WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont International SA v. Jo Yungu
Case No. D2016-1888
1. The Parties
Complainant is Richemont International SA of Villars-sur-Glâne, Switzerland, represented internally.
Respondent is Jo Yungu of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <baumeetmercier.com> is registered with OnlineNic, Inc. d/b/a China‑Channel.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2016. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 12, 2016.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on October 26, 2016. 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 (including its predecessors) was founded in 1830, and began trading as Baume & Mercier in 1918. Complainant has used the BAUME & MERCIER trademark continuously since 1918 for the manufacture and sale of watches. Complainant's watches have won many international awards, and are promoted through celebrity endorsements. All Baume & Mercier watches are sold through over 700 authorized retailers on six continents. Complainant also promotes and sells its watches through its website "www.baume-et-mercier.com".
Complainant owns registrations for the BAUME & MERCIER trademark in the United States of America ("US"), the Republic of Korea, and Switzerland, including Swiss trademark registration number 368763 for BAUME & MERCIER, registered on December 20, 1988.
Respondent registered the disputed domain name, <baumeetmercier.com>, on July 17, 2013. Complainant asserts that Respondent has used the disputed domain name to disseminate malicious computer software or malware to infect the computers of Internet users.
5. Parties' Contentions
Complainant asserts that it has rights in the BAUME & MERCIER trademark. It contends that the disputed domain name is confusingly similar to Complainant's mark because it consists of Complainant's BAUME & MERCIER mark in its entirety, and that the only difference between Complainant's mark and the disputed domain name is the addition of "et" (French for "and" and equivalent to "&"). Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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.
A. Identical or Confusingly Similar
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns trademark registrations for the BAUME & MERCIER mark.
The disputed domain name is confusingly similar to Complainant's BAUME & MERCIER mark. It contains Complainant's BAUME & MERCIER mark in its entirety. The only difference between Complainant's mark and the disputed domain name is the addition or substitution of "et" (French for "and" and equivalent to "&"). Numerous previous UDRP decisions have held that the addition of a common word or symbol does not distinguish a disputed domain name from Complainant's mark or preclude a finding of confusing similarity. See, e.g., Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the BAUME & MERCIER mark and that the disputed domain name is confusingly similar to Complainant's mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the BAUME & MERCIER mark and has not authorized Respondent to register and use the disputed domain name <baumeetmercier.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the BAUME & MERCIER mark. Respondent is not known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name or is making a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted, and has thus established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant's marks and products when Respondent registered the disputed domain name. As set forth above, the Baume & Mercier watches are protected by various US and international trademark registrations, and Complainant has used the BAUME & MERCIER mark for its watches for almost 100 years. Complainant's watches are sold by over 700 retailers on six continents and are extensively promoted. All of this occurred before Respondent registered <baumeetmercier.com> on July 17, 2013. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain name and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests".
Respondent has disrupted Complainant's business by diverting Internet users to Respondent's website. The Complainant asserts that the Respondent is exposing these Internet users to malicious computer software and hardware, which damages Complainant's reputation, and may damage the Internet users' computers. See, e.g., DivX, LLC v PrivacyProtect.org / Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0600, and Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions inc, WIPO Case No. D2013-0062. The Respondent has not rebutted the Complainant's allegations. Accordingly, the Panel finds that the Complainant has satisfied 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 <baumeetmercier.com> be transferred to Complainant.
Sandra A. Sellers
Date: November 8, 2016