LVMH SWISS MANUFACTURES SA v. Dominic milano
Claim Number: FA1504001615003
Complainant: LVMH SWISS MANUFACTURES SA
Complainant Representative: DOMAINOO of Paris, France.
Respondent: Dominic milano of bayside, New York, United States.
REGISTRIES and REGISTRARS
Registries: The City of New York by and through the New York City Department of Information Technology & Telecommunications
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.
James Bridgeman, as Examiner.
Complainant submitted: April 17, 2015
Commencement: May 13, 2015
Response Date: May 22, 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 requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
This Examiner finds as a fact that:-
Complainant owns International word trademark TAG HEUER n°689 200 registered on March, 24, 1998 in class 14, designating notably “horological and chronometric instruments”, and also registered with the Trademark Clearing House. Complainant is also the registrant of various domain names composed of the trademark TAG HEUER, such as <tagheuer.com, <tagheuer.fr>, <tagheuer.org> or <tagheuer.eu>, which it uses for websites promoting its watch-making business all over the world.
The disputed domain name < tagheuer.nyc> is identical to the TAG HEUER trade name and trademark. The <.nyc> gTLD extension may be ignored for the purpose of the comparison.
URS Procedure ¶ 1.2.6, and ¶ 8.1 requires Complainant to prove, by clear and convincing evidence, each of the three elements of the test therein to obtain an order that a domain name should be suspended.
Applying the tests set by URS Procedure, this Examiner finds that in accordance with URS Procedure ¶ 8.1.2 that Complainant has provided clear and convincing evidence:
· that the disputed domain name is identical to the trademark TAG HEUER for which Complainant has an international registration;
· that said trademark is in current use;
· that proof of use has been submitted directly with the URS Complaint by Complainant as required by URS Procedure ¶ 8.1.2.2;
· that Complainant’s trademark has been registered with the Trade Mark Clearing House;
· that Respondent has no rights or legitimate interest in the disputed domain name;
· that the disputed domain name has been registered and is being used in bad faith.
In reaching this conclusion, this Examiner is convinced by the fact that Complainant has made out a prima facie case that Respondent possesses no legitimate rights or interests on such terms and Complainant has not authorized the registration of such a domain name by Respondent. In his brief Response, Respondent has failed to provide any evidence that he has any such rights or legitimate interest in the disputed domain name. He merely submits that as a resident of New York City he has the right to register a <.nyc> domain name and that Complainant had the first right to register <tagheuer.nyc> during the Sunrise Period, prior to the opening of registration to the public in October 2014 but did not do so.
Complainant has also submitted clear and convincing evidence that Respondent registered and uses the disputed domain name in bad faith. Because of the international renown and distinctiveness of the TAG HEUER trademark for time-pieces, this Examiner is convinced that the registrant was aware of Complainant’s name and mark at the time of registration (see Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006). The only reasonable explanation as to why the disputed domain name was chosen and registered was to take predatory advantage of Complainant’s goodwill and reputation in the TAG HEUER mark.
Furthermore this Examiner is convinced that Respondent registered the <tagheuer.nyc> domain name in bad faith, primarily for the purpose of selling the domain name registration to Complainant who is the owner of the international word trademark TAG HEUER n° 689 200 or to a third party, for valuable consideration in excess of his out of pocket expenses in registering the domain name. Respondent is passively holding the disputed domain name which resolves to a web page offering it for sale. Furthermore when Respondent received notice of this Complaint he endeavoured to enter into negotiations with Complainant to sell the domain name.
This Examiner cannot accept Respondent’s denial that the disputed domain name <tagheuer.nyc> is being used commercially. It is clear from the evidence that Respondent is endeavouring to make a profit from the sale of the registration, which in itself is a commercial use.
Not relevant.
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 names be SUSPENDED for the duration of the registration. <tagheuer.nyc>
James Bridgeman, Examiner
Dated: May 22, 2015
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