The Complainant is Turlen Holding SA of Delémont, Switzerland, represented by Etude Tissot, Switzerland.
The Respondent is Blue Racer Pty Ltd of Subiaco, Australia.
2. The Domain Name and Registrar
The disputed domain name <richardmille.com.au> is registered with PlanetDomain Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2010. On March 22, 2010, the Center transmitted by email to PlanetDomain Pty Ltd. a request for registrar verification in connection with the disputed domain name. On March 25, 2010, PlanetDomain Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 proceedings commenced on March 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2010. On April 13, 2010 and April 17, 2010, Troy Barbagallo, the administrative contact for the disputed domain name, sent informal email communications to the Center. However, no formal Response was submitted.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 21, 2010. 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.
On April 22, 2010, the Center received a further email seemingly from one “Anthony Wong” suggesting that the existence of the dispute could be brought to the attention of a Joshua Reed. The Center forwarded that email to the Panel.
4. Factual Background
The Complainant is a Swiss company that trades in horological goods. One of its founders, and a current Board member, is Mr Richard Mille of France. Mr Richard Mille has been involved in the watch industry since 1974 and launched his own watch company in 2001.
The Complainant is the owner of the Swiss trademark registration No 467031 of April 1, 1999 for RICHARD MILLE. This trademark was first registered to Mr Richard Mille and then assigned to Turlen Holding SA. The latter changed its name to Haltin SA and the trademark RICHARD MILLE was afterwards assigned to another firm also named Turlen Holding SA. Mr Richard Mille is or was a member of the Board of all these companies. The trademark RICHARD MILLE is registered in 170 countries including Australia. Turlen Holding SA is also the owner of numerous domain name registrations incorporating the trademark RICHARD MILLE, including <richardmille.com> and <richard-mille.com>.
The Complainant sent a warning notice by email to the Respondent on June 4, 2008, seeking to have the disputed domain name assigned to it immediately. At this time the disputed domain name was not in function and there was no reply to the notice. Some time later the disputed domain name started directing to the website at “www.theswisswatchbox.com.au”, where Richard Mille watches and watches of competitors are offered for sale. The Complainant then issued a new warning notice by email on December 17, 2009 again seeking the assignment of the disputed domain name. Once again, there was no reply.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark RICHARD MILLE as it reproduces the whole of the trademark without any amendment. The Complainant contends that Internet users going to the website to which the disputed domain name directs would believe it is connected with the official website of Richard Mille, which is not the case.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it does not have a licence, agreement or consent from the Complainant to use the trademark RICHARD MILLE, or to register and use it as a domain name, and the Respondent is not an authorized retailer of Richard Mille watches.
The Complainant contends the disputed domain name was registered and used in bad faith as the Respondent would have had knowledge of the well-known international trademark and name RICHARD MILLE and the numerous domain name registrations corresponding to that trademark and name. If the Respondent was acting in good faith it would have answered the emails of June 2008 and December 2009. The use of the disputed domain name to direct Internet users to a Swiss watch website that predominantly sells products of the Complainant's competitors is not a bona fide commercial use of a domain name, and the Respondent is trying to mislead Internet users into accessing a website that appears to be related to the Complainant but is not. The Respondent was attempting to capitalize on the Complainant's reputation and disturb its commercial transactions, and to attract Internet users to the Respondent's website for commercial gain.
B. Respondent
The Respondent did not file a Response. However, on April 13, 2010 the administrative contact for the disputed domain name, Troy Barbagallo, transmitted to the Center an email stating that he is no longer a director of the Respondent and that the Complaint should be forwarded to the Directors of the Respondent. On April 17, 2010 Troy Barbagallo transmitted to the Center an email stating that he has nothing to do with this case and requesting the Center to “stop bothering me with constant correspondence”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's trademark RICHARD MILLE, once the second level domain <.com> and the top level domain <.au> is ignored. Accordingly, this Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not authorized by the Complainant to use the RICHARD MILLE trademark, and has not asserted any rights or legitimate interests in the disputed domain name. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that the Respondent both knew of the Complainant's trademark at the time of registration of the disputed domain name and knew that it had no rights or legitimate interests in the disputed domain name. Accordingly, this Panel finds that the Respondent registered the disputed domain name in bad faith. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent's use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of that website. Accordingly, this Panel is satisfied that the Respondent has used the disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <richardmille.com.au> be transferred to the Complainant.
Andrew F. Christie Sole Panelist
Dated: May 5, 2010
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