WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cartier International A.G. v. Andrey S Kostyuk
Case No. D2015-0953
1. The Parties
The Complainant is Cartier International A.G., Steinhausen, Switzerland, represented by Winston & Strawn LLP, United States of America (the “USA”).
The Respondent is Andrey S Kostyuk of Kaliningrad, Russian Federation, self-represented.
2. The Domain Name and Registrar
The disputed domain name <cartier.moscow> is registered with the Regional Network Information Center, JSC, dba RU-CENTER (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2015. On June 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 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.
On June 8, 2015, the Center sent an email communication to the Parties in both English and Russian, regarding the language of the proceedings. On June 10, 2015, the Complainant requested English to be the language of proceeding. The Respondent did not comment on this request within the deadline set by the Center. However, on July 2, 2015, the Respondent sent two email communications to the Center, in which it stated that it did not understand foreign languages well and requested an explanation of what was claimed against it.
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 July 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2015. The Respondent did not submit a formal Response within the deadline set by the Center. Accordingly, on July 24, 2015 the Center notified the Parties of the Respondent’s default. On July 29, 2015, the Respondent sent an additional communication to the Center, in which it requested that the Registrar be contacted in relation to the proceeding, and made the following statement: “I live in the village and plow the land.”
The Center appointed Assen Alexiev as the sole panelist in this matter on August 3, 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. Language of proceedings
In respect of the language of the proceedings, the Panel notes the following: According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant has submitted its Complaint in the English language, and requests that the proceedings be held in English, pointing out that the review of other “.moscow” domain name registrations owned by the Respondent also contain non-Russian trademarks of third parties, including BOGNER and GARMIN, which shows that the Respondent has the ability to operate in languages other than Russian. The Center has invited the Respondent, in both English and Russian, to state its position on the language of the proceeding, and the Respondent has not submitted any objection to the Complainant’s request that the proceeding be held in English within the deadline set by the Center to do so. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage, particularly considering that, as communicated to the Respondent in Russian, a Russian language Response would have been considered. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in the Russian or in the English language.
5. Factual Background
The Complainant is a luxury jeweler and watch manufacturer founded in 1847. It designs, markets, and distributes high-end luxury jewelry, timepieces and accessories, including eyewear. The Complainant operates close to 300 boutiques in 125 countries worldwide, and operates its official website and online store at “www.cartier.com”.
The Complainant is the owner of the following trademark registration for CARTIER (the “CARTIER trademark”):
- Word trademark CARTIER with registration No. 46506, registered in the Russian Federation as of July 2, 1973, for goods in International Classes 03, 14, 16, 18 and 34;
- International trademark CARTIER with registration No. IR 307293, registered on January 4, 1966 for goods and services in International Classes 02, 09, 14, 16, 18, 20, 21, 34; and
- US trademark CARTIER with registration No.1329299, registered in the USA on April 9, 1985 for goods in International Class 9.
On August 3, 2010, the CARTIER trademark with registration No. 046506 was declared a well-known trademark in the Russian Federation as of January 1, 2008.
The disputed domain name was registered by the Respondent on December 2, 2014.
The disputed domain name is not in use.
6. Parties’ Contentions
The Complainant submits that due to the extensive use and registration of the CARTIER trademark around the world, the CARTIER trademark have become famous under the laws of the Russian Federation, Switzerland and the United States, among others.
According to the Complainant, the disputed domain name is confusingly similar to the CARTIER trademark, because it fully incorporates the trademark with the addition of the new generic Top-Level Domain (“gTLD”) “.moscow.”
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has never been commonly known by the CARTIER trademark, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known. The Respondent has not operated any bona fide or legitimate business under the disputed domain name, and is not making a non-commercial or fair use of it. The Complainant has not granted the Respondent any license, permission, or authorization to register or use any domain name which is confusingly similar to the CARTIER trademark.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent has registered the disputed domain name with knowledge of the Complainant’s rights in the CARTIER trademark. 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 CARTIER trademark. The Respondent’s use of the CARTIER trademark in the disputed domain name is likely to mislead or deceive consumers into thinking that the Respondent is affiliated with the Complainant. The Respondent is likely to have registered the disputed domain name to prevent the Complainant from registering it, as evidenced by Respondent’s pattern of registration of domain names containing the trademarks of others in the Registrar’s records.
The Respondent did not submit a formal Response in the proceeding.
7. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, under Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default (the Respondent’s emails disclosed in the Procedural History not being responsive to the Complaint) entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its Decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the CARTIER trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.moscow” part of the disputed domain name. Therefore, the relevant part of the disputed domain name that has to be analyzed is its “cartier” section, which is identical to the CARTIER trademark.
On this basis, the Panel finds that the disputed domain name is identical to the Complainant’s CARTIER trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has never been authorized to use the CARTIER trademark, that the Respondent is not commonly known by the disputed domain name, is not making a noncommercial or a fair use of it and is not using it in relation to the provision of a bona fide offering of goods or services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the case file that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests. The disputed domain name is identical to the CARTIER trademark, and the Respondent has not denied its knowledge of the Complainant and of the CARTIER trademark, which was declared as well-known in the Russian Federation, where the Respondent is located. In the Panel’s view, this makes it more likely that the Respondent has registered the disputed domain name with knowledge of the CARTIER trademark and of its goodwill, and such conduct cannot be regarded as giving rise to rights and legitimate interests in the disputed domain name.
Taking all the above into account, the Panel finds that the Complainant’s prima facie case of lack of the Respondent’s rights or legitimate interests in the disputed domain name has not been rebutted. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
In this proceeding, the Complainant has contended that the disputed domain name was registered with knowledge of the Complainant’s rights in the CARTIER trademark in an attempt to trade off of the reputation and goodwill of the same trademark. As discussed above, the disputed domain name is identical to the CARTIER trademark, and this trademark has gained global popularity and is well known in the Russian Federation, where the Respondent is located.
The Complainant has also submitted that the Respondent is likely to have registered the disputed domain name to prevent the Complainant from registering it, as evidenced by the Respondent’s pattern of registration of domain names containing the trademarks of others in the “.moscow” space. Indeed, in addition to the disputed domain name, the Respondent appears also to be the registrant of the domain names <bogner.moscow>, <garmin.moscow>, and <smirnoff.moscow>, and this has not been denied by the Respondent. The only comment that the Respondent has made about its activities, is [sic] “I live in the village and plow the land.” The Panel does not understand the relevance of this statement to the proceeding, but it appears as an allegation that the Respondent does not understand the nature of the dispute. The Panel is not satisfied that this is so, as it contradicts the conduct of the Respondent, who has decided to register a number of domain names containing trademarks of others – a deliberate and repeated pattern of conduct that shows an understanding of the purposes of domain names and of the benefits of the registration of domain names that are likely to attract attention and traffic. In view of this, the Panel finds that it is more likely than not that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the CARTIER trademark in a corresponding domain name.
The Complainant has further contended that the Respondent’s use of the CARTIER trademark in the disputed domain name is likely to mislead or deceive consumers into thinking that the Respondent is affiliated with the Complainant. Taking into account that the CARTIER trademark has been registered for decades in a number of jurisdictions, including the Russian Federation, where the Respondent is located, and that this trademark has achieved global popularity and a status of well known trademark in the Russian Federation, combined with the lack of authorization from the Complainant to the Respondent to use the CARTIER trademark, the Panel is prepared to accept the Complainant’s contention for the risk of deception of consumers. In light of this and in the lack of any allegation by the Respondent to the contrary, the Panel does not see how the Respondent could use the disputed domain name in a way that would not be illegitimate.
Taking all the above into account, and in the lack of any denial or allegation to the contrary by the Respondent, the Panel finds that the disputed domain name has been registered and used 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 <cartier.moscow> be transferred to the Complainant.
Date: August 14, 2015