Complainant is Glashütter Uhrenbetrieb GmbH of Glashütte, Germany represented by FairWinds Partners, LLC, United States of America (“US”).
Respondent is Wang Liqun of Xinyu, China.
The disputed domain name <glashuette-original.nl> (the “Domain Name”) is registered with SIDN through 1API GmbH.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2016. On October 3, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 4, 2016, Complainant submitted an amended Complaint. On the same day, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 4, 2016 providing the registrant and contact information disclosed by SIDN, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 5, 2016. In accordance with the Regulations, article 7.1, the due date for Response was October 25, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2016.
The Center appointed Gregor Vos as the panelist in this matter on November 4, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
Complainant is a luxury watch manufacturer. Predecessors of Complainant started making watches in Germany in the 19th century and under the name “Glashütte Original” since (at least) 1927. Complainant has become well known in the luxury timepiece industry. The publicly traded company Swatch Group AG is the parent company of Complainant. The corporate website of Complainant is “www.glashuette-original.com”.
Complainant has provided copies of European Union trademark registrations (No. 1346105, registered on November 7, 2000; No. 4821773, registered on November 27, 2006) and a US registration (No. 2519207, registered on December 18, 2001) for GLASHÜTTE ORIGINAL. These registrations (the “Trademarks”) all concern figurative marks including the word elements “glashütte original”. From the exhibits submitted by Complainant, it follows that Complainant uses the Trademarks extensively.
Respondent registered the Domain Name on November 25, 2014. The Trademarks therefore predate the Domain Name.
The Domain Name resolves to a website with pay-per-click links to websites that sell Complainant’s products as well as products of its competitors.
Complainant asserts that the Domain Name is identical or confusingly similar to its Trademarks. The only differences are the addition of the letter “e” and the use of a hyphen. Complainant states that the spelling of “Glashuette” is a common alternate spelling of “Glashütte” for non-German speakers. This is also the solution that Complainant uses to aid English speakers in finding its corporate website “www.glashuette-original.com”.
Complainant further argues that Respondent has no rights or legitimate interests in the Domain Name. Respondent does not practice a bona fide offering of goods or services, as it uses a classic pay-per-click website which promotes businesses that compete with Complainant in the wristwatch industry. Complainant furthermore argues that Respondent is not commonly known by the Domain Name or makes legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
Finally, Complainant asserts that Respondent registered and uses the Domain Name in bad faith. In this connection Complainant argues that Respondent registered a Domain Name identical to the Trademarks and that its website under the Domain Name contains links to other websites which sell both Complainant’s own products as well as those of its competitors. According to Complainant, this indicates that Respondent has knowledge of the Trademarks and intends to illegally trade on the goodwill of the Trademarks. This commercial intent is further confirmed by the circumstance that Respondent tried to sell the Domain Name to Complainant for a price far in excess of the registration cost. Complainant also asserts that Respondent is engaged in a pattern of cybersquatting conduct, which was demonstrated in several earlier Uniform Domain Name Dispute Resolution Policy (“UDRP”) and Uniform Rapid Suspension System (“URS”) cases which were brought against Respondent.
Complainant requests the transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
In order to have its request for transfer of the Domain Name granted, Complainant must meet the requirements under article 2.1 of the Regulations. These requirements are:
(a) that the Domain Name is identical or confusingly similar to:
I) a trademark, or trade name, protected under Dutch law in which Complainant has rights; or
II) a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which Complainant undertakes public activities on a permanent basis; and
(b) that Respondent has no rights to or legitimate interests in the Domain Name; and
(c) that the Domain Name has been registered or is being used in bad faith.
Due to its failure to file a response, Respondent has failed to come forward with allegations or evidence that may contradict Complainant’s assertions. As a result, the Panel shall decide this administrative proceeding on the basis of the Complaint. Pursuant to article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.
The requirement under article 2.1(a) under I of the Regulations is met, when a domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights.
Complainant has exhibited its ownership of the Trademarks that incorporate the dominant word elements “glashütte original”. The US trademark does not grant Complainant rights under Dutch law, but the trademarks which are valid in the European Union (the “EU Trademarks”) do. On that basis, the Panel finds that Complainant has rights in a trademark protected under Dutch law.
As to the question whether the Domain Name is identical or confusingly similar to the EU Trademarks, the Panel notes that Domain Name differs from GLASHÜTTE ORIGINAL in the use of a hyphen, the omission of the umlaut character on the letter “u”, the alternative addition of the letter “e”, and the addition of the Dutch Top-Level Domain “.nl”. As the “.nl” domain name registration system does not allow for use of Internationalized Domain Names (which would permit the use of special characters, such as the “ü”), the omission of the umlaut sign shall not be taken into consideration in the comparison between the Domain Name and the EU Trademarks.
The Panel accepts the assertion of Complainant that it is common for non-German speakers to use the letter combination “ue” instead of “ü”. Also, the use of a hyphen is not a meaningful difference here. Finally, the addition of a Top-Level Domain does not influence the degree of similarity (e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008). Therefore, the Panel finds that the Domain Name is confusingly similar to the EU Trademarks.
As it is often considered impossible for a complainant to prove a negative for meeting the requirements of article 2.1(b) of the Regulations, the consensus panel view is that a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of proof shifts to the respondent. The respondent must then come forward with appropriate allegations or evidence that it does in fact have rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).1
The Regulations provide non-exhaustive circumstances in which a registrant may be found to have rights or legitimate interests in a domain name (article 3.1 of the Regulations). Complainant has substantiated that Respondent does not act in compliance with any of these circumstances. Moreover, Complainant has asserted that Respondent’s use of the Domain Name tarnishes and dilutes the Trademarks.
By defaulting Respondent has failed to address the prima facie case thus established by Complainant.
Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of article 3.1 of the Regulations is present.
The Panel concludes that Respondent has no rights to or legitimate interests in the Domain Name and that the second condition under article 2.1(b) of the Regulations is met.
Article 3.2 of the Regulations lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name. Among these circumstances, article 3.2(a) of the Regulations concerns the scenario where “the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant […] for valuable consideration in excess of the cost of registration.” Furthermore, article 3.2(d) of the Regulations describes the scenario in which “the domain name has been or is being used for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark […] registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location”.
The Panel notes that the EU Trademarks were registered considerably earlier than the Domain Name.
The Panel furthermore notes that the Domain Name directs to a website where links are displayed to websites that sell not only Complainant’s products, but also several of Complainant’s competitors’ products. This suggests that Respondent is well aware of Complainant and its Trademarks (Vanguard Trademark Holdings USA, LLC v. Benson and Partner LTD, WIPO Case No. DNL2010-0052). Considering the pay-per-click links shown on the website under the Domain Name, it is obvious that Respondent is trying to obtain commercial gain from its use of the Domain Name.
Further, the Panel finds that Complainant has sufficiently established that Respondent has tried to sell the Domain Name to Complainant in excess of the cost of registration; clearly Respondent was aware of the Domain Name’s value to Complainant (see, e.g., Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352).
Moreover, the Panel agrees with Complainant’s assertion that the above cybersquatting circumstances are apparently part of a pattern of conduct by Respondent. Considering the assertions and exhibits put forward by Complainant, the Panel agrees that there seems to be a link between Respondent and certain named parties in other UDRP and URS. The Panel finds it likely that Respondent is indeed one and the same party in all these cases.
In all the circumstances, the Panel finds that Complainant’s assertions and submitted proof are sufficient to establish registration and use of the Domain Name in bad faith. Based on the record before it, the Panel does not see an indication of any of the circumstances of article 3.2 of the Regulations. Therefore, the third condition under article 2.1(c) of the Regulations is met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <glashuette-original.nl>, be transferred to Complainant.
Gregor Vos
Panelist
Date: November 23, 2016
1 While the Complaint is brought under the Regulations, and not the UDRP given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it where appropriate.