WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Richemont International AG, Montblanc-Simplo Gmbh, Officine Panerai AG, and Cartier International AG v. Zhang Jie (张杰), shang hai heng shi da zhong biao xiao shou you xian gong si (上海亨时达钟表销售有限公司)

Case No. D2020-1505

1. The Parties

The Complainants are Richemont International AG, Montblanc-Simplo Gmbh, Officine Panerai AG, and Cartier International AG (collectively the “Complainants”), Germany, represented by SILKA AB, Sweden.

The Respondent is Zhang Jie (张杰), shang hai heng shi da zhong biao xiao shou you xian gong si (上海亨时达钟表销售有限公司), China.

2. The Domain Names and Registrar

The disputed domain names <cartier-swatch.com>, <iwc-swatch.com>, <montblanc-swatch.com>, <panerai-swatch.com>, <piaget-swatch.com>, and <vacheron-swatch.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2020. On June 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amendments to the Complaint on June 11, 2020.

On June 11, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On June 11, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendments to 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 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on July 20, 2020. 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 Complainants Richemont International AG, Montblanc-Simplo Gmbh, Officine Panerai AG, and Cartier International AG are all related entities and form part of the Richemont group (the “Complainant’s Group”). The Complainant’s Group owns several brands in the luxury industry including Cartier, IWC Schaffhausen, Panerai, Piaget, Vacheron Constantin and Montblanc. The Complainant’s Group was founded in 1988 and is now operating in 36 locations globally. 38 percent of these locations are in Asia Pacific. Its business consists of jewellery maisons, specialist watchmakers, online distributors, and other related businesses.

The Complainant owns a portfolio of trademark registrations (word marks and device marks) for IWC, PIAGET, VACHERON CONSTANTIN, MONTBLANC, PANERAI and CARTIER, for instance, the International trademark registrations number 1144973 for IWC registered on November 16, 2012, number 1144971 for PIAGET registered on November 15, 2012, number 573086 forVACHERON CONSTANTIN device mark registered on June 12, 1991, number 710391 for MONTBLANC registered on March 3, 1999, number 786771A for PANERAI registered on July 22, 2002, number 1149966 for CARTIER registered on November 27, 2012. All of the above registrations designate China.

The Complainant’s Group also owns several domain names containing VACHERON, MONTBLANC, PANERAI, CARTIER, PIAGET, and IWC, for example, <vacheron.com> created on January 24, 2001, <panerai.com> created on September 10, 1997, <cartier.com> created on April 6, 1995, <piaget.com> created on March 31, 1997, and <montblanc.com> created on June 1, 1995.

The disputed domain names <vacheron-swatch.com>, <cartier-swatch.com>, <piaget-swatch.com>, and <iwc-swatch.com> were registered on July 14, 2018, while the disputed domain names <montblanc-swatch.com> and <panerai-swatch.com> were registered on August 20, 2018. All of the disputed domain names direct to active websites that provide watch repair and maintenance services on the Complainants’ jewelry and explicitly display the Complainants’ trademarks.

5. Parties’ Contentions

A. Complainant

The Complainants essentially contend that the disputed domain names are confusingly similar to their trademarks for IWC, PIAGET, VACHERON CONSTANTIN, MONTBLANC, PANERAI, and CARTIER respectively, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.

The Complainants’ request the transfer of the disputed domain names.

B. Respondents

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 First Preliminary Issue: Consolidation as to the Complainant

The Complainants in this administrative proceeding are related entities Richemont International AG, Montblanc-Simplo Gmbh, Officine Panerai AG, and Cartier International AG. On the subject of consolidation, section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) states: “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.”

The Panel rules that the legal relationships of the four Complainant entities demonstrate they have a specific common grievance in this case. This is also consistent with previous domain name decisions under the Policy, see for instance Mozilla Foundation, Mozilla Corporation v. WhoisGuard Protected / isha chaudhary, Domains By Proxy, LLC / Anand Soni, WIPO Case No. D2018-2814. Further, by registering the disputed domain names with the same pattern of adding the “-swatch” to each of the Complaints’ trademarks, and using the disputed domain names to direct the consumers to misleading active websites, the Respondent has engaged in common conduct that has affected the Complainants in a similar fashion. Moreover, the Panel considers that the requested consolidation would, especially in absence of an objection from the Respondent, be equitable and procedurally efficient in this case. The Panel therefore allows the consolidation as to the Complainants. The Complainants are hereinafter referred to as the “Complainant”.

6.2. Second Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Registration Agreement is in Chinese. On June 11, 2020, the Center notified the Complainant that the language of the Registration Agreement is Chinese. The Complainant confirmed its request that the language of the proceeding be English on the same day. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the fact that the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); and the fact that Chinese as the language of proceeding could lead to unwarranted delay and costs for the Complainant. This is especially true with the current international pandemic environment, there is a public risk for further delayed consideration of the current case. In view of all these elements, the Panel rules that the language of proceeding shall be English.

6.3. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain names are identical or confusingly similar to a 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.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the marks IWC, PIAGET, VACHERON CONSTANTIN, MONTBLANC, PANERAI, and CARTIER, based on its intensive use and registration of the same as trademarks.

Moreover, as to confusing similarity, for the disputed domain names <cartier-swatch.com>, <iwc-swatch.com>, <montblanc-swatch.com>, <panerai-swatch.com> and <piaget-swatch.com>, they consist, each time, of one of the Complainant’s trademarks; and the disputed domain name <vacheron-swatch.com> consists of the dominant part (i.e., VACHERON) of its trademark; in all of the disputed domain names, the Complainant’s trademarks or the dominant part of its trademark are followed by the “-swatch” part, which forms the same pattern. The applicable Top-Level Domains (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview 3.0, section 1.11.1. Moreover, according to the WIPO Overview 3.0, section 1.7, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662). SWATCH is also a famous watch brand owned by a third party, but the adding of “-swatch” part does not negate the finding of confusing similarity between the disputed domain names and the Complainant’s trademarks.

The Panel concludes that the disputed domain names contain, each time, the entirety of the Complainant’s trademarks, or a dominant feature (i.e., VACHERON) of the Complainant’s trademark is recognizable in the disputed domain names. Accordingly, the Panel rules that the disputed domain names are all confusingly similar to the Complainant’s trademarks, and the Complainant has satisfied the requirements for the first element under the Policy.

B. Rights or Legitimate Interests

Based on the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1).

However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, the Panel notes that the disputed domain names direct to active websites that provide watch repair and maintenance services on the Complainant’s jewelry and explicitly display the Complainant’s trademarks. This shows the Respondent’s intention to misleadingly divert consumers most likely for its own commercial gain to its websites linked to the disputed domain names, by taking unfair advantage of the goodwill and reputation of the Complainant’s well-known trademarks.

Furthermore, the Panel notes that the nature of the disputed domain names, being confusingly similar to the Complainant’s trademarks, carry a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain names.

Based on the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain names was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain names. Given the fame of the Complainant’s trademarks, including in the Respondent’s home jurisdiction China, the Panel holds that the registration of the disputed domain names, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith.

Moreover, even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant owned registered trademarks in IWC, PIAGET, VACHERON CONSTANTIN, MONTBLANC, PANERAI, and CARTIER, and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain names.

As to use of the disputed domain names in bad faith, the disputed domain names are resolved to active websites that provide watch repair and maintenance services on the Complainant’s jewelry and explicitly display the Complainant’s trademarks. This indicates the Respondent’s clear bad faith in freeriding the Complainant’s trademarks and reputation to attract Internet users most likely for the Respondent’s commercial gain.

The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain names to the Complainant’s trademarks, the high degree of distinctiveness and fame of the Complainant’s trademarks, the relativeness between the Respondent’s watch repair and maintenance service and the Complainant’s famous watch products, and the Respondent’s unauthorized use on the websites of the Complainant’s trademarks. Based on the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain names in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <cartier-swatch.com>, <iwc-swatch.com>, <montblanc-swatch.com>, <panerai-swatch.com>, <piaget-swatch.com>, and <vacheron-swatch.com> be transferred to the Complainant.

This transfer order is without prejudice to any rights, which may be asserted by the owner of the SWATCH trademark.

Deanna Wong Wai Man
Sole Panelist
Date: July 31, 2020