Manufacture et fabrique de montres et chronomtres Ulysse Nardin Le Locle S.A v. Mikhail Polikutin

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the 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.

The domain name <ulyssenardin.moscow> fully incorporates the word mark ULYSSE NARDIN for which the Complainant holds a valid national registration and that is in current use. The addition of the new gTLD “.moscow” does not have any impact on the overall impression of the dominant distinctive portion of the domain name “ULYSSE NARDIN” and is therefore irrelevant in the determination of the confusing similarity between the signs. Respectively, the Examiner finds that the domain name <ulyssenardin.moscow> is identical to the Complainant’s mark ULYSSE NARDIN under URS 1.2.6.1. (i).

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

The Examiner determines that the Respondent is not commonly known by the ULYSSE NARDIN name and he has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s ULYSSE NARDIN mark in a domain name or otherwise. The domain name is neither generic nor descriptive. Parking pages would not of itself confer rights or legitimate interest arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the domain name. In light of that the Examiner does not admit the legitimate interest of the Respondent to use a trademark that belongs to a third party. Therefore, the Examiner finds that the Complaint meets URS requirement of 1.2.6.2.

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the 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, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site 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 Registrant’s web site or location or of a product or service on that web site or location.

The bad faith exists where the Respondent, by using the domain name, 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 its website or location or of a product or service on its website or location. The domain is connected with the ULYSSE NARDIN combined with the suffix ”moscow”. The New gTLD “.moscow” is identical to the name of the capital of the Russian Federation and the mission of the new gTLD is to provide new opportunities for Internet users to create Moscow-associated content and to make the city more visible on the Internet. Thus, by visiting the site, customers will most likely expect to reach the ULYSSE NARDIN website operated by someone who has any ties with or relation to the Complainant and adopted for the Russian market or the website with the Moscow-associated content. The Respondent who has never been granted the right to use the ULYSSE NARDIN mark and who does not have any affiliation ties with the Complainant is using the confusion in the minds of consumers over the use of the well-known ULYSSE NARDIN mark to divert users to the own website for commercial gain. The records of the case do not provide any evidence whatsoever of any actual or contemplated good faith use by him of the domain name. To the contrary, as Complainant´s trademark was registered and verified in the Trademark Clearinghouse prior to the launch of the <.moscow> TLD and the registration of the disputed domain name by the Respondent, Respondent was on notice of Complainant´s rights in and to the Trademark ULYSSE NARDIN but ignored that. Yet the more, it is not the first time the Respondent registers a domain name identical to a trademark (Case <castorama.moscow> FA1501001598577) Thus, the Examiner finds the domain name <ulyssenardin.moscow> misleading that supports finding of bad faith registration under URS 1.2.6.3.(d).

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

	Complainant Submitted: January 28, 2015
	Commencement: January 28, 2015
	Default Date: February 12, 2015
	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: Manufacture et fabrique de montres et chronomètres Ulysse Nardin Le Locle S.A of Le Locle, Switzerland
	Complainant Representative: Dennemeyer & Associates S.A Clémence Le Cointe of HOWALD, Luxembourg

	Respondent: Mikhail G Polikutin of Yaroslavl, Yaroslavskaya obl., II, RU

	Registries: Foundation for Assistance for Internet Technologies and Infrastructure Development (FAITID)
	Registrars: RU-CENTER-MSK

	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.
	Ms. Kateryna Oliinyk, as Examiner