WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Omega SA v. Ndiaye Therese
Case No. D2017-1296
1. The Parties
The Complainant is Omega SA of Biel/Bienne, Switzerland, represented by Steven M. Levy, Esq., United States of America.
The Respondent is Ndiaye therese of Metz, France.
2. The Domain Names and Registrar
The disputed domain names <omegawatche.com>, <omegawatch.shop>, <omegawatch.store>, <omegawatche.store>, <omegawatches.today>, <omegawatchs.store> and <omegawatchsvip.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 7, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 8, 2017. 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 owner of the OMEGA trademark and of the OMEGA + Ω trademark that are registered and used for various goods and services and in particular for watches and other horological and timekeeping instruments. The said trademarks are registered in numerous jurisdictions worldwide including in the European Union under registration number 7320229, registered on December 16, 2008, which registration covers France where the Respondent resides.
The Complainant maintains its official website at “www.omegawatches.com” and holds various social media accounts.
There is no information available about the Respondent except for the information provided for and the allegations made in the Complaint.
The disputed domain names were registered on the following dates: <omegawatche.com> on February 21, 2017, <omegawatch.shop> on March 8, 2017, <omegawatch.store> on March 8, 2017, <omegawatche.store> on February 21, 2017, <omegawatches.today> on March 14, 2017, <omegawatchs.store> on March 13, 2017, and <omegawatchsvip.com> on March 13, 2017. All the disputed domain names resolve to active websites, which appear to offer non-genuine Omega watches for sale.
5. Parties’ Contentions
The Complainant submits that the disputed domain names are confusingly similar to the Complainant’s OMEGA trademarks since they consist of the Complainant’s OMEGA trademark in combination with variations of the generic term “watch” and the non-distinguishing generic Top-Level Domain (“gTLD”) extensions “.com”, “.shop”, “.store”, and “.today”. As far as the disputed domain name <omegawatchsvip.com> is concerned the Complainant submits that “vip” is the acronym for “very important person”.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not authorized the Respondent to use its trademarks neither in the disputed domain names nor on the corresponding websites. The Respondent’s actions are not a bona fide offering of goods or services under the Policy since the Respondent’s websites under the disputed domain names are all identical sites that display links, which divert visitors to purchase wristwatches which are almost certainly counterfeit. Also, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.
Finally, the Complainant submits that the disputed domain names were registered and are used in bad faith. The Complainant registered and has used its marks extensively prior to the registration of the disputed domain names. Further, the Respondent intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The fact that the Respondent copies many of the graphic images of products from the Complainant only adds to the finding that it is seeking commercial gain in bad faith. The bad faith registration and use is further supported by the fact that the Respondent is a known cybersquatter who has engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the statements and documents submitted by the parties.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(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 has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain names <omegawatche.com>, <omegawatch.shop>, <omegawatch.store>, <omegawatche.store>, <omegawatches.today>, <omegawatchs.store> and <omegawatchsvip.com> all include the Complainant’s registered trademark OMEGA in its entirety with the addition of variations of the term “watch”, and as far as the latter of the disputed domain names is concerned, with the addition of the well-known acronym “vip”.
The Panel finds that the disputed domain names are all confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because they contain the Complainant’s mark in its entirety. The addition of terms as suffixes to the trademark to form the disputed domain names does not, to this Panel, dispel a finding of confusing similarity. In addition, it has also long been held by UDRP panels that gTLD suffixes do not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain names.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Further, given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not rebutted this, and the way the Respondent has been and is using the disputed domain names (see below in Section C) does not support a finding of rights or legitimate interests.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case, in particular the extent of use of the Complainant’s trademark, the reputation and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that the disputed domain names it chose could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The disputed domain names are used for identical websites on which the Respondent uses the Complainant’s trademark including the logotype just as the pictures on and the layout of the website clearly resemble that of the Complainant’s own website. This clearly gives Internet users the impression that the websites are official websites of the Complainant or websites that are authorized by the Complainant which is not the case. The Panel therefore finds that the Respondent by its registration and use of the disputed domain names intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain names with the purpose of attracting Internet users to the websites for commercial gain as per paragraph 4(b)(iv) of the Policy.
Noting that the disputed domain names incorporate a widely-known trademark, that no response has been filed, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names, that the records show that the Respondent has been subject to previous decisions under the UDRP in which it was found that the Respondent had registered domain names that correspond to well-known marks belonging to others, and considering all the facts and evidence; the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 names <omegawatche.com>, <omegawatch.shop>, <omegawatch.store>, <omegawatche.store>, <omegawatches.today>, <omegawatchs.store> and <omegawatchsvip.com> be transferred to the Complainant.
Date: August 22, 2017