WIPO Domain Name Decision: D2005-0724

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FMTM Distribution Limited v. Watch My Domain

Case No. D2005-0724

1. The Parties

The Complainant is FMTM Distribution Limited, Douglas, Isle of Man, United Kingdom of Great Britain and Northern Ireland, represented by Cabinet Juridique Merlotti, Switzerland.

The Respondent is Watch My Domain, Dubai, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <frankmuller.com> is registered with Lead Networks Domains Pvt. Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2005. On July 8, 2005, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On August 1, 2005, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 proceedings commenced on August 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2005. The Response was filed with the Center on August 23, 2005.

The Center appointed Fleur Hinton as the sole panelist in this matter on September 6, 2005. 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 has set out a history of events in relation to this matter and has provided evidence to substantiate the factual allegations which it makes.

The Complainant owns registrations for the trademark FRANCK MULLER in eighty one countries, the earliest of which is a Swiss registration dating from February 21, 1992. The trademark is the name of one of the two founders of the Franck Muller Group who is actually the chief watch designer. The trademark is also registered in the United Arab Emirates, the country given as the Respondent’s domicile on the whois database entry for the disputed Domain Name. The main class of interest to the Complainant is international class 14 as the Complainant has become very well-known for its watches which it commenced manufacturing and marketing at the beginning of 1992.

The Complainant licenses the trademark to Franck Muller Watchland SA, a Swiss commercial entity which since the inception of the brand, licenses watches bearing the FRANCK MULLER trademark throughout the world. The Complainant has annexed extracts from various magazines and websites showing the substantial publicity which the trademark has engendered. The Complainant has also supplied information from company records indicating that the Complainant’s distributors in the Golf region including the United Arab Emirates have been obliged under their contracts to spend in total over 1,5 million Swiss francs per year on promotional activity over the last 5 years. The Complainant has also provided a list of 18 distributors who operate on its behalf in the region. Although this information is not of itself evidence that advertising activity to that value actually took place, the Panel finds that substantial activity of this type would at least have taken place.

The Panel notes also that the annual global turnover of the Complainant’s business of selling watches under the FRANCK MULLER brand has exceeded 300 million Swiss francs since 2002.

The Respondent identifies himself on the whois database for the disputed Domain Name as “Mr. Nick M”. In his response to this Complaint he further identifies himself as “Mr. Nick M alias Naressh K. Malik”. The disputed Domain Name was registered on October 29, 2003. The disputed Domain Name <frankmuller.com> is different by only one letter from the Complainant’s trademark. The disputed Domain Name’s website on September 2005 offers links to websites selling watches by reference to “Franck Muller” and “Frank Muller”.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it is the owner of the FRANCK MULLER trademark and that the Domain Name <frankmuller.com> is confusingly similar to it. The Complainant has provided a list of its international portfolio of trademarks, both registrations and pending applications, as well as copies of publicity which it has received in various magazines and on websites. This includes publicity given to the watchmaker Mr. Franck Muller himself, as well as articles which have been written in publications in several languages relating the story of the brand’s success and which demonstrate that the trademark has a substantial common law reputation.

The Complainant also alleges that the Respondent has no legitimate rights to the Domain Name. The Respondent has not been licensed by the Complainant to use the trademark. The Respondent is not himself called “Frank Muller” and there is nothing to suggest that he ever has been. The Complainant’s trademark was already the subject of many international trademark registrations and had a substantial reputation in the marketplace for luxury watches at the time, October 29, 2003, when the Respondent registered the Domain Name.

The Complainant relates the history of its attempts to contact the Respondent and to obtain the Domain Name after it became aware that the Respondent had registered it. The Complainant’s evidence includes copies of emailed correspondence between the parties in which the Respondent claims that he had paid $7,500 to purchase the Domain Name. The email reads, “I have paid $7’500 (sic) to acquire the domain. Now…” The Complainant alleges that this is an attempt to sell the Domain Name to the Complainant for a substantial sum of money.

The website on this page does nothing but provide links to other pages offering a variety of watches and other goods for sale. None of the linked pages has any legitimate relationship with the Complainant. In addition, the Domain Name is offered for sale on the website.

Finally the Complainant claims that the Domain Name was registered and is being used in bad faith by the Respondent. Firstly, the Respondent could not have failed to be aware of the Complainant’s trademark. Secondly, his use of the Domain Name is clearly being made by the Respondent to take advantage of the reputation which the Complainant enjoys in its trademark and it is irrelevant to a determination of this issue whether the Respondent registered the Domain Name himself or acquired it from someone else who had done so. His continued use in bad faith is supported by his offer to sell the Disputed Domain Name to the Complainant.

B. Respondent

The Respondent denies that the Domain Name is confusingly similar to the Complainant’s trademark because there is one letter’s difference between the Domain Name and the trademark respectively. The Respondent goes on to argue that many people are called “Frank Muller” and that a “simple search on Google.com (sic) with the term “Frank Muller” throws up 144,000 results”.

The Respondent denies that he has no legitimate right or interest in the Domain Name and asserts that he does not require a license from the Complainant as the Complainant has not proved any right to the Domain Name. The fact that the spelling is very similar is a mere coincidence. The Respondent argues that this is an attempt by the Complainant to reverse hijack the Domain Name. Further, he says, Frank Muller is the name of a popular furniture store in the Middle East, the Respondent’s domicile. He further alleges that he received an offer to buy the Domain Name from the Complainant and the Complainant was “fully aware” that it had no right or legitimate interest in the Domain Name.

The Respondent denies that it registered and is using the Domain Name in bad faith.

6. Discussion and Findings

Under the Policy the Complainant must establish that the Domain Name is confusingly similar to the Complainant’s domain name; that the Respondent does not have rights or legitimate interests in the Domain Name; and that the Respondent registered the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Domain Name <frankmuller.com> is confusingly similar to the trademark FRANCK MULLER. This must be particularly true where there is phonetic identity and only one letter difference between the marks. This form of domain name registration by third parties has become known as “typo-cybersquatting” and has been recognized in decisions in: Career Builder, LLC v. Azra Khan, WIPO Case No. D2003-0493; Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123; and Autosales Incorporated, dba Summit Racing Equipment v. Domain Active Pty. Ltd, WIPO Case No. D2004-0459.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no right or legitimate interest in the Domain Name. His response does not indicate that he has ever been called by the name or had any association with the name “Frank Muller”. Neither does he give any reason as to why he adopted that Domain Name. He does not appear to carry on business under the name “Frank Muller” or to have any association in business or otherwise with a person of that name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered and is using the Domain Name in bad faith. The Respondent did not make any submissions in his response on this issue; he simply denied that it was the case. Nevertheless, it is clear that the website to which the Domain Name is linked is one which offers to sell, among other things, FRANCK MULLER branded watches. That fact together with the copies of emails which form part of the Complainant’s evidence in which the Respondent claimed to have paid $7,500 and seemed to suggest that the Complainant make him an offer support this. The Respondent has given no real explanation for this email exchange and these matters when taken together suffice in the Panel’s view to establish that the Domain Name was registered and used by the Respondent in bad faith. The fact that the Domain Name is different by one letter does not change this and, as has been found in the case of Girard-Perregaux SA v. Domain Trooper, WIPO Case No. D2001-1432, is unlikely to be a coincidence.

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 <frankmuller.com> be transferred to the Complainant.

Fleur Hinton
Sole Panelist

Dated: September 20, 2005