WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Harry Winston, Inc., Harry Winston S.A. v. Private Whois Service

Case No. D2010-1209

1. The Parties

The Complainants are Harry Winston, Inc., a New York corporation and Harry Winston S.A., a Swiss corporation, represented by Bricker & Eckler LLP, United States of America.

The Respondent is Private Whois Service of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <harrywinstonengagementrings.org> (the “Domain Name”) is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2010. On July 22, 2010, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the Domain Name. On July 22, 2010, Internet.bs Corp. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2010.

The Center appointed David Taylor as the sole panelist in this matter on August 24, 2010. 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 factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto given that no Response was filed.

The Complainants are Harry Winston, Inc., a New York corporation and Harry Winston S.A., a Swiss corporation. Harry Winston S.A. is related to and controlled by Harry Winston, Inc. The Complainant is engaged in the business of designing, manufacturing, distributing and selling time pieces and fine jewellery, including engagement rings. The Complainants operate the website “www.harrywinston.com”. A significant portion of the website “www.harrywinston.com” is dedicated to engagement rings.

The Complainants own several United States trade mark registrations including the following:

- HW HARRY WINSTON and design registered on January 10, 1993 with the USPTO under number 1747040; and

- HARRY WINSTON registered on December 18, 2007 with the USPTO under number 3355622.

The Respondent registered the Domain Name on May 18, 2010 via a domain name privacy service provider.

The Domain Name resolves to a website containing information on the Complainants’ engagement rings as well as advertising links to third party websites and services, some of which appear to be direct competitors of the Complainants.

5. Parties’ Contentions

A. Complainant

(i) The Complainants contend that the Domain Name is confusingly similar to the Complainants’ trade marks in the term HARRY WINSTON.

The Complainants assert that the Domain Name incorporates their registered HARRY WINSTON trade mark in its entirety and that the mere addition of the words “engagementrings” is not sufficient to differentiate the Domain Name from said trade mark.

(ii) The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainants consider that the use of the Domain Name to intentionally attract Internet users who are seeking information on the Complainants’ products and to then direct them to the websites of competitors is by no means a bona fide offering of goods and services.

Furthermore, the Complainants assert that the Respondent is neither a licensee of the Complainants nor an affiliate of the Complainants.

(iii) The Complainants contend that the Domain Name was registered and is being used in bad faith.

According to the Complainants, the fact that the Respondent registered the Domain Name long after the Complainants' HARRY WINSTON trade mark had become famous proves its actual knowledge of the Complainants and their trade marks.

The Complainants argue that the Respondent’s bad faith is further evidenced by its attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trade mark.

For all the foregoing reasons, the Complainants seek the transfer of the Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(b) and (d) of the Rules, the Panel shall ensure that the Parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In the case of default by a party, paragraph 14(b) of the Rules states that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom at it considers appropriate.

In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainants. The Panel is therefore obliged to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainants to support their contentions.

If the Complainants are to succeed, they must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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.

The Panel will proceed to establish whether the Complainants have discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

The first element that needs to be established is whether the Complainants have rights in a term to which the Domain Name is identical or confusingly similar.

Based on the evidence provided by the Complainants to substantiate their trade mark rights, the Panel is satisfied that the Complainants have rights in the term HARRY WINSTON which is reproduced in its entirety in the Domain Name.

The second element that needs to be considered is whether the Domain Name is identical or confusingly similar to the term HARRY WINSTON in which the Complainants have rights.

The Domain Name reproduces the Complainants’ exact trade mark in the term HARRY WINSTON, with the addition of the generic words “engagement rings” as well as the gTLD “.org”.

The Panel finds that the addition of the generic words “engagement rings” to the trade mark HARRY WINSTON does not sufficiently differentiate the Domain Name from the Complainants’ HARRY WINSTON trade mark so as to avoid confusing similarity. Indeed the dominant and distinctive part of the Domain Name is the term HARRY WINSTON, which is identical to the Complainants’ trade mark. The additional words “engagement rings” describe a very specific type of goods which the Complainants sell and in respect of which the Complainants have acquired substantial goodwill and reputation. Thus, the Panel concludes that the addition of the descriptive words “engagement rings” to the HARRY WINSTON trade mark in the Domain Name does nothing but aggravate the confusion of Internet users regarding the origin of the website to which the Domain Name resolves.

With regard to the gTLD “.org”, it is widely accepted that it is irrelevant in assessing the issue of confusing similarity between a domain name and a trade mark.

The Panel therefore finds that the Complainants have satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate its rights or legitimate interests in a domain name, as follows:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent's] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or

(iii) [the respondent] is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Panel has considered the evidence put forward by the Complainants and considers that the Complainants have made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut that showing.

For instance, there is no evidence that the Respondent has obtained any licence or authorization to use the Complainants’ HARRY WINSTON trade mark, nor that the Respondent is commonly known by the Domain Name.

In addition, the Panel considers on the basis of the evidence produced by the Complainants as well as the current content of the website to which the Domain Name points, that the presence on the website of very visible advertising links to the websites of competitors of the Complainants denotes the Respondent’s intention to generate profits through user confusion. The Panel is of the view that such use of the Domain Name could not conceivably qualify as a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use of the Domain Name.

Finally, the Panel considers the Respondent’s failure to respond to the Complaint as an additional suggestion of the lack of rights and legitimate interests of the Respondent in the Domain Name.

The Panel therefore finds that the Complainants have satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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 on-line 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.

Given the underlying facts presented to the Panel, it is evident that the Respondent registered the Domain Name with the Complainants in mind.

Based on the evidence produced by the Complainants regarding the website to which the Domain Name resolves, the Panel considers that, for the purpose of the Policy, the Respondent’s website is not e.g. a legitimate fair use fan site devoted to the Complainants’ products and services. The targeted advertisement contained on the website to which the Domain Name points, suggests that the Respondent is engaged in a revenue-generating scheme based on targeted advertising.

The Respondent’s bad faith is further established by the fact that although the Respondent is well aware of the Complainants, its brands and its business, the Respondent’s website contains links to third party websites which are in direct competition with the Complainants. Thus the Panel is of the view that the Domain Name would attract Internet users, who are seeking information on the Complainants’ products, to the Respondent’s website which contains links to other jewellery-related websites, including the Complainants’ competitors.

Further, whilst the use of domain name privacy services can serve legitimate and useful purposes, such services can and seem to be increasingly used in order to dissimulate the identity of bad faith actors. The consequence is that this impedes or indeed prevents the (timely) identification of the parties allegedly involved in illegal, harmful or objectionable activities. Moreover it is becoming evident that there is, in general, an intentional passive collusion between some domain name privacy service providers (whether a registrar or third party) and bad faith actors which is a major concern and needs to be addressed so as to combat the increase in phishing, malware and other electronic crime especially given the intended launch by ICANN of potentially unlimited new gTLDs in the future.

Finally, the Respondent’s failure to rebut any of the Complainants’ arguments is a supplementary element from which the Panel infers bad faith on the Respondent’s part.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <harrywinstonengagementrings.org> be transferred to the Complainant Harry Winston, Inc., as requested by Complainants.

David Taylor
Sole Panelist
Dated: September 8, 2010