The Complainant is Van Cleef & Arpels, S.A., Geneva, Switzerland, represented by Jeffrey Martin, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Registrant of vancleefalhambra.com, luominghua, Yantai, China.
The disputed domain name <vancleefalhambra.com> is registered with Xin Net Technology Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2016. On June 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 22, 2016. 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.
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in the agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The language of the Registration Agreement as used by the Respondent is Chinese. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. If the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed. What is more, although the language of the Registration Agreement is Chinese and the Respondent is located in China, the Respondent’s conduct suggests that the Respondent understands English. The disputed domain name resolves to a website available in the English language and which targets English-speaking consumers in the United Kingdom. The Panel determines that the language of the proceeding should be English.
The Complainant is a designer, manufacturer and seller of luxury watches, jewelry and perfume, founded in Paris, France by its predecessors-in-interest Alfred van Cleef and Salomen Arpels in 1896. The company opened its first boutiques in 1906 in France. Since that time, the Complainant and its predecessors-in-interest have used the VAN CLEEF and ALHAMBRA trademarks in connection with the design, manufacture and sale of fine jewelry. It has since expanded its business to include luxury watches and fragrances. The Complainant sells its watches, jewelry and fragrances around the world, with a network of over 125 boutiques and carefully selected authorized retailers in Asia, Europe, North America and South America. The Complainant operates its website featuring information about its activities and luxury products at “www.vancleefarpels.com”.
The Complainant is the owner of the VAN CLEEF and ALHAMBRA trademarks. The Complainant owns trademark registrations around the world for its marks, including International Registration No. 539697 of June 8, 1989, designated in Switzerland, Germany, Italy, and Spain, among other countries; United Kingdom Registration No. 1532650 of April 16, 1993; and International Registration No. 607364 of September 13, 1993, designating China, all for the mark VAN CLEEF. The Complainant also owns International Registration No. 940168 of July 30, 2006, designating the European Community and China; Germany Registration Nos. 302008046070 and 301448800; Italy Registration No. 1459049; United Kingdom Registration No. 2277018; and Switzerland Registration No. 559621, all for the mark ALHAMBRA.
The Respondent registered the disputed domain name on April 25, 2016. The disputed domain name resolves to a website advertising and selling jewelry. It advertises “Van Cleef and Arpels Replica” jewelry and various “Cheap Fake Sweet Alhambra” and “Cheap Fake Vintage Alhambra” jewelry. The website is available in English, French, German and Italian language translations.
The Complainant is the owner of the VAN CLEEF and ALHAMBRA marks for use with luxury jewelry, watches and perfume. The Complainant states that due to the extensive use and registration of the VAN CLEEF and ALHAMBRA marks around the world, these marks have become famous.
The disputed domain name is confusingly similar to the VAN CLEEF and ALHAMBRA marks because it fully incorporates these marks. The full incorporation of both marks does not render the disputed domain name any less confusingly similar to the marks for purposes of the confusingly similar analysis. See Giorgio Armand S.p.A. Milan Swiss Branch Medrisio v. Mage Enterprises Inc., WIPO Case No. D2011-1172 (finding that the inclusion of two trademarks of the complainant in the disputed domain name <armaniacquadigio>—ARMANI and AQUA DI GIO—did not distinguish the mark from those trademarks).
The Respondent lacks rights or legitimate interest in the disputed domain name. The Respondent has never been commonly known by either the VAN CLEEF mark or the ALHAMBRA mark or any variations of them. Nor has the Respondent ever used a trademark or service mark similar to the disputed domain name by which it may have become to be known, other than the infringing activity described in the Complaint. The Respondent does not appear to have registered a business incorporating the VAN CLEEF or ALHAMBRA marks or any variation of them.
The Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a protected noncommercial or fair use of the disputed domain name. Instead, the Respondent is using the disputed domain name to publish a website offering services and goods that compete directly with the Complainant’s services and goods and which could be confused with those offered by the Complainant. Moreover, the disputed domain name appears to provide services directed to facilitating the purchase of goods which may be counterfeit products. Such is not a bona fide or legitimate business use. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324.
Furthermore, the Complainant has not granted the Respondent any license, permission or authorization by which the Respondent could own or use any domain name registrations which are confusingly similar to the VAN CLEEF and ALHAMBRA marks. See Roku, Inc. v. It’s So Easy Pty Ltd. / Sharyn Webber, WIPO Case No. DAU2013-0004.
The disputed domain name was registered and is being used in bad faith. The Respondent registered the disputed domain name with either actual or constructive knowledge of the Complainant’s rights in the VAN CLEEF and ALHAMBRA marks by virtue of the Complainant’s prior trademark registrations in Italy, Spain, Germany and the United Kingdom, where the Respondent’s website is directed, in China, where the Respondent is a resident, and in Switzerland, where the Complainant is located. Registration of a confusingly similar domain name despite such actual or constructive knowledge, without more, evidences bad faith registration within the meaning of Paragraph 4(a) of the Policy. See Compagnie Générale des Establissements Michelin v. Thomas Panagiotopoulos, WIPO Case No. DAU2013-0011; L’Oreal / L’Oreal Australia Pty v. Namewise Pty Ltd. / Nicholas Bolton, WIPO Case No. DAU2013-0009.
The disputed domain name is being used to publish a website offering for sale products competing with those of the Complainant and which appear to be counterfeit knockoffs of the Complainant’s products. These activities fall squarely into the example of bad faith registration and use found in paragraph 4(b)(iv) of the Policy. See Nokia Corp. v. Private, WIPO Case No. D2000-1271 (finding bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
There is no reason for the Respondent to have registered the disputed domain name except to trade off of the reputation and goodwill of the Complainant’s marks. The nature of the disputed domain name itself evidences bad faith registration and use. See Charles Jorden Holding AG v. AAIM, WIPO Case No. D2000-0403 (the disputed domain name was “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”).
Finally, even if the Respondent was somehow unaware of the Complainant’s rights in the VAN CLEEF and ALHAMBRA marks, had the Respondent conducted even a preliminary trademark search, the Respondent would have found the Complainant’s various trademark registrations, the websites associated with the marks, and numerous additional references in commerce, on the Internet, and in publications, evidencing the Complainant’s use of its marks in connection with the Complainant’s goods and services. See Montblanc-Simplo G.m.b.H. v. zhu lanxin / PrivacyProtect.org, WIPO Case No. D2013-0910 (finding that “an ordinary preliminary trademark search would have revealed the Complainant’s various trademark registrations in the MONTBLANC marks and the websites associated with the Complainant’s marks,” and that, accordingly, “the registration of a confusingly similar domain name despite actual or constructive knowledge without more is clear evidence of bad faith registration within the meaning of the Policy”).
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in Paragraph 4(a):
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has met this burden.
The Complainant has rights in the VAN CLEEF and ALHAMBRA marks. The Complainant has established that it is the registered owner of several trademark registrations for the VAN CLEEF and ALHAMBRA marks, registered well before the registration of the disputed domain name. The Panel accepts that the Complainant’s VAN CLEEF and ALHAMBRA marks are widely known.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The threshold question for confusing similarity under the UDRP involves the comparison between the trademark and the domain name itself to determine the likelihood of Internet user confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The disputed domain name consists of the words “Van Cleef” and “Alhambra” — identical to the Complainant’s VAN CLEEF and ALHALBRA marks, respectively. The combination of two trademarks owned by the Complainant within a single domain name does not make the disputed domain name any less confusingly similar to the Complainant’s marks. See Giorgio Armand S.p.A. Milan Swiss Branch Medrisio v. Mage Enterprises Inc., supra. “Combining both Trademarks suggests a specialized website concerning [the Alhambra] product[s] of [the Complainant], which supports the confusing similarity between the Complainant’s Trademarks and the disputed domain name.” See Id.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use the VAN CLEEF or ALHAMBRA trademarks or to register any domain name incorporating those trademarks. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to publish a website offering services and goods that compete directly with the Complainant’s services and goods and which could be confused with those offered by the Complainant. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Moreover, the disputed domain name resolves to a website advertises what it calls “replicas” and “fakes” of the Complainant’s jewelry. There can be no legitimate interest in the sale of counterfeit goods. See, e.g., Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058.
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service on such website or location.
The present case fits clearly within the situation described in paragraph 4(b)(iv) of the Policy. The Panel finds that the Respondent was undoubtedly aware of the Complainant and its trademarks at the time of registration of the disputed domain name. The Respondent must have had the Complainant’s trademarks in mind when the Respondent registered the disputed domain name, as evidenced by the Respondent’s use of the disputed domain name to sell replicas of the Complainant’s jewelry designs. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. The Panel finds that the Respondent’s registration of the disputed domain name incorporating the Complainant’s marks, being fully aware of the Complainant’s rights in the marks, without any rights or legitimate interests in doing so is registration in bad faith.
The Respondent uses the disputed domain name to direct Internet users to a website advertising and selling what the website itself admits are counterfeit goods. “The use of the disputed domain name for an online [retail] site on which the Respondent sells . . . counterfeit products . . . clearly indicates that the Respondent’s primary intent was to redirect Internet users to [the Respondent’s] website and thus capitalizing on the goodwill of the Complainant’s trademark[s].” See Sanofi-aventis v. Igor Peklov, WIPO Case No. D2008-1419; see also Chrome Hearts LLC v. James Hart, WIPO Case No. DCC2011-0005 (“The fact that counterfeit goods are being sold through this medium indicates that the disputed domain name is being used in bad faith.”). These activities amount to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy.
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 name, <vancleefalhambra.com>, be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: August 5, 2016