WIPO Arbitration and Mediation Center
Alternative Dispute Resolution Proceeding
Case No. DSE2021-0013
The Petitioner is Rolex SA, Switzerland, represented by Mannheimer Swartling Law Firm, Sweden.
2. Domain Holder
The Domain Holder is H.L.L., China.
3. Domain Name and Procedural History
This Alternative Dispute Resolution proceeding relates to the domain name <fakerolex.se>.
This Petition was filed under the Terms and Conditions of registration (the “.se Policy”) and the Instructions governing Alternative Dispute Resolution proceeding for domain names in the top-level domain .se (the “.se Rules”).
The WIPO Arbitration and Mediation Center (the “Center”) verified that the Petition satisfied the formal requirements of the .se Policy and the .se Rules. The Center sent an invitation to amend the Petition on March 25, 2021. The Petitioner submitted an amendment to the Petition on March 25, 2021. In accordance with Section 13 of the .se Rules, the Center formally notified the Domain Holder of the Petition on March 29, 2021. The Domain Holder did not submit any response and, accordingly, the Center notified the Domain Holder’s default on April 29, 2021.
The Center appointed Bengt Eliasson as the sole Arbitrator in this matter on May 7, 2021. The Arbitrator has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Section 1 of the .se Rules.
4. Factual Background
The Petitioner, Rolex SA, is a Swiss Company incorporated in 1920, which manufactures and commercializes the prestigious ROLEX watches. The Petitioner has used the ROLEX trademark for more than 100 years and is manufacturing and commercializing worldwide the prestigious ROLEX watches through the affiliated Rolex companies established in 26 countries and through a network of official Rolex retailers in Sweden as well as in many other countries. By virtue of its longstanding use of the ROLEX trademark, substantial expenditure on advertising and promotion, and the high quality of its products, the Petitioner enjoys an extensive goodwill in the name ROLEX, which is well-known and one of the most famous trademarks in the world. In addition, the Petitioner is the owner of numerous trademark registrations for ROLEX as a word and figurative trademarks throughout the world, including Swedish trademark registration No 40514 registered on June 6, 1932, and the International trademark registration No 976721 registered on May 21, 2008, and designating the European Union (“EU”).
An application for Alternative Dispute Resolution for the disputed domain name <fakerolex.se> was filed with the Center by the Petitioner on March 24, 2021. The Domain Holder has been given an opportunity to submit a reply. No reply has been filed by the Domain Holder within the given deadline.
The disputed domain name <fakerolex.se> was registered by the Domain Holder on September 5, 2018, and is directed to a website presenting information on fake ROLEX watches.
The Petitioner claims that the disputed domain name shall be transferred to the Petitioner. Furthermore, the Petitioner also requests to have the dispute decided as an Accelerated Proceeding in case the Domain Holder does not respond to the Petition.
6. Parties’ Contentions
The Petitioner holds the right to, inter alia, the well-known trademark ROLEX, which is registered in Sweden as word and figurative trademarks both in the form of national trademark registrations, EU trademark registrations and international registrations designating Sweden. The ROLEX trademark is exceptionally well-known and is associated with ROLEX’s prestigious watches, and enjoy a high status and goodwill. The Petitioner has invested, and continuously invests, large amounts into establishing and maintaining the profile and goodwill of the ROLEX trademark and in order to protect and strengthen its trademarks. The Petitioner has registered a large number of trademarks in several jurisdictions.
In particular in Sweden, the trademark ROLEX has been advertised in many newspapers and magazines. The well-known character of the trademark ROLEX has also been recognized internationally in surveys, court decisions and press articles.
The Petitioner also owns more than four thousand domain names containing ROLEX, which have been linked since more than a decade to its official website “www.rolex.com”.
For these reasons, the Petitioner has the right to the distinctive sign ROLEX in Sweden.
The Domain Holder who registered the domain name on September 5, 2018, is a private person and the domain name is linked to and used for a website that presents information on fake Rolex watches, i.e. counterfeits. Moreover, the ROLEX trademark and other trademarks owned by the Petitioner are presented on the website. The Petitioner has not given the Domain Holder its consent to register the domain name and has approached the Domain Holder three (3) times trying to obtain a voluntary transfer of the domain name.
The Petitioner has, as stated above, registered ROLEX as a trademark and in addition ROLEX is considered to be a well-known trademark and thus enjoys the wider protection granted to well-known trademarks. The only addition made to the domain name is the word “fake”, i.e. a dictionary word that indicates that the goods presented on the website are counterfeits.
The similarity, as well as the likelihood of confusion, is very high considering that the domain name uses ROLEX combined with the word “fake”, that is merely descriptive and non-distinctive in its nature. Consequently, the part of the domain name that consists of the word “fake” is not relevant for the examination of the similarity criteria. Furthermore, it is well established that “.se”, as a country code Top-Level Domain suffix (“ccTLD”), shall be disregarded in the assessment of identity or similarity between a domain name and an ADR petitioner’s trademark. Thus, the only distinctive part of the domain name is ROLEX. The Petitioner’s trademark ROLEX is in its entirety included within the domain name and has an independent distinctive role therein. The domain name and the ROLEX trademark are thus highly similar.
The trademark ROLEX must be considered well-known, inter alia, due to the fact that the trademark has been used on exclusive watches continuously since many years and that the use has been extensive. It has also been established that ROLEX is a well-known trademark e.g. in previous cases before trademark authorities.
Consequently, when registering the domain name, the Domain Holder could not possibly have ignored the prior rights of the Petitioner. It is obvious that the Domain Holder was aware of the Petitioner and its business at the time when the domain name was registered, and that the registration was made with the ROLEX trademark in mind. Adding the word “fake” to the domain name clearly indicates the Domain Holder’s bad faith intentions.
Furthermore, the Domain Holder has used the domain name for promoting the sale of fake Rolex watches on the website. It is obvious that the Domain Holder uses ROLEX as part of the domain name in order to attract traffic to the website and to take unfair advantage of the goodwill and reputation of the ROLEX trademark.
No license has been granted to the Domain Holder and the Domain Holder should be considered to have knowledge of the fact that it was using the ROLEX trademark without consent. The Domain Holder has ignored all attempts made to obtain a voluntary transfer of the domain name.
The Domain Holder does not hold any company name rights or trademark rights to the name ROLEX, nor is the domain name older than the Petitioner’s rights. ROLEX is, as stated above, a well-known trademark both in Sweden and internationally, and the trademark is therefore granted the additional protection that well-known trademarks enjoy. According to earlier case law under the .se Policy, well-known trademarks enjoy additional protection under the .se Policy. A domain name owner therefore, according to earlier case law, in principle cannot have any justified interests in using domain names that consist of a well-known trademark. The domain name has no linguistic meaning other than indicating that the website contains counterfeit Rolex watches. Consequently, the Domain Holder cannot be considered to have any justified interest in the domain name.
The Petitioner purports that (i) the domain name is similar to the registered and well-known trademark ROLEX, (ii) the domain name has been registered and used in bad faith, and (iii) the Domain Holder has no justified rights or interests in the domain name.
B. Domain Holder
The Domain Holder has not filed any reply or comments to the Petition for Alternative Dispute Resolution.
7. Discussion and Findings
A domain name may, in accordance with the .se Policy paragraph 7.2, be deregistered or transferred to the party requesting dispute resolution proceedings if all of the following three conditions are fulfilled:
1. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the Domain Name.
All three conditions must be met in order for a petitioner to succeed in its action.
A. The Domain Name is identical or similar to a name which is legally recognized in Sweden and to which the Petitioner can prove its rights
The Arbitrator consider the Petitioner’s trademark ROLEX as well-known. The Petitioner’s trademark ROLEX is also registered in a number of countries, including Sweden. The disputed domain name <fakerolex.se> consists, in addition to the Petitioner’s trademark ROLEX, of the word “fake” that must be considered as descriptive in relation to the Petitioner’s business activities. The Arbitrator therefore agrees with the Petitioner that the disputed domain name <fakerolex.se> is similar to the Petitioner’s trademark.
B. The Domain Name has been registered or used in bad faith
The Arbitrator concludes, based on the above, that the disputed domain name <fakerolex.se> has been registered and used in bad faith.
C. The Domain Holder has no rights or justified interest in the Domain Name.
The Domain Holder has not submitted any reply to the Petition and there is nothing else in the case stating that the Domain Holder has a right or justified interest in the disputed domain name. The Arbitrator therefore, based on the above, concludes that the Domain Holder has no rights or justified interest in the disputed domain name.
The disputed domain name <fakerolex.se> shall be transferred to the Petitioner.
Date : May 16, 2021