WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Van Cleef & Arpels SA v. Moniker Privacy Services / Domain NameZ

Case No. D2013-1907

1. The Parties

The Complainant is Van Cleef & Arpels SA of Villars-Sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America.

The Respondent is Moniker Privacy Services / Domain NameZ of Portland, Orlando, United States of America / Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <vanclefarpels.com> is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On November 18, 2013, the Center sent a request for clarification to the Registrar, to which the Registrar replied on November 27, 2013. The Center sent an email communication to the Complainant on November 28, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 2, 2013.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the amended Complaint, and the proceedings commenced on December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2013.

The Center appointed Ian Blackshaw as the sole panelist in this matter on January 8, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant owns the VAN CLEEF & ARPELS trademark, which is a premiere brand in the luxury watch, jewelry, and perfume markets.

The Complainant’s predecessor in title was founded in Paris, France, in 1906 by Alfred van Cleef and Charles Arpels. In that same year, the business opened its first boutique in the prestigious Place Vendôme in Paris, France. Since that time, the Complainant and its predecessors in title have used the VAN CLEEF & ARPELS trademark in relation to the design, manufacture and sale of some of the finest and most exquisite works of jewelry in the world. The Complainant’s business has since expanded to include also luxury watches and fragrances.

The Complainant sells its watches, jewelry and perfume around the world, with a network of over 125 boutiques and carefully selected authorized retailers in Asia, Europe, North America and South America.

The Complainant operates its extensive website featuring information about its activities in Asia, Europe, and North and South America at “www.vancleefarpels.com”. Copies of web pages from the Complainant’s website have been provided to the Panel.

As evidence of the fame of the Complainant’s trademark VAN CLEEF & ARPELS, copies of the Complainant’s trademark registrations around the world, including a copy of the United States and Hong Kong, China, trademark registration certificate for the VAN CLEEF & ARPELS trademark (collectively the “VAN CLEEF & ARPELS marks”), have been provided to the Panel.

The Complainant draws the Panel’s special attention to the longstanding trademark VAN CLEEF & ARPELS, United State Registration No. 1,415,794, dated November 4, 1986, which covers watches and jewelry.

The Complainant also owns International Registration No. 329323 VAN CLEEF & ARPELS, registered February 12, 1966 and designating Switzerland, which covers “precious metals” and other jewelry pieces.

The Complainant states that due to the extensive use and registration of the VAN CLEEF & ARPELS marks around the world, the VAN CLEEF & ARPELS marks have become famous under the laws of the United States, Switzerland and Hong Kong, China. Furthermore, the VAN CLEEF & ARPELS marks have obtained the status of a notorious mark and, therefore, enjoy liberal protection under the Paris Convention.

The disputed domain name was registered on December 2, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name is confusingly similar to the Complainant’s VAN CLEEF & ARPELS marks, because it fully incorporates the VAN CLEEF & ARPELS marks, but contains a typographical error in “vanclef,” omits the non-essential element (the ampersand), and adds the generic Top-Level Domain (“gTLD”) “.com.”

Such minor alterations do not render the disputed domain name any less confusing for purposes of the confusing similarity analysis. See DeloitteTouche Tohmatsu v. Robert Thorp, WIPO Case No. D2001-1431 (finding that the elimination of the ampersand in the domain name <deloittetouche.net> did not distinguish it from complainant’s DELOITTE & TOUCHE mark); Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name, for example “.net”, does not affect the domain name for purposes of assessing whether the domain is confusingly similar); The NeimanMarcus Grp., Inc. v. S1A, NAF Claim No. 128683 (finding that the addition of a typographical error such as “www” prefix to Complainant’s mark failed to sufficiently differentiate the domain name from the mark).

The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Respondent lacks rights or legitimate interest in the disputed domain name. The Respondent, who has referred to itself in the WhoIs database as “Moniker Privacy Services,” and with an email address of […]@monikerprivacy.net, has never been commonly known by the VAN CLEEF & ARPELS marks nor any variations thereof, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted herein. See Harry Winston, Inc. and Harry Winston, S.A. v.h, WIPO Case No. D2008-1266 (finding that respondent had not established rights or legitimate interests pursuant to Policy paragraph 4(c)(ii) in the <harrywinstondiamond.com> domain name where there was no evidence that respondent was commonly known by the domain name); see also Alstomv.Yulei, WIPO Case No. D2007-0424 (finding that respondent had not established rights or legitimate interests in the domain name where there is no indication that the respondent is commonly known by the <alstomchina.com> domain name and/or is using the domain name in connection with a bona fide offering of goods or services).

The Respondent has never operated any bona fide or legitimate business under the disputed domain name, and is not making a protected noncommercial or fair use of the disputed domain name.

The Respondent is using the disputed domain name to direct visitors to a pay-per-click advertising website which advertises links to third-party websites offering for sale products which may or may not compete directly with the Complainant’s competitors and/or which may be counterfeit products.

The website at the disputed domain name also advertises links to third-party non-competitor sites. A printout of the front page of the disputed domain name has been provided to the Panel.

Such use does not constitute a bona fide or legitimate business use. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“In the Panel’s opinion it would be unconscionable to find that a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”); see also MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324 (finding that respondent’s use of the <wwwmastercard.com> domain name in connection with a website which contains links to other websites offering services of complainant and complainant’s competitors did not constitute use of the domain name in connection with a bona fide offering of goods or services); F. Hoffmann-La Roche AG v. Samir Kumar, WIPO Case No. D2008-0808 (the offering of a “search service totally unrelated to Complainant […] is neither a bona fide use, nor a commercial or fair use of the domain name.”).

The Complainant has not granted the Respondent any license, permission or authorization by which it could own or use any domain name registrations which are confusingly similar to the VAN CLEEF & ARPELS marks. See Nokia Corporation v.Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (finding absence of license permitting respondent to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).

The disputed domain name was registered and is being used in bad faith

The Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the VAN CLEEF & ARPELS marks by virtue of the Complainant’s prior registration of that mark with the trademark office of the United States, where the Respondent’s websites are targeted and where the Respondent is located, and Switzerland, where the Complainant is located. Registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Policy, paragraph 4(a)(iii). See Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412.

Also, the disputed domain name has been used to publish a website advertising third party websites offering for sale products of the Complainant’s competitors and/or to direct visitors to competing goods and services of others. Such activities fall squarely into the explicit example of bad faith registration and use found in the Policy at paragraph 4(b)(iv). See Nokia Corporation vs. Private, WIPO Case No. D2000-1271 (finding bad faith registration and use pursuant to Policy, paragraph 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

Further, the disputed domain name links to third-party websites that offer products in competition with those offered under the Complainant’s marks. Such activities are disruptive to the Complainant’s business and, therefore, conclusive evidence that the Respondent registered and is using the disputed domain name in bad faith pursuant to Policy, paragraph 4(b)(iii). See S.A.S. Jean Cassegrain v. Yeon-Gu Kim, WIPO Case No. D2005-0275 (finding that respondent’s offer to sell competing products on the website identified by the <longchampkorea.net> domain name evidenced bad faith in respondent’s conduct); see also Paul Barnett Puckett, Individuallyand d/b/a Nature’s Window v. Christopher D. Miller, WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy, paragraph 4(b)(iii)).

There is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of Complainant’s mark. As such, the nature of the disputed domain name itself evidences bad faith registration and use. See Charles Jorden Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”).

Finally, even if the Respondent argues that it was somehow unaware of the Complainant’s rights in the VAN CLEEF & ARPELS marks, had the Respondent conducted even a preliminary trademark search, it would have found the Complainant’s VAN CLEEF & ARPELS marks and the websites associated with the VAN CLEEF & ARPELS marks, and numerous additional references in commerce, on the Internet, and in publications, evidencing Complainant’s use of its mark in connection with the Complainant’s goods or services.

B. Respondent

The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in these proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.

Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates almost verbatim the VAN CLEEF & ARPELS marks, with the exception of the double “ee” (only one “e” is included) and the ampersand (“&”) which makes the disputed domain name confusingly similar to the well-known and famous VAN CLEEF & ARPELS marks. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information for the Complainant and its products marketed under its well-known and famous VAN CLEEF & ARPELS marks.

The Panel agrees with the Complainant’s contention that these minor differences in the disputed domain name are irrelevant and will not have the effect of avoiding any confusion, on the part of consumers and Internet users and others seeking information about the Complainant and its products, between the disputed domain name and the Complainant’s famous VAN CLEEF & ARPELS marks. See Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066.

Likewise, the addition of the gTLD “.com” to the disputed domain name does not constitute an element in the disputed domain name so as to avoid confusing similarity for trademark purposes. Its use is purely for Internet technical registration purposes. See The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.

In view of all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s well-known and widely registered VAN CLEEF & ARPELS marks , in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has prior rights in and commercial use of the same.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in these proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

There is no evidence either before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known and famous VAN CLEEF & ARPELS marks. In fact, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known and famous VAN CLEEF & ARPELS marks, which the Panel considers, as asserted above by the Complainant, was not by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is consequentially trading unfairly on the Complainant’s well-known and famous VAN CLEEF & ARPELS marks and also the valuable goodwill that the Complainant has established in this trademark through prior and lengthy commercial use, as evidenced above, without any right or legal justification for doing so.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all the above reasons and those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [the respondent’s] web site or location or of a product or service on [its] web site or location.”

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating as a dominant part thereof the Complainant’s well-known and famous VAN CLEEF & ARPELS marks, is trading unfairly on the Complainant’s valuable goodwill established in such trademark.

Also, the effect of such conduct on the part of the Respondent is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which the Panel can find, on the basis of the evidence provided in the record, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.

Furthermore, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed domain name by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s well-known and famous VAN CLEEF & ARPELS marks and its prior and lengthy commercial use.

Also, the Panel finds that the Respondent’s use of the disputed domain name which has the effect of redirecting Internet users interested in the Complainant’s services to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr.Cartwright, WIPO Case No. D2007-0267.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).

Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, as well as other arguments advanced by the Complainant in its contentions, as set out above, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <vanclefarpels.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: January 8, 2014