LVMH Swiss Manufactures SA v. Oliver Bisko et al.
Claim Number: FA1412001593543
Complainant: LVMH Swiss Manufactures SA of La Chaux-de-Fonds, Switzerland.
Complainant Representative: LVMH Moët Hennessy Louis Vuitton of Paris, France.
Respondent: Oliver Bisko of Arguineguin, las Palmas, International, ES.
Oliver Bisko of Arguineguin, las Palmas, International, Spain.
REGISTRIES and REGISTRARS
Registries: Sand Shadow, LLC
Registrars: GoDaddy.com, LLC
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 Examiner in this proceeding.
Fernando Triana, Esq., as Examiner.
Complainant submitted: December 5, 2014
Commencement: December 5, 2014
Response Date: December 19, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
1. Complainant owns the trademark EL PRIMERO in Switzerland (CH), since 1996, to identify: “horological and chronometric instruments” goods included in international class 14.
2. Complainant owns the domain names «elprimerowatches.ch», «elprimero-watches.ch», «elprimero-watches.in», «elprimerowatches.in», «elprimero-watches.cn», «elprimerowatches.cn», «elprimero-watches.com», «elprimerowatches.com», among others.
3. Complainant’s domain names resolves to a website offering watches, horological and chronometric instruments, which is Complainant’s main good as a watch manufacturer.
4. Respondent registered the disputed domain name «elprimero.watch» on August 26, 2014.
5. Respondent has never been commonly known by the disputed domain name or the trademark EL PRIMERO.
6. Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.
As per the Paragraph 9 (c) of the URS Rules, the Examiner will determine in which language to issue its Determination. Taking into account that Complainant submitted the Complaint in English and that Respondent filed its Response in the same language, the Examiner will decide in English.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
Identical and/or Confusingly Similar
Concerning the first element, Paragraph 1.2.6.1., of the URS Procedure introduces that to obtain an order to suspend a domain name; the disputed domain name should be identical or confusingly similar to a word mark:
(i) for which Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Furthermore, the use of said trademark could be shown by:
a. Demonstrating evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse.
b. Providing a sample of use submitted directly with the URS Complaint”.
a) Existence of a trademark in which the Complainant has rights and is in current use
Complainant proved its rights on the trademark EL PRIMERO in Switzerland (CH), since 1996, to identify: “horological and chronometric instruments” goods included in international class 14.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the corresponding services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[1].
Furthermore, Complainant filed evidence of use by means of one specimen of current use in commerce.
Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is in current use for purposes of Paragraph 1.2.6.1.(i), of the URS Procedure.
b) Identity or confusing similarity between the disputed domain name and the Complainant’s trademark
The Examiner considers that the reproduction of the trademark EL PRIMERO, by the disputed domain name «elprimero.watch», is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[2]. Specially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is the watch manufacturer.
Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
In consequence, as per this reasoning, the Examiner finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph 1.2.6.1., of the URS Procedure is duly complied with.
Paragraph 1.2.6.3., of the URS Procedure, includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:
a. Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or
b. Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
c. Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on that web site or location.
Complainant asserts that the disputed domain name was registered in bad faith since Respondent registered the domain name for the purpose of selling it and to disrupt the business of a competitor.
The screen shot of Respondent’s website filed by Complainant, shows that the disputed domain name was for sale at the time the Complaint was filed and that such website, to which the disputed domain name resolves, displayed pay-per-click links related to other watch related websites.
According to Subparagraph a) of the Paragraph 1.2.6.3., of the URS Procedure, registering a 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 trademark or service mark or to a competitor of that complainant, is indicative of bad faith registration and use.
Despite of Respondent statements as per of which the disputed domain name was not being offered by Respondent but by GODADDY.COM, the use of the disputed domain name is ultimately the Respondent’s responsibility; thus, if the disputed domain names is not being sold, Respondent should not allow a link in its website on that regard.
Furthermore, in accordance with Paragraph 5.9.2, of the URS Procedure, a domain name redirecting to a website displaying pay-per-click links does not in and of itself constitute bad faith under the URS. Nonetheless, such conduct may be abusive, as in the current circumstances.
The disputed domain name is a new gtld “.watch”. By definition “watch” is “device that shows what time it is and that you wear on your wrist or carry in a pocket”[3], which has been the common understanding of the meaning of the new gtld “.watch”:
ü “The new .watch domain is for Watch lovers! Whether you sell them or collect them, the new .watch domain is a great way to connect with a watch-centric audience. For watchmakers and watch resellers, create a YourBrand.Watch or YourStore.Watch to let your customers know what to expect”[4].
ü “What is .WATCH? This flexible new domain works equally well for sites that want to draw a crowd by offering the latest video content and businesses that appeal to our sense of style (and desire to be on time) by designing, selling or manufacturing watches”[5].
As per Complainant’s filed evidence some of the pay-per-click links redirect to websites from Complainant’s competitors. Hence, Respondent’s argument according to which the new gtld “.watch” refers to watch David Silva, does not have a stand. If the disputed domain name would have referred to the soccer player David Silva, it could have had a more proper gtld, such as, “.football”, “.soccer” or “futbol”, gtlds that actually can create an association between the soccer player and the alleged named by which he is called.
Thus, the Examiner concludes that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business.
Furthermore, Respondent’s use of the disputed domain name does not fall into the category of bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name and the use made of the disputed domain name misleads divert consumers.
Finally, Respondent asserts that the disputed domain name is generic or descriptive, according to Paragraph 5.8.1, of the URS Procedure. However, for a trademark to be descriptive or generic, the analysis must be performed based on the goods and services which are identified, otherwise, no word could ever be registered as a trademark.
In this case, the trademark EL PRIMERO identifies: “horological and chronometric instruments” goods included in international class 14.
When reviewed, EL PRIMERO does not describe or indicate the goods it identifies, does not have a meaning which could describe or be related to horological and chronometric instruments. EL PRIMERO does not describe the quality or quantity of the goods, merely evokes the idea of being the first (idea which must be complemented by the consumer, as it is obvious that it is not the first watch). EL PRIMERO does not describe or indicate the location.
Moreover, EL PRIMERO is not generic, since the word, as such, does refer to watches as a gender or a category.
As per this reasoning, the Examiner finds that, in the present case, the disputed domain name was registered and is being used in bad faith, thus, the requirement set forth in Paragraph 1.2.6.3., of the URS Procedure is duly complied with.
Paragraph 8.3 of the URS Procedure explains the extent of the second element as established in Paragraph 1.2.6.2., of the URS Procedure which is that Registrant has no legitimate right or interest to the disputed domain name. In a URS procedure, Complainant’s burden of proof regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, is limited present adequate evidence to substantiate Complainant’s trademark rights in the disputed domain name, such as, evidence of a trademark registration and evidence that the disputed domain name was registered and is being used in bad faith in violation of the URS.
As per the URS requirements, Complainant’s burden of proof has been met, regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, as Complainant has successfully shown evidence to substantiate its trademark rights, such as, the trademark registration EL PRIMERO in Switzerland (CH), since 1996, to identify: “horological and chronometric instruments” goods included in international class 14.
Moreover, as established in Paragraph 8.3 of the URS Procedure, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith in violation of the URS, as studied and shown before.
Consequently, the Examiner finds that, in the present case, Respondent has no legitimate right or interest to the disputed domain name, thus, the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the domain name «elprimero.watch» be SUSPENDED for the duration of the registration.
Fernando Triana, Examiner
Dated: December 23, 2014
COLO 1308 0960 67414/SÁG
4290210397127
[1] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[2] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[3] http://www.merriam-webster.com/dictionary/watch
[4] https://www.sibername.com/canadiandomainregistration/domains/watch-domain-names.php
[5] https://ca.godaddy.com/tlds/watch?ci=76769&countryview=1
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