Glashütter Uhrenbetrieb GmbH v. Wing Chin
Claim Number: FA1410001582688
Complainant is Glashütter Uhrenbetrieb GmbH (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Wing Chin (“Respondent”), represented by Lambert K.H. Chan of Chow, Griffiths & Chan, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <glashuette-original.watch>, registered with Enom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 7, 2014.
On October 1, 2014, Enom confirmed by e-mail to the National Arbitration Forum that the <glashuette-original.watch> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom 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 October 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 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@glashuette-original.watch. Also on October 8, 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.
A timely Response was received and determined to be complete on October 27, 2014.
On November 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sebastian M W Hughes 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has continuously used its GLASHÜTTE ORIGINAL trade mark (the “Trade Mark”) in respect of its luxury wristwatches since 1927. Complainant has numerous registrations for the Trade Mark worldwide.
The domain name is identical to the English language version of the Trade Mark (in which the letter “Ü” with umlaut is replaced with the letters “UE”). Complainant uses the English language version of the Trade Mark in its corporate website at <www.glashuette-original.com>.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent has used the domain name in respect of a pay-per-click website to generate revenue for Respondent (the “Website”). Respondent is not making a legitimate non-commercial or fair use of the domain name, and is not commonly known by the domain name.
Respondent has registered and used the domain name in bad faith.
Respondent has not been authorised by Complainant to register and use the domain name. Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Trade Mark as to source, sponsorship, affiliation, or endorsement of the Website.
In response to Complainant’s demand letter, Respondent’s representative offered to transfer the domain name to Complainant in return for “a brand new and authentic Senator Perpetual Calendar with Moon Phase watch”, which currently retails at US$29,000.
B. Respondent
Respondent concedes the domain name is identical or confusingly similar to the Trade Mark.
Respondent contends that domain names are registered on a “first come, first served” basis, and, as Complainant did not register the domain name during the sunrise period for the new gTLD .watch, and did not take advantage of the Trademark Clearinghouse to block registration of the domain name, “one can assume that the trade mark owner has no intention to obtain the domain name”.
Respondent is a collector of rare items with historical meaning, including watches, and, more recently, domain names, because Respondent thinks domain names are extremely unique and immortal.
Respondent was well aware that Complainant might be interested in registering the domain name too. Respondent assumed Complainant would have taken advantage of the sunrise period and the Trademark Clearinghouse and was not, initially, optimistic as to his chances of successfully acquiring the domain name.
Respondent contends Complainant, in not taking advantage of the sunrise period or the Trademark Clearinghouse, has indicated it is not interested in the domain name and has given up acquiring it. Respondent contends that, as the first person to acquire the domain name and a bona fide purchase for valuable consideration, Respondent has “all the rights and legitimate interests in respect of the domain name”. Respondent argues he has no plan to sell, rent, transfer or use the domain name.
Respondent contends the pay-per-click links were added to the Website by the Registrar without his knowledge, that he “hated the existence of those links because they degraded the quality of the domain name in a collector’s point of view”, that he eventually changed to a different server due to the Registrar’s refusal to take down the links, that the domain name is now linked to a blank website, and that he never received any fees from the use of the paid links on the Website.
Respondent contends he has not registered and used the domain name in bad faith as he has not received any revenue from the Website.
Respondent further contends that his offer to transfer the domain name in return for a watch was legitimate barter. Respondent argues that his settlement negotiations with Complainant were reasonable, including a further offer to transfer the domain name to Complainant in return for Complainant agreeing to (1) pay US$15,000 each to two charities nominated by Respondent; and (2) pay US$900 to Respondent as reimbursement of Respondent’s expenses in respect of the domain name, which offer was also rejected by Complainant.
Complainant has established all the elements entitling it to transfer of the domain name.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
The domain name is identical to the English language version of the Trade Mark.
The Panel therefore finds that the domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(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 organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
There is no evidence that Complainant has authorised, licensed, or permitted Respondent to register or use the domain name or to use the Trade Mark. Complainant has prior rights in the Trade Mark which precede Respondent’s registration of the domain name by almost 90 years. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain name, and the burden is thus on Respondent to produce evidence to rebut this presumption.
Respondent has failed to show that it has acquired any trade mark rights in respect of the domain name or that the domain name has been used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that Respondent has been commonly known by the domain name.
There has been no evidence adduced to show that Respondent is making a legitimate non-commercial or fair use of the domain name.
Respondent’s contention that, as the first registrant of the domain name, he has “all the rights and legitimate interests” in the domain name are, with respect, wholly misguided. Respondent concedes that he was well aware of Complainant and the Trade Mark, that he was not optimistic as to his chances of registering the domain name, and that he opportunistically registered the domain name as soon as he realised it had not been registered by Complainant. Such evidence is wholly inconsistent with Respondent having any rights or legitimate interests in the domain name.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
The Panel finds Respondent’s story as to why he registered the domain name unconvincing. On Respondent’s own case, knowing full well (as a collector of, inter alia, luxury watches) of Complainant and of Complainant’s rights in the Trade Mark, Respondent opportunistically registered the domain name which Respondent agrees is identical or confusingly similar to Complainant’s Trade Mark.
The Panel does not find Respondent’s explanation as to the use of the domain name to generate revenue via pay-per-click via the Website convincing. In any event, it is trite, under UDRP jurisprudence, that (1) the owner of a domain name is responsible for content appearing on a website at its domain name; and (2) it would normally be sufficient to show that profit or commercial gain was made by the third party operator of the website.
The Panel finds there is cogent evidence of Respondent’s offer to transfer the domain name to Complainant in return for a watch valued at US$29,000 or, alternatively, in return for US$900 (an amount far in excess of Respondent’s likely out-of-pocket expenses incurred in registering the domain name) and Complainant’s agreement to pay US$30,000 to charities nominated by Respondent.
In all the circumstances, the Panel therefore has no hesitation in finding bad faith registration and use under its general discretion and also under paragraphs 4(b)(iv) and 4(b)(i) of the Policy.
The Panel therefore concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <glashuette-original.watch> domain name be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: November 13, 2014
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