national arbitration forum

 

DECISION

 

Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929

Claim Number: FA1408001575562

 

PARTIES

Complainant is Glashütter Uhrenbetrieb GmbH (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is li zilin / QQ869292929 (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <glashutte-original.watch>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2014; the National Arbitration Forum received payment on August 25, 2014.

 

On August 19, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <glashutte-original.watch> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@glashutte-original.watch.  Also on August 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.

 

Complainant Owns Its Trademarks.  Complainant is the owner of the distinctive and well known luxury brand GLASHÜTTE ORIGINAL and its corresponding logo (the “Marks”).  Complainant’s predecessors began making timepieces in Germany in the mid-1800’s.  At least as early as 1927, and long prior to the creation of the <Glashutte-Original.watch> domain, Complainant used the GLASHÜTTE ORIGINAL trademark for the first time in connection with what has become, at the latest with its re-birth in 1994, one of the most famous industry leaders in prestigious luxury wristwatches. Since then, Complainant has continually used the GLASHÜTTE ORIGINAL Marks in commerce and has gained both common-law and registered trademark rights.

 

The GLASHÜTTE ORIGINAL Marks Are Extensively Used, Promoted and Protected. Complainant is a leading designer, manufacturer, seller, and retailer of luxury wristwatches.  Complainant’s website <Glashuette-Original.com> is used to promote the brand and its products and services on the internet. Complainant also has dedicated, branded retail stores.  Complainant’s parent company, The Swatch Group AG, is publicly traded on various stock exchanges under the symbols UHR and UHR N.  Significant cultural events are sponsored by Complainant and the GLASHÜTTE ORIGINAL Marks are promoted on various social media platforms.  Complainant’s GLASHÜTTE ORIGINAL Marks are so famous that a collectors market has developed for its older products and fans have posted images and stories on the internet to demonstrate their affinity for the brand.

 

It is important to point out that, although the word Glashütte does refer to the town in Germany where fine watchmaking has a long history, the GLASHÜTTE ORIGINAL Marks are, nonetheless, highly distinctive of Complainant and are recognized as such by consumers. Complainant has obtained a number of trademark registrations for the Marks with no disclaimer or other reduction in protection of the word GLASHÜTTE[1] and the two words which make up the Marks are always used together.  Further, while there are several other watchmakers in the town of Glashütte, only one other uses the town name in its name (Nomos Glashütte) which, however, is markedly different from the Marks of Complainant.  Others may use the town name as a pure geographic indication, but consumers and the trade know that there is only one GLASHÜTTE ORIGINAL and this is the Complainant.  In fact, Google searches for the phrase Glashütte Original or even the word Glashütte alone return results which almost exclusively refer to Complainant.

 

The GLASHÜTTE ORIGINAL Marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations for the GLASHÜTTE ORIGINAL Marks, including the following:

G G GLASHÜTTE ORIGINAL Logo         IC 014. US 002 027 028 050. G & S: horological and chronometric instruments, namely, watches, parts of clocks and watches [ , alarms for clocks, precious metals and their alloys sold in bulk, precious metals, jewelry, precious gemstones, imitation jewelry, cufflinks, tie pins, and belt buckles made of precious metal            2519207 (US)           18-Dec-2001 (Filed 14-Oct-1999)

GLASHÜTTE ORIGINAL Logo     14 Clocks and watches, in particular wristwatches, clock parts, movements for clocks and watches, chronometers, chronometric instruments, escapements for clocks and watches and models for escapements; cases for horological instruments, microchronometers for clocks; precious metals and their alloys and goods in precious metals or coated therewith (included in class 14); jewelry, precious stones; fashion jewelry, cuff links, tie pins, belt buckles.

18 Leather and imitations of leather, and goods made of these materials (included in class 18); bags and other containers not adapted to the objects being carried, in particular handbags, briefcases, shopping bags, purses, pocket wallets, key wallets; travelling sets; umbrellas and parasols.    1346105 (CTM)        07-Nov-2000 (Filed 14-Oct-1999)

GLASHÜTTE ORIGINAL Logo     Cl. 14 Clocks and watches, in particular wristwatches, clock parts, movements for clocks and watches, chronometers, chronometric instruments, escapements for clocks and watches and models for escapements; cases for clocks and watches, microchronometers for clocks; precious metals and their alloys and goods in precious metals or coated therewith (included in class 14); jewelry; jewelry, precious stones.   4821773 (CTM)        27-Nov-2006 (Filed 20-Dec-2005)

 

Respondent’s registration of the <Glashutte-Original.watch> violates the Policy.

The <Glashutte-Original.watch> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i).  Apart from its use of the dot-watch top level and from the missing umlaut in the word Glashütte, Respondent’s <Glashutte-Original.watch> domain is identical, on its face, to Complainant’s registered GLASHÜTTE ORIGINAL Marks.  Of course, the use of a top-level domain is, at best, irrelevant to this component of the UDRP test and does nothing to alleviate confusion. See, Chan Luu Inc. v. hurry cater, NAF Claim FA1211001473620 (2013), citing, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Equally, omission of the umlaut in the word Glashütte is irrelevant to this case. On the one hand, the German “ü” shown in the Marks is not usable in relation to domain names (except as IDN). Secondly, as a rule non-German speakers replace the “ü” with either a simple “u” (which leads to the domain name in dispute) or, as correct in German, with “ue” (which leads to Complainant’s website <Glashuette-Original.com>).  In fact, to avoid the problem of English speakers not finding its website, Complainant currently redirects the domain name <Glashutte-Original.com> to its website <Glashuette-Original.com>.

The Respondent initially attracts searchers to its website by using an identical copy (subject to the missing umlaut) of the Complainant’s GLASHÜTTE ORIGINAL Mark and merely adding a hyphen and the top-level domain “.watch” after it thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address.  As reasoned in Athanasios, even if searchers discover they are not at one of Complainant’s sites, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website of the <Glashutte-Original.watch> domain when this is clearly not the case.  This confusion is made even more likely by the fact that Complainant’s products, sold under its GLASHÜTTE ORIGINAL Marks, are wristwatches so the term “watch” is directly relevant to their promotion and sale.

(b)       Respondent has no rights or legitimate interest in the <Glashutte-Original.watch> domain Under Policy ¶4(a)(ii).  Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <Glashutte-Original.watch> domain.  None of these circumstances apply to Respondent in the present dispute.

Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i).  Respondent’s website under the <Glashutte-Original.watch> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites, some of which are not associated with Complainant and, in some cases, are associated with Complainant’s competitors in the field of wristwatches. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).

With respect to Policy ¶4(c)(ii), upon information and belief, Respondent is not commonly known by the name <Glashutte-Original.watch> or “GLASHÜTTE ORIGINAL” nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the GLASHÜTTE ORIGINAL name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”)

Respondent is not making a legitimate noncommercial or fair use of the <Glashutte-Original.watch> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii).  Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks.  In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.”  The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.

Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”.  Here, searchers for Complainant’s GLASHÜTTE ORIGINAL video security products and services, who used the domain name <Glashutte-Original.watch>, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing services.  Such use cannot be considered fair.

 

Lastly, Respondent’s use has tarnished and diluted the GLASHÜTTE ORIGINAL Marks.  Respondent has diminished consumers’ capacity to associate the Marks with the quality services offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide products or services which may not be associated with or related to Complainant’s quality branded products and services.  Respondent’s use creates the very real risk that Complainant’s trademarks are being associated with numerous products and services over which Complainant has no quality control.

(c)        Respondent Registered The <Glashutte-Original.watch> Domain In Bad Faith Under Policy ¶4(a)(iii).  The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.  See Policy ¶4(b)(iv).

Respondent intentionally used the Marks without consent from Complainant.  Respondent was on actual notice of Complainant’s rights in the Marks through Complainant’s Trademark Registrations, its common-law trademark rights, and its extensive, global use of the GLASHÜTTE ORIGINAL Marks which predate Respondent’s acquisition of the <Glashutte-Original.watch> domain.

Further, after Complainant sent a demand letter to Respondent on May 22, 2014, Respondent replied with offers to sell the domain to Complainant, first for US$100,000 and then for US$90,000.  It is axiomatic that offering to sell an infringing domain to a brand owner for a price far in excess of the registration cost is an obvious display of the Respondent’s bad faith.  See, e.g., Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352 (Respondent offered to sell the domain to complainant and “is apparently aware that the domain name is or would be valuable to Complainant.”); Martha Stewart Living Omnimedia. Inc. v. Josh Gorton, WIPO Case No. D2005-1109 “Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant for an amount greatly in excess of any documented out-of-pocket costs incurred by the Respondent and directly related to the domain names.”).

 

Next, Respondent is obtaining commercial gain from its use of the <Glashutte-Original.watch> website. When a visitor to the <Glashutte-Original.watch> website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the domain.  Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the Disputed Domain.  See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211 (Finding in a similar case that a respondent intentionally attempted to attract internet searchers for commercial gain). 

 

In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark.  The domain name led to a search directory website with links to third party vendors, including competitors of Complainant in the blogging, and website creation and design fields.  Id.  The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv).  Id.

 

In Brownells, supra, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed.  Brownells, supra.  The respondent’s website offered links to hunting equipment and related items.  Id.  The panel found that such listing of links were provided purely for respondent’s commercial gain.  Id.

Here, Respondent’s generation of forwarding fees from its <Glashutte-Original.watch> domain results from pay-per-click links.  This alone constitutes commercial gain.  See AllianceBernstein, supra.  Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by forwarding visitors to potential competitors of Complainant.  Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the <Glashutte-Original.watch> domain.  There is no other rational explanation for Respondent having registered and maintained the <Glashutte-Original.watch> domain and resolving it to a pay-per-click site with links to wristwatch products and related services. Respondent’s use of the domain name is commercial because the various companies forwarded from the <Glashutte-Original.watch> domain benefit from the subsequent interest and purchases of those searches.  ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial.  See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).

 

Of course, as the owner of the <Glashutte-Original.watch> domain, Respondent is entirely and solely responsible for the content of its website.  See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.

 

Furthermore, Respondent has listed incomplete, false or non-functioning information in the Whois record for the <Glashutte-Original.watch> domain. Such incomplete and questionable Whois information adds to the suspicious nature of the <Glashutte-Original.watch> domain and lends further evidence to support the claim that Respondent acted in bad faith. See, e.g., WordPress Foundation v. Guo Lei aka Lei Guo, WIPO Case No. D2011-0932 (“A domain name registrant has a duty to act honestly. Past UDRP panels have consistently held that the deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason and its subsequent use is bad faith (e.g., Luxottica Group S.p.A. , Luxottica Fashion Brillen Vertriebs GmbH v. Rett Walters, WIPO Case No. D2011-0297; ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048 / jizhiteam, WIPO Case No. D2010-1113; FAROUK SYSTEMS INC. v. DAVID, WIPO Case No. D2009-1245). The Respondent’s contact address and facsimile are ineffective and are probably fictitious. The Panel is of the view that the use of such particulars to register the Disputed Domain Name corroborates the finding of bad faith above.”).

 

Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <Glashutte-Original.watch> domain in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)          the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)          Respondent has no rights or legitimate interests in respect of the domain name; and

(3)          the domain name has been registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)          the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)          Respondent has no rights or legitimate interests in respect of the domain name; and

(3)          the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant owns the GG GLASHÜTTE ORIGINAL mark through its registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 2,519,207 registered Dec. 18, 2001). Complainant owns Community Trade Mark registrations through the European Union’s Office for Harmonization in the Internal Market (“OHIM”) for the GLASHÜTTE ORIGINAL mark (e.g., Reg. No. 1,346,105 registered Nov. 7, 2000). Complainant uses the mark in connection with its luxury wristwatches. Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i), even if the mark is not registered in respondent’s home country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). At this stage, Complainant need only prove it has SOME rights to the mark, not that Complainant’s rights are superior to Respondent’s rights.  Accordingly, Complainant has sufficiently demonstrated rights in the GG GLASHÜTTE ORIGINAL and GLASHÜTTE ORIGINAL marks pursuant to Policy ¶4(a)(i).

 

Complainant claims the <glashutte-original.watch> domain name is confusingly similar to the GLASHÜTTE ORIGINAL mark. The disputed domain name differs from the mark by the omission of the umlaut over the “u” in GLASHÜTTE and adding the new gTLD “.watch.” Respondent eliminated the space between the two-word mark and inserted a hyphen instead. Such alterations are insufficient to prevent a finding of confusing similarity because they do not adequately distinguish the mark from the disputed domain name. In Hofbrauhaus of America, LLC v. Dobosiewicz, Eddy / Forgotten Buffalo, FA 1555850 (Nat. Arb. Forum June 2, 2014), the panel found the respondent’s <hofbrauhausbuffalo.com> domain name confusingly similar to Complainant’s HOBRAUHÄUS mark despite the omission of the umlaut, addition of a geographical term, and inclusion of a gTLD. Further, in Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007), the panel found the addition of a hyphen between terms of the mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶4(a)(i). Therefore, the <glashutte-original.watch> domain name is confusingly similar to the GLASHÜTTE ORIGINAL mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant claims Respondent is not commonly known by the <glashutte-original.watch> domain name. The WHOIS record indicates “li zilin” of “QQ869292929” is registrant of the domain.  Respondent has failed to submit any response. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting the respondent was commonly known by the disputed domain name. This case is analogous.  The available record shows nothing to suggest Respondent is commonly known by the disputed domain name.

 

Complainant claims Respondent’s operation of the disputed domain name does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The <glashutte-original.watch> domain name resolves to a pay-per-click site displaying links to third-parties, some of which directly compete with Complainant. The resolving links include watch competitors such as, “Seiko Chronograph Watch,” “Shop AVI-8 Watches,” and “Cheap Leather Watch.” It appears undisputed the <glashutte-original.watch> is used to promote Complainant’s competitors through links.  This is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) or (iii), respectively. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Respondent’s bad faith is demonstrated by repeated offers to sell the disputed domain name to Complainant for amounts in excess of the out-of-pocket costs associated with the domain name. Respondent, in response to a demand letter sent on May, 22, 2014, offered to sell the disputed domain name, first for $100,000 and then for $90,000. Respondent’s efforts to sell Complainant the disputed domain name for compensation far in excess of estimated out-of-pocket costs constitutes bad faith pursuant to Policy ¶4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).

 

Complainant claims Respondent violated Policy ¶4(b)(iv) because the disputed domain name resolves to a pay-per-click website where some of the linked pages compete with Complainant. Such schemes generally generate revenue for both Respondent and linked pages (or at least free parking for Respondent). Based upon this evidence, Respondent’s conduct violates Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.  Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).

 

Complainant claims Respondent registered and used the disputed domain name with knowledge of Complainant’s rights, demonstrating bad faith. This is an unusual mark, at least in this Panel’s experience.  It seems as though Respondent must have surely known about Complainant’s mark when this domain names was registered on May 20, 2014 (the mark having existed since the 1800s).  This panel is reminded of the decision in Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), where the panel wrote, “The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” Under these facts, it appears evident Respondent registered and used the disputed domain name with Complainant in mind, given the totality of the circumstances.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <glashutte-original.watch> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated:  Tuesday, September 23, 2014

 

 



[1] Complainant’s US Registration No. 2519207 is incontestable under Section 15 of the USPTO Rules. As such, it is not subject to attack based on a claim that it is descriptive.

 

 

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