WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie Des Montres Longines Francillon S.A. v. Zhi Yong Wu
Case No. D2021-1676
1. The Parties
Complainant is Compagnie Des Montres Longines Francillon S.A., Switzerland, represented internally.
Respondent is Zhi Yong Wu, China.
2. The Domain Name and Registrar
The disputed domain name <longines-china.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 25, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 6, 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
Complainant is the owner of registrations for the word, and word and device, trademark (and service mark) LONGINES on the registers of a substantial number of registration authorities, including (without limitation), International Registration under the Madrid System (with a substantial number of designated countries), registration number 1341298, registration dated November 29, 2016, in international classes (ICs) 9, 14, and 35, covering, inter alia, scientific instruments, jewelry and watch retailing; at the European Union Intellectual Property Office (EUIPO), registration number 000226233, registration dated October 2, 1998, in ICs 9 and 14, covering, inter alia, optical apparatus and goods in precious metals; registration at the Swiss Federal Institute of Intellectual Property (IPI), registration number 311597, registration dated October 14, 1981, in IC 14, covering watches and jewelry, and; at the China Trademark Office, registration number 304851, registration dated December 10, 1987, in IC 14.
Complainant is a manufacturer and distributor of watches, jewelry, and other products. It was established in 1832 and is currently doing business throughout the world. Complainant markets and sells its products under the LONGINES trademark in physical retail locations and online. Complainant operates a commercial website at “www.longines.com”. The website allows visitors to geo-locate, to identify retail stores, and to view its pages in various languages (including Chinese and Japanese). Complainant markets its products in China and Japan, including through magazine advertisements and celebrity endorsements.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, the creation date of the record of registration of the disputed domain name is April 20, 2019. There is no indication on the record of this proceeding that any party other than Respondent has been registrant of the disputed domain name.
Respondent directs the disputed domain name to a website featuring pornographic content. The text content of the website is in Chinese and Japanese language characters. However, the English language disputed domain name is displayed in several places on the website.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it owns rights in the LONGINES trademark and that the disputed domain name is confusingly similar to that trademark.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has not been commonly known by the disputed domain name, is not in any way related to Complainant or its business, and has not been granted a license or been otherwise authorized to use Complainant’s trademark in connection with the disputed domain name, and; (2) Respondent’s use of the disputed domain name to direct Internet users to a pornographic website does not constitute a bona fide offering of goods or services in connection with the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) by directing Internet users to a pornographic website Respondent is substantially harming the goodwill and reputation of Complainant and disrupting Complainant’s business; (2) Respondent’s use of the disputed domain name constitutes “porno-squatting” where confusion with a well-known trademark is used to divert customers to a pornographic website for a commercial purpose, and; (3) Respondent has not sought to distinguish its website or content from Complainant, conveying the impression that the pornographic website operated by Respondent is an official website of Complainant or otherwise associated with Complainant, with the aim of increasing traffic to Respondent’s website, and; (4) Respondent has not included any disclaimer of affiliation with Complainant on its website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email, telefax, and physical address provided in its record of registration. It appears that express courier physical delivery could not be completed because delivery was refused by Respondent. Fax transmission could not be completed to the number provided in Respondent’s record of registration. There is no evidence on the record of the proceeding as to whether email notice was received by Respondent at the contact information it provided. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided substantial evidence of rights in the trademark LONGINES, including by registration, inter alia, under the Madrid System, at the EUIPO, at the Swiss and Chinese trademark offices, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s rights in the trademark. The Panel determines that Complainant has established rights in the LONGINES trademark.
The disputed domain name directly incorporates Complainant’s trademark and adds the country name “China”. Complainant’s trademark is readily identifiable within the disputed domain name and this is sufficient to support a finding of confusing similarity in the circumstances of this proceeding. Respondent’s addition of “China” to Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity between Complainant’s trademark and the disputed domain name.
The Panel determines that Complainant has established rights in the trademark LONGINES and that the disputed domain name is confusingly similar to Complainant’s trademark within the meaning of the Policy.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Complainant has provided substantial evidence that Respondent is using the disputed domain name confusingly similar to Complainant’s trademark to direct Internet users to a commercial website displaying pornographic content. There is no disclaimer of affiliation with Complainant on Respondent’s website. Respondent has not been authorized to use Complainant’s distinctive trademark. There does not appear to the Panel to be an alternative basis on which Respondent might claim a legitimate right to use Complainant’s trademark in the disputed domain name as it is doing.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) the Policy.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Respondent has used Complainant’s distinctive trademark to direct Internet users to a website displaying pornographic content that operates with a commercial purpose. Although Internet users reaching Respondent’s website are unlikely to conclude that the website is sponsored or endorsed by Complainant, Internet traffic will have been diverted from Complainant’s commercial website to the detriment of Complainant. Complainant may incur financial losses from lost sales and/or reputational injury. Respondent has used the disputed domain name that is confusingly similar to Complainant’s trademark intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source, sponsor or affiliate of Respondent’s commercial website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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, <longines-china.com>, be transferred to Complainant.
Frederick M. Abbott
Date: July 11, 2021