WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cartier International A.G. v. chenzhiwen/wen
Case No. D2015-0862
1. The Parties
The Complainant is Cartier International A.G. of Steinhausen, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is chenzhiwen/wen of GuangZhouShiTianHeQu, Albania.
2. The Domain Name and Registrar
The disputed domain name <cartier-shop.net> is registered with Todaynic.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 20, 2015. On May 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2015, 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 proceeding commenced on May 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on June 17, 2015. 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, Cartier International A.G. ("Cartier") is a world famous luxury jeweler and watch manufacturer founded in 1847.
Cartier operates close to 300 boutiques in 125 countries across six continents worldwide. The Complainant designs, markets, and distributes high-end luxury jewelry, timepieces and accessories, including eyewear.
Cartier is ranked number 58 among the Interbrand's Top 100 Best Global Brands for 2014 and is one of the top five best luxury brands.
Cartier operates an extensive website featuring an online store, as well as information about its activities around the world at "www.cartier.com".
Cartier owns numerous trademarks registered around the world, among which:
- U.S. trademark CARTIER, Reg. No. 1329299 having a registration date of April 9, 1985,
- U.S. trademark CARTIER, Reg. No. 4178047, having a registration date of July 24, 2012, and covering "jewelry and watches",
- Chinese trademark CARTIER, Reg. No. 202386, having a registration date of December 15, 1983, and covering "…jewelry; gem or semiprecious stone; jade; amber; pearl; ivory" among other items.
- Chines trademark CARTIER, Reg. 202392, having a registration date of December 15, 1983, covering "…optical instrument; eyeglasses; sunglasses; spectacle lenses; spectacle frames".
Due to the extensive use and registration of the CARTIER marks around the world, the Complainant is confident that the CARTIER marks have become famous under the laws of the United States and China. Further, the Complainant is confident that the CARTIER marks would have obtained the status of notorious marks and therefore would enjoy liberal protection under the Paris Convention.
The disputed domain name was registered on September 25, 2014 and is resolving to a website offering jewelry and watches for sale online.
5. Parties' Contentions
The Complainant first claims that the disputed domain name <cartier-shop.net> is confusingly similar to the CARTIER marks because it fully incorporates the CARTIER marks with the generic industry term "shop" and merely adds a hyphen and incorporates the non-branded, functional generic Top-Level Domain (gTLD) ".net". Such minor alterations do not render the disputed domain name less confusing for purposes of the confusingly similar analysis.
Then the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by the CARTIER marks 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, other than the infringing use described further. The Respondent does not appear to have registered any business name incorporating the CARTIER marks nor any variations thereof.
The 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. The Respondent is using the disputed domain name to offer for sale counterfeit products and/or products that compete directly with those offered by the Complainant.
The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registration which may incorporate the CARTIER marks.
At last, the Complainant states that the Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant's rights in the CARTIER marks.
The disputed domain name has been used to operate a website offering for sale products of the Complainant's competitors and/or counterfeit knock-offs of the Complainant's own products, which falls squarely into the explicit example of bad faith registration and use found in the Policy.
The Complainant also claims that the Respondent likely registered the disputed domain name to prevent the Complainant from registering such domain name itself. There is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant's mark. As such, the nature of the disputed domain name itself evidences bad faith registration and use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence (notably through its Annex 5) of its multiple trademark registrations for CARTIER in connection with craftsman luxury products, especially jewelry and watches.
It results from the Complaint and annexes that the CARTIER trademark is well-known, at least in the countries where the Respondent is supposed to be established: the Complainant has been using the trademark since its creation in 1847. The Complainant's brand CARTIER has been continuously ranked as one of the top 100 most valuable brands worldwide (currently 58th in the Interbrand rankings).
The disputed domain name is confusingly similar to the Complainant's CARTIER mark, because the disputed domain name incorporates the entirety of the Complainant's CARTIER mark and merely adds a hyphen, the generic term "shop" as a suffix along with the gTLD ".net".
See for instance among numerous UDRP cases finding that the combination of the generic word "shop" with a trademark does not dispel confusion:
Kering v. Aruna Keita, WIPO Case No. D2014-1110, concerning the domain name <kering-shop.com>:
"The Panel also concurs with the opinion of several prior UDRP panel decisions which have held that, when the registered domain name contains a generic term in addition to a trademark, it does not dispel confusion.
Moreover, in the present case, the word 'shop' is a generic and descriptive word which is used to designate the physical place where any person or company can sell products. The addition of 'shop' to the trademark KERING can therefore evoke the activity of the companies of the Complainant's group, who run many luxury shops around the world."
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the CARTIER marks, in which the Complainant has rights.
The Complainant therefore has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that the Complainant may establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name by making a prima facie showing that the Respondent lacks rights or legitimate interests.
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The Complainant states that it has no relationship with the Respondent and has never authorized it to use its CARTIER trademarks. It is also obvious that the Respondent does not hold any right or trademark whatsoever to the wording "cartier".
The products offered for sale on the website operated under the disputed domain name are copying the Complainant's competitors' items or its own models which are sold at prices significantly lower than the Complainant's products. For the Panel, the above is sufficient evidence to show that the goods offered for sale and sold by the Respondent are counterfeit. There can be no legitimate interest in the sale of infringing products. See, e.g., F. Hoffmann-La Roche AG v. PrivacyProtect.org / Dena Lanterman, TBA Corp., WIPO Case No. D2009-0908.
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 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
The Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b):
(1) Registering the disputed domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i),
(2) Registering the disputed domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii),
(3) Registering the disputed domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii),
(4) Using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or a product or service on your web site, see Policy, paragraph 4(b)(iv).
The Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence provided and other relevant circumstances, that the Respondent has registered and is using the disputed domain name in bad faith.
First, the Respondent is highly likely aware of the Complainant's numerous registered CARTIER trademarks. The Complainant's mark is unusual, it is widely known across the world, and it is identified with jewelry and watches, and more generally luxury items.
Then, it is highly unlikely for the Respondent to have used the disputed domain name for the purpose of selling jewelry and similar products online, without prior knowledge of the Complainant's mark. See Swarovski Aktiengesellschaft v. James Johnson, WIPO Case No. D2012-0080.
Third, the very choice of that disputed domain name by the Respondent was most likely intended to create the impression that the Respondent was the Complainant, or was associated with the Complainant, or was authorized by the Complainant to use the disputed domain name. Given that the Respondent had no such authorization, the Respondent clearly acted in bad faith in registering and using the disputed domain name.
Furthermore, the Respondent's registration of the disputed domain name which included the name of the Complainant's well-known trademark in the absence of any legal connection to the Complainant, or any right or legitimate interest in the name or in the Complainant's mark is strong evidence of bad faith. See Nokia Corp. v. Private, WIPO Case No. D2000-1271.
At last, the Respondent's bad faith use is confirmed by the fact that the disputed domain name directs Internet users to a variety of products for sale using an identical name to the Complainant's trademark and either CARTIER products, or imitations of them.
The Panel therefore finds that the Respondent registered and has been using the disputed domain name only for the purpose of attracting and misleading Internet users to its website for commercial gain which is detrimental to the Complainant.
The Panel concludes that the Respondent has registered and used the disputed domain name <cartier-shop.net> in bad faith. The Complainant has fulfilled the requirements of 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, the Panel orders that the disputed domain name <cartier-shop.net> be transferred to the Complainant.
Date: July 1, 2015