LVMH SWISS MANUFACTURES SA v. Wing Chin

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.

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

The Examiner is in agreement with the assertion that the litigious domain names “tagheuer.watch” and “tagheuer.watch” identically reproduce the trademark TAG HEUER, and that the association with the extension “.watch” demonstrates that the Registrant was fully aware of the trademark when he registered the domains. Moreover, since the trademark is registered with the Trademark Clearing House, when registering the domains the Registrant must have received a notification with the registered mark’s details, to inform him about a potential conflict. Going ahead with the registration of the domains evidences no legitimate right or interest to the domain names. Moreover, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.

[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 Complainant contends that the trademark TAG HEUER is renowned. A famous or well-known trademark is the trademark that is known by the general public due to its intense use and longtime presence in the market, and for this reason enjoys a high degree of consumer recognition, due to its widespread reputation or recognition. Famous marks are generally accorded a broader scope of protection, which means that infringement may be easier to establish. In the present case, the relevant part of the disputed domain names consists of the word <tagheuer> and <tag-heuer>, which happen to exactly reproduce the registered trademark owned by the Complainant. Since the rest of the domain is the top-level domain .watch (which indeed refers to the Complainant's core activity) the Examiner concludes that the disputed domain name is identical to the Complainant's famous and well-known trademark TAG HEUER, which due to its recognition merits a special protection. The Examiner finds that considering that TAG HEUER is a well-known trademark, with the domain names <tagheuer.watch> and <tag-heuer.watch> Registrant has indeed intentionally attempted to attract for commercial gain Internet users to Registrant´s web site 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 Examiner also agrees that alternatively, Respondent has registered the “tagheuer.watch” and the “tag-heuer.watch” domain names in bad faith, primarily for the purpose of selling the domain name registrations to the complainant who is the owner of the international word trademark TAG HEUER n° 689200 or to a third party, for valuable consideration.

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

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 following domain name(s) be SUSPENDED for the duration of the registration:

tagheuer.watch
tag-heuer.watch

	Complainant Submitted: March 10, 2015
	Commencement: March 10, 2015
	Default Date: April 1, 2015
	Having reviewed the communications records, the Examiner finds that the 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: LVMH SWISS MANUFACTURES SA Marie Wormser of La Chaux-de-Fonds, Switzerland
	Complainant Representative: DOMAINOO Joanna Aknin of Paris, France

	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.
	Luz Helena Villamil Jimenez, as Examiner

	Respondent: Wing Chin of Hong Kong, II, HK

	Registries: Sand Shadow, LLC
	Registrars: Enom