WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Richemont International SA v. Turvill Consultants

Case No. D2014-0862

1. The Parties

The Complainant is Richemont International SA of Villars-sur-Glane, Switzerland, represented by Winston & Strawn LLP, United States of America (“United States”).

The Respondent is Turvill Consultants of Scarborough, Ontario, Canada.

2. The Domain Names and Registrar

The disputed domain names <piagetwatch.com> and <piagetwatches.com> are registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 4, 2014, the Registrar 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2014.

The Center appointed Anders Janson as the sole panelist in this matter on July 8, 2014. 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 PIAGET trademark. Piaget, a subsidiary of the Complainant was founded in 1874 and manufactures luxury watches and jewelry. Piaget controls the entire production process for its watches, from the initial design to the final finishes. Piaget watches and jewelry are sold across the world. The Complainant’s website address is “www.piaget.com”.

PIAGET is a registered trademark in the United States with United States Registration No. 679,984, registered on June 9, 1959 covering watches along with watch accessories, in Switzerland with Swiss Registration No. 329926, registered in November 1983 covering watches, and in Canada with Canadian Registration No. 284,562, registered on December 22, 1967, covering watches along with watch accessories.

The present dispute concerns the two disputed domain names <piagetwatch.com> and <piagetwatches.com>, both created on March 9, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the trademark PIAGET with registrations in the United States, Canada and Switzerland. The Respondent registered the disputed domain names <piagetwatch.com> and <piagetwatches.com> on March 9, 2004 without authorization or consent of the Complainant.

The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, according to the Policy, paragraph 4(a)(i) and the Rules, paragraphs 3(b)(viii), (b)(ix)(1). The disputed domain names fully incorporate the name Piaget along with the terms “watch” and “watches”, which are products offered for sale by the Complainant. Oki Data Ams., Inc. v. ASD, Inc., WIPO Case No. D2001-0903 established that a domain name which wholly incorporates a Complainant’s registered mark is sufficient to state that identity or confusing similarity is present, despite the addition of other words. This is also established according to F. Hoffmann-La Roche AG v. Private Whois cheapvalium24.com, WIPO Case No. D2012-0089 and Hermès International v. Private Whois Service, WIPO Case No. D2012-0264. The Respondent has not obtained any kind of permission from the Complainant to own or use any domain names which are confusingly similar to those of Piaget.

The Respondent has no rights or legitimate interests in respect of the disputed domain names according to the Policy, paragraph 4(a)(ii); and the Rules, paragraph 3(b)(ix)(2). The Respondent, Turvill Consultants, has never been known by the PIAGET Marks and has never used any trademark or service mark in any other way except for this infringement. See Harry Winston, Inc. and Harry Winston, S.A. v.h, WIPO Case No. D2008-1266 and Alstom v. Yulei, WIPO Case No. D2007-0424. The Respondent is using the disputed domain names as pay-per-click advertisement websites that includes a search engine and advertise links to the products of the Complainant’s competitors and/or counterfeit products, which is not a bona fide or legitimate use.

The disputed domain names were registered and are being used in bad faith according to the Policy, paragraphs 4(a)(iii), 4(b); the Rules, paragraph 3(b)(ix)(3). The Respondent registered the disputed domain names with either actual or constructive knowledge of the Complainant’s rights since PIAGET is a registered trademark in Canada, where the Respondent is also located. The Complainant’s trademark is also registered in the United States, where the Respondent’s websites are targeted. The Respondent is also using the websites to sell products similar to those of the Complainant, which also means that the Respondent’s products for sale are in competition with those offered under the Complainant’s mark. The Respondent has registered the disputed domain names to gain goodwill from the Complainant’s mark. Even if the Respondent was not aware that PIAGET is a registered trademark, a trademark search on the Internet would have provided this information. Thus, the disputed domain names were registered and are being used in bad faith which is also established in Exxon Mobil Corp. v. Fisher, WIPO Case No. D2000-1412, Nokia Corp. v. Private, WIPO Case No. D2000-1271, S.A.S. Jean Cassegrain v. Yeon-Gu Kim, WIPO Case No. D2005-0275, Paul Barnett Puckett, Individually and d/b/a Nature’s Window v. Christopher D. Miller, WIPO Case No. D2000-0297, and Charles Jorden Holding AG v. AAIM, WIPO Case No. D2000-0403.

B. Respondent

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

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have trademark rights in the mark PIAGET as trademark registrations have been provided.

The disputed domain names are <piagetwatch.com> and <piagetwatches.com> and therefore contain the entire word “Piaget”, which is the Complainant’s registered trademark. The fact that the disputed domain names also contain generic elements, as in this case “watch” and “watches”, shall be disregarded when determining whether a domain name and is identical or confusingly similar to a trademark. In this case especially, since the Complainant also sells watches which makes the disputed domain names even more confusingly similar to the Complainant’s trademark. The Panel therefore finds that the disputed domain names <piagetwatch.com> and <piagetwatches.com> are confusingly similar to the Complainant’s registered trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has not consented to, licensed, or otherwise authorized the Respondent to use or register the disputed domain names and sell similar products as those of Piaget. The Respondent is using the

disputed domain names as pay-per-click advertisement websites that include a search engine and advertise links to the products of the Complainant’s competitors and/or allegedly counterfeit products, which is not a bona fide or legitimate use.

According to the above mentioned, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names and the Complainant has therefore met the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant’s trademark PIAGET is well-known, and further that it is highly unlikely that the Respondent, by mere accident, would have registered the disputed domain names. As the websites to which the sponsored links on the disputed domain names lead sell products similar to those of the Complainant also denounces that the Respondent cannot have registered the disputed domain names completely unaware of the PIAGET trademark. The Respondent’s products for sale are also in competition with those offered under the Complainant’s mark which indicates that the Respondent has registered the disputed domain names to gain goodwill from the Complainant’s mark. Accordingly, in the Panel’s assessment the Respondent must have chosen the disputed domain names deliberately to benefit from the Complainant’s goodwill and reputation in order to gain commercial benefit, which the Panel concludes is evidence of bad faith registration and use pursuant to the Policy, paragraph 4(b)(iv).

The Panel thus finds that the Complainant has fulfilled the requirement under paragraph 4(a)(iii) of 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 names <piagetwatch.com> and <piagetwatches.com> be transferred to the Complainant.

Anders Janson
Sole Panelist
Date: July 22, 2014