Audemars Piguet Holding SA v. Wing Chin
Claim Number: FA1512001651317
Complainant is Audemars Piguet Holding SA (“Complainant”), Switzerland. Respondent is Wing Chin (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <audemarspiguet.watch>, registered with eNom, Inc.
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 Forum electronically on December 8, 2015; the Forum received payment on December 8, 2015.
On December 8, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <audemarspiguet.watch> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2015 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@audemarspiguet.watch. Also on December 9, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant uses its AUDEMARS PIGUET mark in connection with manufacturing high-end, famous timepieces. Complainant owns common law rights in the mark that predate Respondent’s registration of the disputed domain name. The <audemarspiguet.watch> domain name is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, and adds the generic top-level domain (“gTLD”) “.watch.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not make a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to display links to products and services that compete directly with Complainant’s business. The Panel is directed to Attached Annex 11 for a screenshot of Respondent’s resolving webpage. Moreover, Respondent offered to transfer the disputed domain name in exchange for $1,000.00 after Respondent received Complainant’s first transfer demand letter. The Panel is directed to Attached Annex 5, wherein Respondent requests payment of $1,000.00 from Complainant to compensate Respondent for its out-of-pocket costs related to the acquisition of the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent offered to sell the domain name for an amount in excess of its out-of-pocket costs. Second, Respondent has a history of UDRP cases with adverse rulings. Finally, Respondent has commercially profited by creating a likelihood of confusion through its registration and use of the disputed domain name.
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 its AUDEMARS PIGUET mark in connection with manufacturing high-end, famous timepieces. Complainant holds multiple registrations for the AUDEMARS PIGUET mark, dating as far back as October 1, 1967 in Switzerland (#33718). The mark was subsequently registered under the Madrid protocol with the World intellectual Property Organization. Policy ¶4(a)(i) “requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world. The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market. When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.”, quoting from The Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL, FA 1622018 (Nat. Arb. Forum July 14, 2015). Complainant’s trademark registrations adequately demonstrate its Policy ¶4(a)(i) rights in the AUDEMARS PIGUET mark.
Complainant claims the <audemarspiguet.watch> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s mark, eliminates the spacing between the words of Complainant’s mark, and adds the gTLD “.watch.” Eliminating the spacing between the words of a complainant’s mark does not sufficiently differentiate a respondent’s disputed domain name from a complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). “.watch” is one of the newer gTLDs. Adding the gTLD “.watch” does not serve to adequately distinguish a respondent’s disputed domain name from a complainant’s mark pursuant to Policy ¶4(a)(i) (especially since “.watch” is descriptive of this Complainant’s business). See Fossil Group, Inc. v. Enadin Kucevic, FA 1599092 (Nat. Arb. Forum, January 24, 2015) (holding that <Michele.watch> is confusingly similar to Complainant’s MICHELE mark as the addition of the gTLD “.watch” is insufficient to distinguish the domain name from Complainant’s mark). Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶4(a)(i).
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 that the complainant must first make a prima facie case that 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 no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Respondent has no license or authorization to use Complainant’s mark. The WHOIS information merely lists “Wing Chin” as registrant. Respondent has failed to provide any evidence for the Panel’s consideration. Therefore, there is no basis in the record to find Respondent is commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply).
Complainant claims Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses its disputed domain name to display links to products and services competing directly with Complainant’s business (through a dynamic parking page). A respondent’s use of a disputed domain name to display links that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Respondent offered to transfer the disputed domain name in exchange for $1,000.00 after Respondent received Complainant’s first transfer demand letter. This amount included $800 for “costs of settling this dispute”, which this Panel holds is not considered to be a demonstrable “out of pocket expense” under the UDRP (leaving aside the question Respondent provided no receipts for its other claimed expenses). A respondent’s willingness to sell a domain name to a complainant serves as evidence that the respondent lacks rights and legitimate interests in the disputed domain name. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶4(a)(ii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent offered to sell the domain name for an amount in excess of its out-of-pocket costs. This amount included $800 for “costs of settling this dispute”, which this Panel holds is not considered to be a demonstrable “out of pocket expense” under the UDRP (leaving aside the question that Respondent provided no receipts for its other claimed expenses). It is of evidence of bad faith registration and use under Policy ¶4(b)(i) when a respondent offers to sell a disputed domain name for an amount in excess of its out-of-pocket costs. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). In this case, it seems clear to this Panel Respondent’s business model is to register trademarks in new gTLDs and to offer them for sale when contacted by the trademark owner. Respondent offers to sell the domain name for less than the UDRP filing fee, giving a complainant an economic reason to settle. While this may provide for Respondent an opportunity to profit, it is a clear violation of the UDRP. Respondent has engaged in bad faith registration and use pursuant to Policy ¶4(b)(i).
Complainant contends that Respondent has a history of UDRP cases with adverse rulings. See Glashutter Uhrenbetrieb GmbH v. Wing Chin, FA 1582688 (Nat. Arb. Forum November 13, 2014; see also LVMH Swiss Manufactures SA v. Wing Chin, FA 1608746 (Nat. Arb. Forum April 6, 2015). That is true. However Policy ¶4(b)(ii) requires a respondent to have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct. [emphasis added] There certainly is a pattern here. However, Complainant has not been prevented from using its mark in a domain name. Back in the day when there were only three gTLDs, this portion of the UDRP was more important. As the number of gTLDs has increased, the importance of Policy ¶4(b)(ii) has decreased because there are so many gTLDs where a complainant may reflect its trademark. While it might be possible to construe “in a corresponding domain name” as referring to a single gTLD, this Panel is unaware of any precedent to that effect. Therefore, this Panel declines to find bad faith on this basis.
Complainant claims Respondent commercially profits by creating a likelihood of confusion through its registration and use of the disputed domain name. A respondent’s use of a domain name to display links to products and services that compete with a complainant’s business constitutes bad faith registration and use under Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv).
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 <audemarspiguet.watch> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, January 6, 2016
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