WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chrono24 GmbH v. Mustafa Baiwala, Design Master

Case No. D2018-2925

1. The Parties

The Complainant is Chrono24 GmbH of Karlsruhe, Germany, represented by Nachtwey IP, Germany.

The Respondent is Mustafa Baiwala, Design Master of Salmiya, Kuwait.

2. The Domain Name and Registrar

The disputed domain name <chrono24luxury.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2018, 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. The Center sent an email communication to the Complainant on December 24, 2018 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 27, 2018 and on January 8, 2019.

The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2019.

The Center appointed Charles Gielen as the sole panelist in this matter on February 6, 2019. 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 several registrations for the trademark CHRONO24, such as European Union Trade Mark registration No. 009027038, registered on December 16, 2010, as well as International Registration No. 1117202, registered on September 29, 2011, valid in a number of countries, such as in the United States of America for services in class 35, 36, 38 and 41.

The disputed domain name <chrono24luxury.com> was created on September 8, 2018 and resolves to a website showing pictures of watches of reputed trademarks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it operates through the website “www.chrono24.com” an online sales platform for third parties on which high end and luxury watches are sold and that it has over 14 million monthly site visits and over 23,000 monthly visits only in Kuwait in October 2018. Furthermore, the Complainant has more than 2,000 watch dealers from all over the world on its sales platform and has buyers from more than 90 countries. The Complainant contends that it is the leading marketplace for luxury watches and that its trademark CHRONO24 is well known.

The Respondent operates a portal for luxury watches under the disputed domain name. The website to which the disputed domain name resolves mentions the following text: “Chrono24 Luxury is one of the leading Luxury watches […] companies in GCC. Chrono24 Luxury is the most reputable and trusted online boutique which has continually revolutionized authentic luxury time pieces […] selling since its creation back in 2016. What really sets Chrono24 Luxury apart is its sourcing of some of the most exceptional and unique Richard Mille, Patek Philippe, Audemars Piguet and Rolex watches […] of which we as a company are immensely proud.”

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name reproduces the trademark CHRONO24 in its entirety followed by the descriptive term “luxury.” The website to which the disputed domain name resolves also operates a portal for watches, which is the same service as the services for which the Complainant has registered its trademark and which is used by the Complainant by operating an online shop portal for third parties to sell watches.

Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name, in the first place because the Respondent is not known by the disputed domain name. Also the Complainant contends that the Respondent registered the disputed domain name in 2018 which is long after the first priority date of the Complainant’s trademark in 2010.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Among others, the following reasons are given. First of all the registration is in bad faith, since the Respondent at the time of the creation of the disputed domain name must have been aware of the trademark of the Complainant which at that time was already well known for the operation of an online platform for luxury watches which is one of the leading platforms for selling third party luxury watches. Secondly, the use of the disputed domain name is in bad faith because the website to which the disputed domain name resolves will mislead Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark due to the high similarity between the trademark of the Complainant and the disputed domain name and also because the service offered by the parties are identical. In doing so, the Respondent misuses the goodwill of the Complainants trademark. The relevant users will believe that the platform operated by the Respondent belongs to the Complainant. The Complainant contends that the registration and use of the disputed domain name was primarily done for the purpose of disrupting the business of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in a UDRP proceeding. For the reasons set out below, the Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark CHRONO24 based on different trademark registrations. The term “chrono24” in the disputed domain name is identical to this trademark. The fact that the disputed domain name contains the term “luxury” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark CHRONO24. The main reason is that the term “luxury” is descriptive. Furthermore, in the disputed domain name the emphasis lies on the first word, which is “chrono24” and which is identical to the trademark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the disputed domain name was registered long after the Complainant started to use the trademark CHRONO24 for an online sales platform for luxury and high end watches. The Panel is convinced that the term “chrono24” in the disputed domain name has no other meaning except to refer to the Complainant and its trademarks. Furthermore, the Respondent is not known by the disputed domain name. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.

The main reasons for this conclusion are as follows. The rights to the trademark CHRONO24 were vested long before the disputed domain name was created. This trademark is well known for an online sales platform for luxury and high end watches. The services offered by the Respondent on the website to which the disputed domain name resolves are identical to the services for which the trademark has been registered and is being used. According to the Panel, the intention of the Respondent is to mislead Internet users in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. The Respondent is undoubtedly trying to attract, for commercial gain, Internet users and consumers by creating a likelihood of confusion with the Complainant’s trademark. This intention follows from the fact that the disputed domain name is confusingly similar to the well-known trademark of the Complainant and is being used for a website which offers services identical to those for which the trademark is registered. The Panel is of the opinion that registration and use of a domain name in connection with such activities constitutes bad faith under the Policy. The intention of the Respondent clearly is to capitalize on the reputation and goodwill of the Complainant’s trademark. Therefore, the Panel is of the opinion that registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.

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 <chrono24luxury.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: February 20, 2019