WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Richemont International SA v. Lora Wilkins
Case No. D2020-3096
1. The Parties
The Complainant is Richemont International SA, Switzerland, represented by SILKA AB, Sweden.
The Respondent is Lora Wilkins, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <dealpiaget.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2020. On November 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 23, 2020.
The Center verified that the Complaint together with the amended 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 November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 18, 2021. 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 operates in the international luxury watch and jewelry segment under the trade name “Piaget”. The Complainant was founded in 1874.
The Complainant is the owner, among many others, of the following trademark registrations for the PIAGET trademark:
- PIAGET United States trademark Registration No. 679,984, registered on June 9, 1959;
- PIAGET Switzerland trademark Registration No. 329926, registered on November 6, 1983; and
- PIAGET International trademark registration No. 133699 registered on December 24, 1947.
In addition, the Complainant has also registered several domain names under Top-Level Domains containing the term PIAGET including:
- <piaget.com> registered in 1997; and
- <piaget.ch> registered in 1996.
The Respondent registered the Disputed Domain Name <dealpiaget.com> in June 6, 2017. The Disputed Domain Name resolves to a website offering for sale replicas of the Complainant’s products to Internet users.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant contends that the Domain Name incorporates the Complainant’s trademark in its entirety, and it is instantly recognizable within the Disputed Domain Name. The addition of the term “deals” is insufficient to distinguish the Disputed Domain Name from Complainant’s trademark since the word “deals” is a dictionary term.
Rights or legitimate interest
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, nor is the Respondent commonly known by the Disputed Domain Name. Moreover, the Respondent is not sponsored by, nor affiliated with, the Complainant in any way.
The Complainant further states not to have given the Respondent permission to use its trademarks in any manner.
In addition, the Complainant states that the Respondent is promoting its products as replicas of the Complainant’s products, such offering does not comprise a bona fide offering of goods or services.
Registration in bad faith
The Complainant contends that the Respondent was evidently aware of the Complainant and its trademark at the time of the registration of the Disputed Domain Name.
Moreover, the Complainant contends that the Disputed Domain Name resolves to a website offering for sale replicas of the Complainant’s products to Internet users.
The Complainant’s trademark and domain names predate the registration of the Disputed Domain Name.
Finally, the Complainant alleges that the Respondent is using a privacy shield which is a further indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, this Panel finds that the Disputed Domain Name <dealpiaget.com> is confusingly similar to the Complainant’s PIAGET trademark. The Disputed Domain Name wholly incorporates the Complainant’s PIAGET trademark.
The Disputed Domain Name only differs from the Complainant’s trademark in the addition of the dictionary term “deal”. The addition of such term does not prevent a finding of confusing similarity with the Complainant’s trademark.
Moreover, the addition of the Top-Level Domain (“TLD”) “.com” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
“(i) before any notice to you of the dispute, your use of, 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 at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the PIAGET trademark.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but did not reply to the Complainant’s contentions.
In addition, the Respondent is offering the Complainant’s products as “Piaget replica watches”.
As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered in 2017 several years after the Complainant registered its PIAGET trademark. The fact that the Respondent offered the Complainant’s products as “PIAGET replica products” at his website after registering the Disputed Domain Name clearly demonstrates that the Respondent was aware of the Complainant’s products when registering the Disputed Domain Name.
Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register the Disputed Domain Name incorporating its trademark. Neither the Respondent is an authorized reseller of the Complainant’s products.
The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and created a likelihood of confusion with the Complainant’s trademarks and website in order to attract Internet users for his own commercial gain.
Finally, the Respondent has taken active steps to conceal its true identity through a privacy service. This particular conduct further evidences the Respondent bad faith.
Therefore, taking all the circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name 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, <dealpiaget.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: February 1, 2021