WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chopard International S.A. v. Vladimit Kozlov
Case No. D2007-1544
1. The Parties
The Complainant is Chopard International S.A., Pragins, Switzerland, represented by Coccia De Angelis & Associati, Italy.
The Respondent is Vladimit Kozlov, Ashhabad, Jordan.
2. The Domain Name and Registrar
The disputed domain name <chopardreplicawatch.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2007. On October 19, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On October 20, 2007, GoDaddy.com, Inc. 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 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 October 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2007.
The Center appointed Andrew Brown QC as the sole panelist in this matter on November 26, 2007. 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 is the owner of the trademark CHOPARD in relation to watches and jewelry. It is part of the Chopard Group, a family-owned business that manufactures (inter alia) watches. The Chopard Group has a business history dating back to 1860. The Complainant states that it distributes its products through 13 subsidiaries located around the world. In addition it has opened over 90 brand boutiques around the world.
The Complainant owns a number of registrations for the trademark CHOPARD in international trademark class 14. It has a trademark registration in Switzerland (P-412327) with effect from February 15, 1994 for a range of goods within class 14 including watches and watch parts. The Complainant also holds a registration under the Madrid Agreement (registration 624,432) in class 14 and (based on the Swiss registration) this covers a range of 32 Madrid countries in Europe, Africa and Asia.
In addition, the Complainant holds a trademark registration for CHOPARD in the Kingdom of Jordan in class 14 (18784).
The Complainant asserts that, even before these registrations, its trademark CHOPARD had achieved widespread fame as an unregistered trademark (in relation to watches).
The Respondent registered the domain name <chopardreplicawatch.com> on February 24, 2004.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain name fully incorporates the trademark CHOPARD and also that it is confusingly similar to the Complainant’s mark. It is further stated that the words “replica” and “watch” are a striking element to be considered because they obviously refer to the watch matching activities and products of the Complainant (and the Chopard Group of which it is a part).
The Complainant also asserts that the Respondent does not have any rights or legitimate interest in respect of the domain name. There is no commercial or licensing arrangement between the Respondent and the Complainant or the Chopard Group; nor does the Respondent have any right to use the trademark CHOPARD.
The website corresponding to the disputed domain name contains a series of pages with information about the Complainant such as its history, organizational chart, advertising news and a picture of the its models of watches. The Complainant states that all of this information has been taken from the official CHOPARD website or by means of a “collage” of information obtained from internet sources. Further, it states that the products sold on the website comprise “illegal fake products”.
The Complainant complains that the domain name has been registered and is being used in bad faith. The specific allegations under this head of the Policy are that those using the internet will be mistakenly induced to link this website directly to the Complainant by considering it to be an official Chopard website or at least a Chopard spin-off website. Instead the website is asserted to be “just an unlawful means to merchandise illegal fake products”. The Complainant claims that there is an evident intent by the Respondent to misleadingly direct consumers for commercial gain and tarnish the trademark CHOPARD. The domain name takes advantage of the international standing and repute of the mark CHOPARD and there is a clear purpose to redirect potential visitors interested in the Complainant’s products to the webpages related to the disputed domain name in order to sell fake products.
B. Respondent
The Respondent did not file a Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided clear evidence of its rights in the CHOPARD registered trademark in a considerable number of jurisdictions, including in Jordan where the Respondent resides. Even though more relevant under the second and third elements of the Policy, the Panel notes that the Complainant’s registered trademark rights date from February 1994 but the Complainant and its associated companies have unregistered trademark rights going back much earlier.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CHOPARD. The disputed domain name encompasses the mark CHOPARD in its entirety. UDRP decisions have recognized that where a trademark is incorporated in its entirety into a disputed domain name, then that can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark (see Koninklijke Philips Electronics N. V. v. Selling Domains Best, WIPO Case No. D2002-1041; Direct Line Group Ltd, Direct Line Insurance plc, Direct Line Financial Services Ltd , Direct Line Life Insurance Company Ltd, Direct Line Unit Trusts Ltd, Direct Line Group Services Ltd v. Purge I. T., Purge I.T. Ltd. WIPO Case No. D2000-0583; Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946).
The Panel has considered whether the use of word “replica”, which is an integral part of the disputed domain name, could be said to indicate that the domain name is not confusingly similar to the Complainant’s mark. However the Panel has reached the view that in this context “replica” does not take the disputed domain name out of this category. The domain name <chopardreplicawatch.com> starts with the Complainant’s trademark CHOPARD and will therefore come up in searches for “chopard” conducted through search engines. The fact that Chopard is the first and dominant word of the domain name may be enough for some web users to be confused or deceived into thinking that the site is connected with the Complainant (i.e. initial interest confusion).
The word “replica” – unlike “fake” – does not instantly tell the internet user that this site is not connected with the Complainant. The word “replica” is defined in the Shorter Oxford Dictionary as meaning (emphasis added):
“…
2. A duplicate of a work of art, esp one made by the original artist.
3. A reproduction, a facsimile. Also a copy or model esp on a smaller scale.”
This shows that a “replica” denotes a work often made by the original craftsman and does not carry the same connotation as “fake” which plainly and unmistakably states that a product is not genuine.
In this regard the Panel notes that in a previous decision (Tag Heuer S.A. v. JBlumers Inc. Jerald Blume, WIPO Case No. D2004-0871), the panel found that the domain names <faketagheuer.com>, <replicatagheur.com> and <tagheuerreplicas.com> were all confusingly similar to the complainant’s TAG HEUER trademark. The Panel’s finding in the present case is consistent with that earlier decision.
B. Rights or Legitimate Interests
The Respondent has not filed any response and, in that way, has chosen not to put up any showing as to rights or legitimate interests under the Policy. The Complainant has clearly asserted and shown that it has not licensed or authorized the Respondent in any way. The fact that the Respondent is using the disputed domain name to sell fake Chopard watches rather clearly points to the absence of any right or legitimate interest. The Panel therefore finds that the Respondent has no rights or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel is satisfied from the Complainant’s evidence that CHOPARD is a well-known mark for watches. The Respondent plainly registered and intended to register the domain name to use and adopt the Complainant’s well-known CHOPARD trademark. The additional words “replica watch” in the disputed domain name provide clear confirmation of this. The use of “Chopard” together with “watch” is unmistakable in communicating the Respondent’s aim and intent.
The website “www.chopardreplicawatch.com” advertises that at its store the visitor will be able to find replica Chopard watches. The Complainant advises that these are fake products.
The Panel therefore finds that the Respondent has intentionally attempted to attract (for commercial gain) internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of the “Chopard” fake watches sold on that website. The Respondent is seeking to use the CHOPARD mark to induce members of the public to visit the website and purchase fake Chopard watches. This is squarely within paragraph 4(b)(iv) of the Policy.
The Panel therefore finds the disputed domain name has been registered and is being used in bad faith.
7. Decision
For all these reasons, the Panel orders that the domain name, <chopardreplicawatch.com> be transferred to the Complainant.
Andrew Brown QC
Sole Panelist
Dated: December 10, 2007