Compagnie des Montres Longines, Francillon S.A v. Jingjing Tang / Beijing shenma clouds Network Technology Co., Ltd.
Claim Number: FA1411001591256
Complainant is Compagnie des Montres Longines, Francillon S.A (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Jingjing Tang / Beijing shenma clouds Network Technology Co., Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <longines.club>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2014; the National Arbitration Forum received payment on November 28, 2014.
On November 21, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <longines.club> 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 December 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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@longines.club. Also on December 2, 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 December 29, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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 classic and sports watch brand LONGINES and its corresponding logo (the “Marks”). Complainant’s predecessors began making timepieces in Switzerland in the early-1800’s. At least as early as 1832, and long prior to the creation of the <Longines.club> domain, Complainant used the LONGINES trademark for the first time in connection with what has become famous as a leading brand of elegant aviator and sports wristwatches. After the first transatlantic flight of famed pilot Charles “Lucky Lindy” Lindburgh, an aviator watch was designed by him and sold under the LONGINES trademark. Complainant’s predecessor provided timers used at the first modern-day Olympics in 1896 and, in 1899, a LONGINES timepiece went to the North Pole with Arctic explorer Louis Amédée de Savoie. Longines also has a long history as the official timekeeper at world championship sports events and as a partner of international sports federations, such as gymnastics, alpine skiing and tennis (especially the French Open in Paris). Further, as early as 1878 Longines developed its passion for equestrian sports and today is the official timekeeper and the official watch for the International Equestrian Federation. Since the inception of the LONGINES Marks, Complainant has continually used them in commerce and has gained both common-law and registered trademark rights.
The LONGINES Marks Are Extensively Used, Promoted and Protected. Complainant is a leading designer, manufacturer, seller, and retailer of elegant classic and sports wristwatches. Complainant’s website www.Longines.com is used to promote the brand and its products and services on the internet. Complainant also has dedicated, branded retail stores, in particular in China and other Asian countries. 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 LONGINES Marks are promoted on various social media platforms. Complainant’s LONGINES Marks are so famous that a collectors market has developed for its older products and fans have posted images and sale listings on the internet as a results of their affinity for the brand.
Complainant has obtained a number of trademark registrations for its LONGINES Marks.
The LONGINES Marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations for the LONGINES Marks, including the following:
Mark
Goods and Services Reg. No. (Country) Reg. Date
LONGINES Cl. 9 Optical, surveying, nautical, electrotechnical, weighing, signalling, checking and photographic apparatus, instruments and utensils, measuring instruments; spectacles and spectacle frames.
Cl. 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments. 226233 (CTM) 2-Oct-1998 (Filed 15-Apr-1996)
LONGINES IC 014. US 027. G & S: Watches, parts of watches, and watchcases. FIRST USE: 18690000. FIRST USE IN COMMERCE: 18690000 65109 (US) 10-Sep-1907 (Filed 23-May-1907)
LONGINES IC 014: Precious metals and their alloys and precious metals in this category or coated with precious metal items; jewelry; stones; horological and chronometric instruments; precious stones, watches and chronographs. G678838 (Effective in China) 19-Jun-1997
Respondent’s registration of the <Longines.club> violates the Policy.
(a) The <Longines.club> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Apart from its use of the .club TLD, Respondent’s <Longines.club> domain is identical, on its face, to Complainant’s registered LONGINES Marks. Of course, the use of a top-level domain is, at best, irrelevant to this component of the UDRP test but, here, the .club TLD actually enhances confusion given the fact that there are collectors of Complainant’s products who might believe that this TLD relates to a group which is authorized by Complainant. See, DD IP Holder LLC v Manpreet Badhwar, NAF Claim No. FA 1562029 (2014) (“[B]ecause there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case”).
The Respondent initially attracts searchers to its address by using the LONGINES Mark and thereby makes visitors think that they are being linked to one of the Complainant’s legitimate websites. 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 <Longines.club> domain when this is clearly not the case. As noted above, this confusion is made even more likely by the fact that there are many fans of LONGINES watches so the term “club” is directly relevant to Complainant’s market.
(b) Respondent has no rights or legitimate interest in the <Longines.club> 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 <Longines.club> 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). Where a domain is identical or confusingly similar to a well known trademark yet resolves only to a registrar parking page or does not resolve to any website, panels have not hesitated to hold that no legitimate interest exists on the part of a respondent. For example, one Panel found that “the failure of Respondent’s confusingly similar <victoriassecrret.com> domain name to resolve to any website is evidence that Respondent has not made a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).” See, Victoria's Secret Stores Brand Management, Inc. v. Travis Martin c/o Dynadot Privacy, NAF Claim No. FA0903001250363 (April 22, 2009), citing, George Weston Bakeries Inc. v. McBroom, NAF Case No. FA 933276 (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); and U.S. News & World Report, Inc. v. Zhongqi, NAF Case No. FA 917070 (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶4(a)(ii).”).
Similarly, in Morgan Stanley v. Israrul Hasan c/o Manhattan Consulting Partners, LLC, NAF Claim No. FA0902001246046 (2009), the panel stated:
As of January 5, 2009 the disputed domain name resolved to an ‘under construction’ website. As of January 12, 2009, the disputed domain name did not resolve to a website at all. The Panel finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use and therefore does not establish rights or legitimate interests pursuant to Policy ¶¶4(c)(i) or (iii).
See also, Hewlett-Packard Co. v. Rayne, NAF Claim No. FA101465 (2001) (finding that the “under construction” page, hosted at the disputed domain name, did not support a claim of right or legitimate interest under Policy ¶4(a)(ii)); Pharmacia & Upjohn AB v. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Next, Respondent is not commonly known by the name <Longines.club> and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by the name “LONGINES” 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 LONGINES 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. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Further, Respondent is not making a legitimate noncommercial or fair use of the <Longines.club> 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. See Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923. Searchers for Complainant’s services branded with its LONGINES Marks, who typed in the <Longines.club> domain would be confused and think they were attempting to visit a site of the Complainant’s until they discovered that this domain does not resolve to any web content. This could lead visitors to the mistaken belief that Complainant had either gone out of business or was simply not devoting attention to its online marketing or services. In either case, Complainant’s Marks are harmed and such use cannot be considered fair.
Lastly, Respondent’s use has tarnished and diluted the 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 a domain that does not resolve to any content. As noted above, Respondent’s use creates the very real risk that Complainant’s customers and potential customers may be led to believe that the failure of <Longines.club> to resolve to a website indicates that either Complainant has gone out of business or it has failed to devote attention to a significant segment of its services.
(c) Respondent Registered The Domain In Bad Faith Under Policy ¶4(a)(iii).
Respondent intentionally used the Marks without consent from Complainant and was put on both actual and constructive notice of Complainant’s rights in the Marks through Complainant’s Trademark Registrations, its common-law trademark rights and its extensive use of the famous LONGINES Marks which predate the creation date of the <Longines.club> domain. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks and, thus, in bad faith.
Even after Complainant sent a demand letter to Respondent on August 19, 2014 and follow-up letters on and August 26, 2014 and September 15, 2014 at the email address listed in the whois record for the <Longines.club> domain, Respondent has remained silent and continues to use the offending domain.
Respondent has no active website affiliated with the <Longines.club> domain and has merely passively held the name. However, beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, a number of Panels have held that, after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.” Telstra, supra (stating that “paragraph 4(b) recognizes that inaction (e.g., passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith…. [I]n considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”). See also, Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483 and Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250 (collecting cases citing Telstra).
Here, Respondent was certainly on actual notice of Complaint’s rights in the LONGINES Marks. Through its marketing efforts, Complainant had made the Marks famous throughout the world well before Respondent registered the disputed domain name. See Telstra, supra (the Policy, paragraph 4(a)(iii), is satisfied where “Complainant’s trademark has a strong reputation and is widely known”). In addition, Complainant has operated a web site at <Longines.com> since 1995, many years before Respondent registered the <Longines.club>. This shows that Respondent intended to divert internet traffic that was aimed for Complainant’s legitimate site. Taken as a whole, these circumstances establish bad faith registration by Respondent.
Further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged involving cybersquatted domain names in the .club TLD. Policy ¶4(b)(ii). See, e.g., Target Brands, Inc. v. Guowei Hai Gui, NAF Claim No. FA1102001371811 (2011) (“Respondent has been a party to [and lost] previous UDRP decisions … [and] [t]his is evidence that Respondent is a serial cyber-squatter, which in turn demonstrates that Respondent registered and uses the <tatget.com> domain name in bad faith.”). Brown Shoe Co., Inc and its subsidiary Brown Group Retail, Inc. v. duanxiangwang / duanxiangwang, NAF Claim No. 1520856 (2013) (“The Panel notes that Complainant does indeed provide evidence of prior UDRP decisions decided against Respondent … and here finds that prior UDRP decisions ordering Respondent to transfer its domain names provide evidence of Policy ¶4(b)(ii) bad faith.”). In the present case at least two prior domain cases have been successfully brought against Respondent. The domain <lufthansa.club> was found to be in violation of the Uniform Rapid Suspension (URS) policy in Deutsche Lufthansa AG v. jingjing tang et al., NAF Claim No. FA 1558805 (2014) and three domains (stregis.club; westin.club; and whotels.club) were found to be in violation of the UDRP in Starwood Hotels & Resorts Worldwide, Inc., Sheraton International IP, LLC, Westin Hotel Management, L.P. v. Jingjing Tang, WIPO Case No. D2014-1040. This shows that Respondent’s current transgression is not an isolated incident.
Thus, the facts here strongly demonstrate that Respondent has registered and used the <Longines.club> domain in bad faith under Policy ¶4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.”).
Complainant uses LONGINES to promote and sell aviator and sports wristwatches. The mark has been registered both in the United States (e.g., Reg. No. 65,109, registered Sept. 10, 1907) and in China (e.g., Reg. No. 678,838, registered June 19, 1997). Registration with a governmental authority (such as these authorities) satisfies the Policy ¶4(a)(i) requirement Complainant show rights in a trademark. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶4(a)(i)).
Complainant claims the <longines.club> domain name is identical to the mark and it merely adds the gTLD “.club.” This is one of the new gTLDs. Like with other gTLDs, the extension must be disregarded when determining if the disputed domain name is confusingly similar to Complainant’s mark. This domain name is identical to Complainant’s LONGINES trademark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, it is confusingly similar.
The Panel finds Policy ¶4(a)(i) satisfied.
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 the complainant must first make a prima facie case 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 has never been commonly known by the <longines.club> domain name. The registrant is listed as “Jingjing Tang” in the domain name’s WHOIS. There is no obvious connection between the two. There is insufficient evidence to find Respondent is commonly known by the <longines.club> domain name under Policy ¶4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent does not make an active use of the <longines.club> domain name. Respondent’s failure to make any active use of the website demonstrates a lack of Policy ¶4(a)(ii) rights and legitimate interests in this domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent has been subject to prior UDRP proceedings where panels determined Respondent had registered and used domain names in bad faith. See Deutsche Lufthansa AG v. jingjing tang et al., FA 1558805 (Nat. Arb. Forum 2014); Starwood Hotels & Resorts Worldwide, Inc. v. Jingjing Tang, D2014-1040 (WIPO 2014). Complainant claims this is sufficient to prove bad faith under the UDRP. This Panel disagrees. There must be a showing Complainant was prevented from reflecting Complainant’s mark in a domain name. That clearly isn’t the case because Complainant owns <longines.com>.
Complainant claims Respondent’s failure to make any active use of this domain name is evidence Respondent registered and uses the domain name in bad faith. Certainly the fact Respondent isn’t making an active use of the domain name does not prevent a finding of bad faith. To allow such a simple strategy (a passive holding of a domain name) to defeat the UDRP would be to eviscerate the policy. It certainly seems as though Respondent acquired this domain name to disrupt Complainant’s business (which suggests they are competitors). Respondent does not dispute the claim. The inactive holding of this domain name under these facts leads this Panel to find bad faith under Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant claims Respondent must have known of Complainant’s mark prior to registering the <longines.club> domain name. This Panel finds Complainant’s mark is sufficiency famous to believe that is true. Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <longines.club> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, December 29, 2014
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