parking page created by the Registrar does not relieve Respondent from its contents.7 As set forth in other UDRP cases, it may not be necessary for a registrant itself to have profited directly in order to establish bad faith, it being generally sufficient to show that profit or commercial gain may have been made by a third party.8
Thus the overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate with the intention to benefit from the reputation and goodwill of Complainant’s trademark, which denotes bad faith. In this Panel’s view, the lack of Response is also indicative that Respondent either has no interest in the disputed domain name or lacks arguments and evidence to support its holding of the disputed domain name.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <vacheronconstatin.watch> be transferred to Complainant.
Date: May 25, 2015
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 It is well explored that a domain name can only consist of an alphanumeric string, and cannot incorporate figurative or device elements of a mark. See Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699; SWATCH AG v. Stefano Manfroi, WIPO Case No. D2003-0802; Espire Infolabs Pvt. Ltd. v. TW Telecom, WIPO Case No. D2010-1092.
3 See Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003: “Mere “assertions” are nothing more than argument and must in each case be based on facts proved through evidence”. See also GA Modefine S.A. v. Sparco P/L, WIPO Case No. D2000-0419.
4 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given . . . Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 See Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517: “the practice of typosquatting, in and of itself, constitutes bad faith registration”. See also Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568: “Typosquatting is virtually per se registration and use in bad faith”.
6 See Lilly ICOS LLC v. East Coast Webs, Sean Lowery, WIPO Case No. D2004-1101: “Policy, paragraph 4(b)(iv) provides that registration of a domain name in order to utilize another’s well-known trademark by attracting Internet users to a website for commercial gain constitutes a form of bad faith”. In Jafra Cosmetics, S.A. de C.V. and Jafra Cosmetics International, S.A. de C.V. v. ActiveVector, WIPO Case No. D2005-0250, the Panel established: “due to the intrinsically distinctive character of Complainants’ trademarks, it is inconceivable that the contested domain name would have been registered and used if it were not for exploiting the fame and goodwill of Complainants’ marks by diverting Internet traffic intended for Complainant”. See also F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422.
7 The printout of such website shows the legend “This page is provided courtesy of GoDaddy.com, LLC.”
8 See section 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).