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Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
TAG HEUER S.A. v. JBlumers Inc./Jerald Blume
Case No. D2004-0871
1. The Parties
The Complainant is TAG HEUER S.A., Marin, Switzerland, represented by LVMH, France.
The Respondent is JBlumers Inc./Jerald Blume, Brussels, Louisalaan, Belgium.
2. The Domain Names and Registrar
The disputed domain names <faketagheuer.com>, <replicatagheuer.com>
and <tagheuerreplicas.com> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2004. On October 25, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On October 25, 2004, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 October 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2004.
The Center appointed Wolter Wefers Bettink as the
sole panelist in this matter on November 25, 2004. 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 owns a watch company identified by the trademark TAG HEUER.
The Complainant owns several TAG HEUER trademark registrations, inter alia, IR 689200, registered on March 24, 1998 and IR 499995, registered on January 13, 1986. Both trademarks are registered for countries all over the world. The Complainant also owns several United States TAG HEUER trademarks (inter alia 2,281,436, registered on September 28, 1999 and 1,471,988, registered on January 12, 1988).
Furthermore, the Complainant owns the domain names <tagheuer.com>, registered on July 12, 1995, <tagheuer.de>, registered on a date that is unknown to the Panel, but at least since June 16, 2004 (which is the date of the “letzte Aktualiserung”), <tagheuer.co.uk>, registered on October 23, 1996, <tagheuer.ch>, registered on December 31, 1995, <tagheuer.es>, registered on August 25, 1998, and <tagheuer.hk>, registered on March 16, 2004. All these domain names point to the website “www.tagheuer.com”.
The Respondent registered the domain names <faketagheuer.com>, <replicatagheuer.com>
and <tagheuerreplicas.com> on April 12, 2004.
5. Parties’ Contentions
The Complainant states that the domain names of the Respondent are confusingly similar to the TAG HEUER trademarks of the Complainant. The inclusion of the word “fake”, “replicas” or “replica” reinforces the connection in the public mind between the word “TAG Heuer” and the Complainant. The mere addition of these terms does not change the overall impression of the designation as being domain names connected to the Complainant. Since not all Internet users speak English as their mother tongue, it is not obvious, according to the Complainant, that the registrations would be recognized as addresses plainly dissociated from the Complainant. The addition of the generic top level domain “.com” to the domain names is completely without legal significance.
The Complainant further states that the Respondent does not have any rights or legitimate interests in the domain names.
The Respondent is in no way affiliated with the Complainant, and the Respondent has never sought or obtained the consent of the Complainant to register the domain names with any registrar. The Respondent is not a licensee or otherwise permitted to use the Complainant’s trademarks. According to Complainant, these circumstances show that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent further does not use the domain names as part of its legal name, corporate name, or upon information and belief of the Complainant, any commonly-known identifier.
The Complainant further states that the domain names <replicatagheuer.com> and <tagheuerreplicas.com> are not currently used.
The Complainant considers that the choice of the domain names themselves proves the bad faith of the Respondent. The Respondent was inevitably aware of the notoriety of the Complainant’s trademark when he registered the disputed domain name on April 12, 2004. TAG HEUER is a well-known trademark in Europe and all over the world since more than one century. In adding the words “fake”, “replica” and “replicas”, the Respondent has clearly indicated his intentions. The Complainant further states that the Respondent registered the domain names in order to unfairly benefit from the Complainant’s notoriety.
According to the Complainant, the bad faith appears more clearly for the <faketagheuer.com> domain name registration. This domain name links directly and immediately to “www.thehottestnews.com”. This website offers for sale, inter alia, replicas of TAG Heuer watches.
The other domain names, <replicatagheuer.com> and <tagheuerreplicas.com>, are not currently used. According to the Complainant, this is not relevant because passive use of a domain name is sufficient proof of the Respondent’s bad faith. It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
Another element that the Complainant states to be important is that the Complainant sent a registered letter and e-mail on May 4, 2004, in order to obtain in an amicable way, the transfer of the domain names. The letter was delivered on May 10, 2004, but the Respondent was missing and the letter was sent back to its sender. Further, no reply was given to the e-mail.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are
confusingly similar to the Complainant’s trademarks TAG HEUER. All of
the contested domain names fully incorporate the trademark TAG HEUER, which
is a distinctive mark. Numerous UDRP decisions have recognized that incorporating
a trademark in its entirety can be sufficient to establish that a domain name
is identical or confusingly similar to a registered trademark (See Koninklijke
Philips Electronics N.V. v. Selling Domains Best, WIPO
Case D2002-1041, Direct Line Group Ltd., Direct Line Insurance plc, Direct
Line United Trusts Ltd., Direct Line Group Services Ltd. v. Purge I.T., Purge
I.T., Ltd, WIPO Case D2000-0583, Aventis
Pharmaceuticals Incl. Aventis Pharma SA v. Goldie Fishero, WIPO
Case D2004-0094, Philip Morris Incorporated v. Alex Tsypkin, WIPO
D2002-0946). The words “fake” and “replica(s)” are
merely descriptive and non-distinctive. The striking element in the domain names
is “TAG Heuer”. The inclusion of the non-distinctive elements serves
only to reinforce the connection in the public mind between the trademark TAG
HEUER and the Complainant. The “.com” designation is inconsequential.
Accordingly, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s TAG HEUER trademarks.
B. Rights or Legitimate Interests
Respondent is in default in this proceeding and has chosen not to show any rights or legitimate interests in the disputed domain names as allowed by the Policy under Paragraphs 4(c)(i)-(iii). This might be difficult in any case, since the use of a domain name for a website offering fake watches (see C below) cannot be regarded as a bona fide offering of goods. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
TAG HEUER is a well-known trademark for expensive and exclusive watches. The Respondent registered three domain names with the element “Tag Heuer”. Therefore, the Panel assumes that the Respondent was well aware of the notoriety of the trademark at the time of registering its domain names.
The website “www.faketagheuer.com” automatically links the visitor to the website “www.thehottestnews.com”. On this website fake watches of several well-known trademarks (such as CARTIER and ROLEX) are sold. On this website, a hyperlink is active which directs the visitor to the website “www.deluxefashion.com”. On this website one can order fake TAG Heuer watches which are considerably cheaper than the original TAG Heuer watches of the Complainant. As the sale of fake watches (certainly for low prices) may cause considerable damage to the trademark rights and legitimate business interests of Complainant, the Panel finds that the Respondent has registered the domain name <faketagheuer.com> for the purpose of disrupting the business of TAG Heuer.
The other domain names (<tagheuerreplicas.com> and <replicatagheuer.com>) are not currently linked to a website. In the absence of any explanation submitted by the Respondent, the Panel assumes that these domain names have been registered for the same or a similar purpose as the domain name <faketagheuer.com>.
Based on these arguments, the Panel finds that the
domain names have been registered and are being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <faketagheuer.com>, <tagheuerreplicas.com> and <replicatagheuer.com> be transferred to the Complainant.
Wolter Wefers Bettink
Dated: December 9, 2004