WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolex SA v. Rime Ksiri, Rime Ksiri
Case No. D2021-0693
1. The Parties
The Complainant is Rolex SA, Switzerland, represented by Gros & Waltenspuhl, Switzerland.
The Respondent is Rime Ksiri, Rime Ksiri, Italy.
2. The Domain Name and Registrar
The disputed domain name <bucherer-rolex.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. On March 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2021, 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 March 9, 2021, 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 March 10, 2021.
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 March 11, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2021.
The Center appointed Jane Seager, Daniel Kraus and Luca Barbero as panelists in this matter on April 20, 2021. The Panel finds that it was properly constituted. Each member of 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, Rolex SA, is a Swiss corporation founded on February 17, 1920. The Complainant manufactures and commercializes Rolex watches, for which it has registered, inter alia, the following trademarks:
- Swiss Trademark Registration No. 24001, ROLEX, registered on July 11, 1908;1
- Swiss Trademark Registration No. P-569821, ROLEX, registered on November 30, 2007;
- International Trademark Registration No. 976721, ROLEX, registered on May 21, 2008, designating numerous jurisdictions, including the European Union and Italy; and
- TMA278348, ROLEX, registered on March 31, 1983.
The Complainant also owns a substantial portfolio of domain names comprising its ROLEX trademark, including <rolex.com>, from which it operates its main website.
The Complainant sells its products through a network of affiliated Rolex companies, established in countries throughout the world, as well as through a network of official Rolex retailers. In Switzerland and elsewhere, the Complainant’s watches are sold by Bucherer AG (“Bucherer”), a Swiss company that has been a longstanding official Rolex retailer. Bucherer operates a consumer-facing website at “www.bucherer.com” (the “Bucherer website”), providing information about the Complainant’s Rolex watches.
The disputed domain name was registered on February 9, 2021. At the time that the Complaint was submitted to the Center, the disputed domain name resolved to a website (the “Respondent’s website”) that closely resembled the Bucherer website, purporting to offer Rolex watches for sale. When attempting to purchase a product from the Respondent’s website, Internet users were redirected to a web page stating that no payment methods were available for the Internet user’s state, and requesting the completion of a contact form to complete the order. At the time of this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
The Complainant asserts rights in the ROLEX trademark. The Complainant submits that the disputed domain name is confusingly similar to its ROLEX trademark, which is incorporated in the disputed domain name in its entirety. The Complainant submits that the addition of “bucherer-” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent’s website is a copy of the Bucherer website, and that the Respondent has attempted to mislead Internet users into believing that the Respondent’s website is that of an official Rolex retailer. The Complainant asserts that the disputed domain name is being used in connection with a “trap-purchase and phishing website”. The Complainant submits that the Respondent is not commonly known by the disputed domain name. Rather, the Complainant casts doubt on whether the Respondent’s identity as listed in the WhoIs is genuine.
The Complainant further submits that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the ROLEX trademark is well known, and that the registration of a domain name containing a well-known trademark by a respondent who has no connection with the trademark owner is suggestive of opportunistic bad faith. The Complainant notes that the disputed domain name also comprises “Bucherer”, the name of one of the Complainant’s well-known official retailers, and asserts that this serves as further evidence of bad faith. The Complainant submits that the disputed domain name is linked to a “trap-purchase and phishing website”, whose sole aim is to mislead Internet users and potential clients of the Complainant and Bucherer. The Complainant asserts that the Respondent’s use of a privacy service is further evidence of bad faith.
The Complainant requests transfer of the disputed domain name.2
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:
(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 Panel finds that the Complainant has established rights in the ROLEX trademark, the registration details of which are provided in the factual background section above.
The disputed domain name comprises the Complainant’s ROLEX trademark, preceded by the element “bucherer”, corresponding to the name and trademark of an official Rolex retailer, separated by a hyphen. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12, where a complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element. Notwithstanding inclusion of the element “bucherer-”, the Complainant’s ROLEX trademark is clearly recognizable in the disputed domain name.
The generic Top-Level Domain “.com” may be disregarded as it is viewed as a technical requirement of registration; see WIPO Overview 3.0, section 1.11.1.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s ROLEX trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
At the time that the Complaint was submitted to the Center, the disputed domain name resolved to the Respondent’s website, which closely resembled the Bucherer website. The Respondent’s website purported to offer Rolex watches for sale. When attempting to make a purchase, Internet users were informed that the purchase was unable to be completed, and were requested to provide personal identifying information.
There being no relationship between the Parties, the Panel finds that the disputed domain name was being used in an attempt to impersonate Bucherer by copying its website, including the indication “Rolex official retailer”, which creates a false impression of association between the website at the disputed domain name and the Complainant. Prior UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13. By requesting the provision of personal identifying information, it can be inferred that the Respondent intended to engage with unsuspecting Internet users in order to extract payments for goods that the Respondent had no real intention of providing, or intended to use such personal identifying information to commit further fraudulent acts. In the circumstances, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
The Panel further finds that the Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name as contemplated by paragraph 4(c)(iii) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s registration of the ROLEX trademark predates the registration of the disputed domain name by many years. The Panel finds that the Complainant has established significant reputation in the ROLEX trademark by virtue of its longstanding international use in connection with the Complainant’s products.
The Respondent’s intent to target the ROLEX trademark can be readily inferred from the contents of the Respondent’s website, which seeks to impersonate Bucherer, an official Rolex retailer. The Panel finds that the disputed domain name was registered in order to create a misleading impression of association with the Complainant, in bad faith. In the circumstances, the Panel finds the Respondent’s use of a privacy service to conceal its identity to be further evidence of the Respondent’s bad faith.
As noted above, the Respondent’s website creates a misleading impression of association with the Complainant in that it effectively reproduces the Bucherer website, including the indication “Rolex official retailer”. The Respondent’s website copies the layout, color scheme, look and feel, logos, and product images as displayed on the Bucherer website. Given that the use of a domain name for per se illegitimate activity such as impersonation of a third party can never confer rights or legitimate interests on a respondent, the Respondent’s use of the disputed domain name to impersonate an official Rolex retailer may be considered manifest evidence of bad faith; see WIPO Overview 3.1.4. The Panel finds that Respondent appears to have used the disputed domain name in an attempt to lure Internet users into disclosing personal identifying information, which may, in turn, be used to commit further fraudulent acts. The Panel finds that the Respondent has used the disputed domain name in bad faith. The fact that the disputed domain name no longer resolves to an active website does not alter the Panel’s findings in this regard.
7. Decision
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 <bucherer-rolex.com> be transferred to the Complainant.
Jane Seager
Presiding Panelist
Daniel Kraus
Panelist
Luca Barbero
Panelist
Date: May 4, 2021
1 Registered by the Complainant’s predecessor-in-interest, Wilsdorf & Davis.
2 The Complainant has provided a signed statement from officers of Bucherer AG consenting to the transfer of the disputed domain name to the Complainant.