WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Officine Panerai A.G. Corp. v. Whois Privacy Services Pty Ltd. / DN Manager, Whois-Privacy.Net Ltd Level

Case No. D2013-2198

1. The Parties

The Complainant is Officine Panerai A.G. Corp. of Steinhausen, Switzerland, represented by Winston & Strawn LLP, United States of America.

The Respondent is Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia / DN Manager, Whois-Privacy.Net Ltd Level of Port Vila, Vanuatu.

2. The Domain Name and Registrar

The disputed domain name <paneraiwatches.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2013. On December 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2013, the Registrar transmitted by email to the Center its verification 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 January 7, 2014, 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 January 10, 2014.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2014.

The Center appointed Daniel Peña as the sole panelist in this matter on February 11, 2014. 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 is a division of Richemont, a world famous luxury watch manufacturer founded in 1860.

The Complainant was the official supplier to the Royal Italian Navy.

The Complainant later embarked on creating a highly coveted line of timekeeping models for the consumer market.

The Complainant has released its Luminor and Radiomir timepiece collections. Within these collections, the Complainant markets a variety of well known models, including the Regatta, Marina Automatic, Radiomir Chrono, L’Astronomo and Luminor Marina.

The Complainant operates through a network of authorized dealers across six continents worldwide.

The Complainant designs, markets, and distributes high-end luxury timepieces. In addition to their branded boutiques, the Panerai distribution channel includes Tourneau, London Jewelers, Watches of Switzerland Ltd., and Harrods.

The Complainant operates its extensive website featuring information about its product lines, manufacturing process, support resources, and worldwide activities at ”www.panerai.com”.

The Complainant owns the mark PANERAI in the United States of America, with U.S. Registration. No. 2340290, registered on April 11, 2000, and covering goods and services relating to “boxes and cases for watches; jewellery and precious gem stones” as well as “chronometers, watches and clocks”.

The Complainant owns the mark PANERAI in Switzerland with Registration No. 627794 registered on April 2, 2012, and covering wrist watches and bracelets, among other items.

The Complainant owns the mark PANERAI, with International Registration No.786771A and designating Australia, registered on July 22, 2002, and covering jewelry items and watches.

The disputed domain name was registered on August 31, 2005 .

5. Parties’ Contentions

A. Complainant

The disputed domain name <paneraiwatches.com> is confusingly similar to the PANERAI marks because it fully incorporates the mark PANERAI, merely adds the generic industry term “watches,” and adds the generic Top-Level-Domain (“gTLD”) “.com”.

The Complainant is confident that the PANERAI marks would be considered well known or famous under the laws of the United States of America, Switzerland, and Australia.

The Complainant is confident that the PANERAI marks should be afforded the status of notorious marks and should therefore enjoy liberal protection under the Paris Convention.

According to Complainant´s view, the Respondent lacks rights or legitimate interests in the disputed domain name <paneraiwatches.com>. In fact, the Respondent has never been commonly known by any of the PANERAI marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name.

The Respondent has never operated any bona fide or legitimate business under the disputed domain name.

The Respondent is not making a protected noncommercial or fair use of the disputed domain name.

The Respondent has used the disputed domain name <paneraiwatches.com> to publish a website that advertises links to third-party websites offering products for sale that compete directly with the Complainant and which may be counterfeit knockoffs of the Complainant’s own products.

The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of the PANERAI marks.

The Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the PANERAI marks by virtue of the Complainant’s prior registration of those trademarks in Australia, where the Respondent is a resident; Switzerland, where the Complainant is located; and the United States of America, where the Respondent’s website is targeted.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the 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.

A. Identical or Confusingly Similar

The Complainant has clearly shown that it has rights in the PANERAI trademarks registered in several countries including Australia, Switzerland, where the Complainant is located; and the United States of America, where the Respondent’s website appears to be targeted.

The disputed domain name incorporates the whole of the trademarks PANERAI to which the generic industry term “watches,” as well as the gTLD “.com” were added. The Panel considers that the addition of this descriptive term and the gTLD suffix does not alter or diminish in any way the confusing similarity between the Complainant’s trademarks and the disputed domain name.

The Panel finds that the Complainant has rights in PANERAI trademarks and the disputed domain name is confusingly similar to this trademark.

Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) 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 mark at issue.”

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise authorized the Respondent to use its PANERAI trademarks or to incorporate them into a domain name; (2) that, given the extensive use of the Complainant’s marks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

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

(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 its 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 web site or location or of a product or service on its website or location.

The Complainant has demonstrated that its trademarks are well-known and that the disputed domain name incorporates in full its trademarks and that the Respondent has no relationship to the PANERAI trademarks.

It is clear to this Panel that the Respondent is using the trademarks PANERAI to publish a website advertising links offering for sale products of the Complainant’s competitors and counterfeit knock offs of the Complainant’s own products or to direct visitors to competing goods and services of others. Thus, the Respondent is trying to benefit from the confusion created by the presence of the expression “panerai” within the disputed domain name to intentionally attempt to attract for commercial gain Internet users to the websites, by creating a likelihood of confusion with the Complainant’s PANERAI trademarks as to the source, sponsorship, affiliation or endorsement of its website.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy.

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 <paneraiwatches.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: February 25, 2014