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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chrono 24 GmbH v. Francesco Di Bitetto

Case No. D2018-2924

1. The Parties

The Complainant is Chrono 24 GmbH of Karlsruhe, Germany, represented by Nachtwey IP, Germany.

The Respondent is Francesco Di Bitetto of Milan, Italy.

2. The Domain Name and Registrar

The disputed domain name <oldchrono24.com> (the “Domain Name”) is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 27, 2018, the Registrar 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 the Complainant on January 2, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 6, 2019.

The Center verified that the Complaint together with the amended 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 January 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2019.

The Center appointed Ian Lowe as the sole panelist in this matter on February 6, 2019. 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.

At the request of the parties, the proceeding was suspended on February 11, 2019 by Administrative Panel Procedural Order No. 1. The proceeding was reinstituted by Administrative Panel Procedural Order No. 2 dated April 8, 2019.

4. Factual Background

The Complainant operates a global online marketplace for luxury watches at “www.chrono24.com”. It was established in 2003 and its website is now used by more than 10,000 professional dealers and private sellers from over 90 countries. The website has over 14 million monthly visits, including more than 1.8 million from Italian Internet users.

The Complainant is the registered proprietor of European Union trademark number 9027038 CHRONO24 registered on December 9, 2010 and International trademark number 11197202 CHRONO24 registered on September 29, 2011, designating a number of territories including Australia, Switzerland and the United States of America.

The Domain Name was registered on June 14, 2017. It does not currently resolve to an active website. At the time of preparation of the Complaint, it resolved to a website offering second-hand luxury watches for sale and describing itself as an “International portal for collectors’ watches ads”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its CHRONO24 trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in its CHRONO24 trademark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the mark over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the CHRONO24 trademark together with the word “old”. In the Panel’s view, the addition of this dictionary term does not detract from the confusing similarity between the Domain Name and the Complainant’s trademark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. There is no suggestion that the Respondent has ever been known by the Domain Name. The Complainant has not authorized the Respondent to use its CHRONO24 trademark and, in the Panel’s view, the only credible reason for the adoption of the Domain Name by the Respondent was to take advantage of the Complainant’s trademark rights. The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In these circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In view of the nature of the Domain Name, identical save for the addition of “old” to an unusual trademark, and the use to which the Domain Name has been put, namely to sell goods identical to those available from the Complainant’s website, the Panel is in no doubt that the Respondent had the Complainant and its rights in its CHRONO24 mark in mind when it registered the Domain Name. The Panel further acknowledges the legitimate inference that the Respondent is deriving commercial gain from using the Domain Name for a website comprising a portal for the sale of second-hand watches by confusing Internet users into believing that the Domain Name is authorized or controlled by the Complainant. In the Panel’s view, this amounts to paradigm bad faith registration and use for the purposes of paragraph 4(a) of the Policy. The Panel accordingly finds that the Domain Name was registered and is being used in bad faith.

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 Domain Name <oldchrono24.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: April 18, 2019

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