WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Officine Panerai AG v. WHOIStrustee.com Limited, Registrant of paneraipassion.com/ Macdonald Mark

Case No. D2020-3042

1. The Parties

The Complainant is Officine Panerai AG, Switzerland, represented by SILKA AB, Sweden.

The Respondent is WHOIStrustee.com Limited, Registrant of paneraipassion.com, United Kingdom / Macdonald Mark, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <paneraipassion.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2020. On November 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2020, 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 November 23, 2020 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 amendment to the Complaint on November 24, 2020.

The Center verified that the Complaint together with the amendment to the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 11, 2021. 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

Panerai is a watch manufacturer founded in 1860 by Giovanni Panerai. For years, Panerai was the official supplier to the Royal Italian Navy. The Complainant, Officine Panerai, is the Italian manufacturer developing and producing the watches and the movements in Neuchâtel.

In addition to its company boutiques, the Complainant operates all over the world through a network of authorized dealers.

The Complainant is the owner of the trademark PANERAI across various jurisdictions. These registrations include:

- United States trademark PANERAI with registration No. 2340290, registered on April 11, 2000, in International class 14;

- Italian trademark PANERAI with registration No. 0001621308, registered on January 20, 2015, in International class 16;

- European Union trademark PANERAI with registration No. 010948065, registered on November 5, 2012, in International classes 35, 38, 42 and 45;

Additionally, the Complainant is the registrant of the domain name <panerai.com> that resolves to its extensive website featuring information about its product lines, manufacturing process, support resources, and worldwide activities.

The Complainant is also the registrant of various domain names incorporating the PANERAI trademark, such as <panerai.us> and <panerai.it> which are connected to website through which it informs potential customers about its respective mark and its products.

The disputed domain name <paneraipassion.com> was registered on July 8, 2016, well after the Complainant secured rights to the trademarks. The disputed domain name currently resolves to an active website selling replicas of the Complainant’s goods.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

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

The Complainant contends that by incorporating the Complainant’s PANERAI trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark.

Additionally, the Complainant claims that the mere adjunction of the dictionary term “passion” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark (WhatsApp Inc. v. Whois Privacy Service / Raj Lakkaraju, Ptechpeople, WIPO Case No. D2020-1291).

The Complainant further argues that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s PANERAI trademark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it is clear that the Respondent has no rights or legitimate interests in respect of the disputed domain name, nor is the Respondent commonly known by the disputed domain name and the Respondent is neither sponsored by, nor affiliated with, the Complainant in any way.

The Complainant also states that it has never licensed or otherwise permitted the Respondent to use the Complainant’s trademark or to register any domain name including the Complainant’s trademark.

According to the Complainant, the Respondent has not used the disputed domain name in connection with a legitimate use as the website previously connected to the disputed domain name offering goods in direct competition with the Complainant.

Moreover, the Respondent does not appear to use the disputed domain name for any legitimate noncommercial purpose. The disputed domain name currently resolves to a website selling replicas of the Complainant’s goods. According to the Complainant, legitimate rights or bona fide use do not exist when there is deliberate infringement of another’s intellectual property rights.

With reference to section 2.13.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Complainant also submits that the use of the disputed domain name for illegal activity cannot confer rights or a legitimate interest on the Respondent.

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant asserts that, at the time of registration of the disputed domain name, the Respondent knew of the existence of the Complainant’s trademark given (i) that the website connected to it offers replicas of the Complainant’s products for sale to Internet users, (ii) that the disputed domain name was registered after the Complainant filed for registration of its PANERAI trademark and (iii) the well-known character of the PANERAI trademark in the fashion industry.

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith for the following reason: the term “panerai” is an inherently distinctive term and the mere coincidence of an identical name, with no other meaning except for referring to the Complainant’s name and trademark, in the disputed domain name cannot be accepted. The adjunction of the term “passion” proves that the Respondent was aware of the Complainant.

As for the use of the disputed domain name, the Complainant claims that the Respondent used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website with allegedly the Complainant’s products made available for sale, by creating a likelihood of confusion with the Complainant’s trademark.

Furthermore, the Complainant states that the concealment of the Respondent’s identity is an indication of bad faith as it is inspired solely to make it difficult for the Complainant to protect its trademark rights (Anda Inc v. Registration Private, Domains By Proxy, LLC / Name Redacted, WIPO Case No. D2019-1362).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in PANERAI.

Secondly, the disputed domain name fully incorporates the Complainant’s PANERAI trademark in which the Complainant has exclusive rights.

Thirdly, this Panel finds that the addition of the term “passion” does not constitute an element so as to avoid confusing similarity for purposes of the Policy. See in this regard section 1.8 of the WIPO Overview 3.0, stating that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.

Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s PANERAI trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that the Respondent has been commonly known by the disputed domain name;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.

For all the foregoing reasons, also taking into account the Panel’s findings below, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the PANERAI trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the PANERAI trademark.

This conclusion is enhanced by the fact that the Respondent has chosen to offer replicas of the Complainant’s goods on the website to which the disputed domain name resolves.

Additionally, since the Complainant’s trademark is an invented word with no meaning in any language apart from in relation to the Complainant’s goods and that the Complainant is well-known for its watches, it cannot be a mere coincidence that the Respondent has chosen the disputed domain name.

As for the use of the disputed domain name, based on the evidence submitted the Respondent is using it to direct consumers to a website selling replicas of the Complainant’s goods. Such use, which at its heart relies on exploiting user confusion, cannot constitute bona fide use.

The Panel finds the Respondent’s use of a privacy service to be a further indicator of the Respondent’s bad faith.

In light of the above, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

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, <paneraipassion.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelis t
Date: January 25, 2021