LVMH SWISS MANUFACTURES SA v. GiftSMS et al.
Claim Number: FA1509001637103
The Complainant/Appellee is LVMH SWISS MANUFACTURES SA of La Chaux-de-Fonds, Switzerland represented by DOMAINOO of Paris, France (“Complainant”). The Respondent is John Stuckey, GiftSMS of Maudsland, Australia (“Respondent”).
REGISTRIES and REGISTRARS
Registries: Dash Park, LLC
Registrars: united-domains AG
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Appeal Panelists in this proceeding.
Jonathan Agmon, as Appeal Panelist (Chair).
Ahmet Akguloglu, as Appeal Panelist.
Petter Rindforth, as Appeal Panelist.
The Complaint was filed with the National Arbitration Forum (the “Forum”) on September 11, 2015 and proceedings commenced on the same day. A Response was filed by the Respondent on October 1, 2015. A decision was issued by the Examiner on October 7, 2015. The Complainant submitted with the Forum an Appeal on October 21, 2015. The Respondent submitted with the Forum a reply on November 3, 2015.
Having reviewed the communications records, the Examiners finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Appellant seeks reversal of the Examiner's Final Determination that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
URS Procedure 12.1 provides that each party shall have the right to seek a de novo appeal of the Determination based on the existing record within the URS proceedings. The appellant must identify the specific grounds on which the party is appealing.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name is identical or confusingly
similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and
that is in current use; or (ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the
URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name was registered and is being used in bad
faith. A non-exclusive list of circumstances that demonstrate bad faith registration and use by the Registrant include:
a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the
trademark holder or service mark from reflecting the mark in a corresponding
domain name, provided that Registrant has engaged in a pattern of such
conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web site or other on-line
location, by creating a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of Registrant’s web
site or location or of a product or service on that web site or location.
Appellant grounds of appeal are as follows:
1. The Respondent admits he knew the TAG HEUER brand before registering the disputed domain name.
2. TAG HEUER is a well-known brand worldwide, including Australia where the Respondent is located and contrary to the Respondent’s allegations, the trademark TAG HEUER is also registered in Australia.
3. The Respondent’s contemplated use of the trademark TAG HEUER and of email addresses based on the domain name <tagheuer.digital> is illegitimate as it will create confusion among the Respondent’s GiftGURU marketplace users as to the Complainant’s purported source, sponsorship, affiliation or endorsement of the Respondent’s GiftGURU marketplace and emails using <tagheuer.digital> address.
4. Passive holding of a domain name for the purpose of contemplated illegitimate active use of a domain name being (e.g constituting a passing-off infringement) is consistently held to be evidence of bad faith registration.
5. The Respondent should not be given the false impression that they can legitimately register domain names under the form [trademark.digital] for use on their GiftGURU platform in an attempt to attract for commercial gain Internet users to this platform by creating a likelihood of confusion with the trademark as to the sponsorship, affiliation or endorsement of the platform services.
6. The Respondent has tried to intimidate the Complainant, which only legitimate concern is to protect its trademark rights and avoid being associated with third party business it does not endorse by through filing the disputed domain name <tagheuer.sucks> and threatening the Complainant to “go negative” in case if adverse decision.
7. The Respondent’s behavior of trying to force the Complainant into granting use of its trademark in a domain name for the purpose of a business it has not endorsed is an additional evidence of the Respondent’s bad faith;
8. The Respondent has also tried to settle the case with the Complainant, requesting “a signed release from Tag Heuer recognizing our legitimate right to the <tagheuer.digital> in accordance with the findings of the URS and withdrawing any further action and or rights of appeal in any form of jurisdiction” in exchange for the transfer of the domain names <tagheuer.digital> and <tagheuer.sucks> for their registration price. The Complainant contends this is not an acceptable offer since the contemplated systematic use of a [tademark.digital] domain names is not legitimate and the Complainant does not agree to endorse such an infringement of trademark owner’s intellectual property rights.
Respondent reply arguments to the appeal are as follows:
1. The Respondent attempt to resolve the matter through offering the disputed domain name to the Complainant is a sign of good faith.
2. The Respondent registered and intends to use the domain name in good faith.
3. The Respondent should be allowed to use [trademark.digital] gTLD for security and trust in the market place.
4. The Complainant failed to register the disputed domain name during the sunrise period and therefore should not be allowed to bully the Respondent through its financial might.
5. The Respondent repeats its assertions filed in the Response before the URS Examiner.
FINDINGS OF FACT BY THE PANEL
The facts in this case are not in dispute and there is no genuine issue of material fact. (URS 8.1.3).
TAG Heuer, a branch of the Complainant, owns the international word trademark TAG HEUER n°689 200 duly registered since March, 24th, 1998 and also registered with the Trademark Clearing House.
TAG Heuer is also the registrant of various domain names composed of the trademark TAG HEUER, such as tagheuer.com, tagheuer.fr, tagheuer.org or tagheuer.eu, which it uses for websites promoting its luxurious watch-making
business all over the world.
The disputed domain name does not result to an active website.
The Respondent operates a business under the domain name <gift.digital> in Australia. The Respondent is offering mobile MMS digital gift card product which is delivered as a picture to the user’s smart phone. The digital gift card can be adapted to the brand of the merchant.
The Respondent intends to use the disputed domain name under its Gift Guru digital gifting and coupon marketplace to offer its digital gift card services. The Respondent intends to manage transactions for brand owners through the use of a nominated .digital domain name. The Respondent intends to make the digital gift card more credible by offering its products through a recognizable unimpeachable manner, i.e. the brand owner’s trademark under the .digital gTLD.
The Respondent registered the disputed domain name with knowledge of the Complainant’s trademark.
PRELIMINARY ARGUMENTS
Appellant filed new evidence with the appeal submissions. Respondent requested the Panel to ignore such new evidence. Indeed, URS 12.2 provides that “[a] limited right to introduce new admissible evidence that is material to the Determination [to] be allowed upon payment of an additional fee, provided the evidence clearly pre-dates the filing of the Complaint.”
Appellant failed to provide evidence that clearly pre-dates the filing of the Complaint. URS proceedings were designed to be substantially limited in scope. See for example Rule 5.4. The URS Appeal process should also be limited in scope. Any new evidence must also be material to the determination in the case. Complainant did not argue why the additional evidence is material and under the circumstances of this specific case we deny the filing of new evidence and rely on the evidence filed within the URS Proceedings.
LEGAL FINDINGS AND CONCLUSIONS:
Having reviewed the entire submissions from the Appellant and Respondent, and the entire case file in the URS Proceedings, we reviewed de novo the specific grounds of appeal (URS 12.1) and make the following legal findings and conclusions:
GENERAL
URS 12.1 provides that the Appeal Panel shall make a de novo Determination based on the existing record within the URS proceeding.
URS 1.2.6 requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a word mark for which the Complainant holds a valid national registration that is currently in use (URS 1.2.6.1); and
(ii) Respondent has no rights or legitimate interests in respect of the domain name (URS 1.2.6.2); and
(iii) the domain name has been registered and is being used in bad faith (URS 1.2.6.3).
IDENTICAL OR CONFUSINGLY SIMILAR
URS 8.1 requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
URS 8.1.2.1 provides that use can be shown by a declaration, one specimen of current use that was submitted and validated by the Trademark Clearinghouse. Such use provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
Complainant is the owner of trademark registrations for the TAG HEUER mark in various countries (for example International Reg. No. 689200, registered March 24, 1998). The Complainant filed the required evidence of use under URS 8.1.2.1.
Therefore, the Panel concludes that Complainant’s filing, registration and current use of the TAG HEUER mark sufficiently demonstrates that it has rights in the mark under URS 8.1.2. Similarly see Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name <tagheuer.digital> integrates the Complainant’s TAG HEUER trademark in their entirety, as a dominant element. The Respondent merely removed the space in Complainant’s mark and adds the new generic top-level domain (“gTLD”) “.digital.” The Respondent’s omission of spaces and inclusion of a gTLD is inconsequential. See for example, Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The addition of the gTLD “.digital” to the disputed domain name does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has satisfied URS 1.2.6.1 that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant holds a valid a valid national registration and that is in current use.
RIGHTS OR LEGITIMATE INTERESTS
URS 1.2.6.2 provides that the Complainant must show hat the Registrant has no legitimate right or interest to the disputed domain name.
URS 5.7.3 provides that the Response may contain facts showing that the Registrant is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the present case, the Complainant alleged under URS 1.2.6.2 that the Respondent has no legitimate right or interests in respect of the disputed domain name.
As shown above, the Complainant has made a prima facie case by showing clear trademark rights in the disputed domain name and current use in the Complainant’s trademark, and therefore, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name.
The Respondent claimed that the disputed domain name was available for purchase in the commercial market once the sunrise period expired. The Panel disagrees. The Sunrise period provides a priority for trademark owners to register their marks as domain names. See ICANN’s FAQ < https://newgtlds.icann.org/en/about/trademark-clearinghouse/faqs> However, trademark rights are not released or waived as a result of the passage of the Sunrise period or for that matter any other period relating to the registration of domain names. In effect, the Registration Agreement of the Registrar in the instant case provides that “[t]he registrant guarantees that neither the registration of the domain name nor the manner in which it is used infringes the legal rights of any third party or any applicable laws and regulations.” See ¶1 United Domains Registration Agreement. This obligation is not limited to the Sunrise period and will apply to any registration at any time of any domain name registered by United Domains. It is the duty of the Respondent, who is a party to the Registration Agreement, to ensure he complies with this term in the Registration Agreement. Therefore, the passage of the Sunrise period does not prejudice any of the Complainant’s rights to its registered and currently in use trademarks under the URS.
The Respondent further claimed that the disputed domain name would be uses under its Gift Guru digital gifting and coupon marketplace to offer its digital gift card services in a secure manner; that there is nothing to prevent the Complainant from selling the Complainant’s goods under the disputed domain name. The Respondent compared such practice to that of a vendor on Ebay selling a second hand watch made by the Complainant. The Respondent however, does not intend to serve as a reseller of the Complainant, but to “go to market as agents of retailers and brands.”
The Complainant argues that Respondent is not commonly known by the <tagheuer.digital> domain name. The Respondent is known by the marks “Gift Digital” or “Gift Guru”, which is a business operating under the domain name <gift.digital> in Australia, offering mobile MMS digital gift card product which is delivered as a picture to the user’s smart phone. See Respondent’s Evidence Attachments 1 and 2. The Panel notes that the WHOIS information shows that “John Stuckey” of “GIFTSMS” is listed as the registrant of the disputed domain name. The Panel also observes that Respondent fails to provide any additional evidence showing that it is known by the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. Moreover, the Respondent claims that the disputed domain has no commercial benefit to him personally, rather that it intends to use it by selling others (retailers) gift cards and delivering them as MMS messages. Accordingly, the Panel finds that Respondent is not commonly known by the <tagheuer.digital> domain name pursuant to URS 5.7.2.
URS 5.7.2. provides that the Response mat contain any facts to show that the Registrant, before any notice to Registrant of the dispute, Registrant’s use of, or
demonstrable preparations to use, the domain name or a name corresponding
to the domain name in connection with a bona fide offering of goods or
services. In addition, URS 5.7.2 provides that the Response mat contain any facts to show that the Registrant is making a legitimate or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. In the instant case, the Complainant brought evidence to show that the Respondent has not set up any website with the <tagheuer.digital> domain name. The Panel finds that the fact that the Respondent is not making an active use of the disputed domain name, is not a URS 5.7.1 bona fide offering of goods or services or a URS 5.7.2 legitimate or fair use of the disputed domain name. Similarly See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Complaint satisfied URS 1.2.6.2 that the Respondent lacks rights and legitimate interests in the disputed domain name.
REGISTRATION AND USE IN BAD FAITH
URS 1.2.6.3 provides that the Complainant must show that the disputed domain name was registered and is being used in bad faith.
A non-exclusive list of circumstances that demonstrate bad faith registration
and use by the Registrant include:
…
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
…
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
The Complainant contends that Respondent’s contemplated use of the trademark TAG HEUER and of email addresses based on the domain name <tagheuer.digital> is illegitimate and will create confusion among the Respondent’s Gift GURU marketplace users as to Complainant’s purported source, sponsorship, affiliation or endorsement of Respondent’s Gift GURU marketplace and emails using <tagheuer.digital> disputed domain name address.
Respondent contends they “have designed a business model using the value of the .digital. As they are seeking to create a secure environment within the gTLD, and [is] no[t] seeking to mislead or make financial gain through on selling”.
In addition, Respondent contends that “in the gift card space, SPAM, phishing and spoofing are rife. Gift Card titles in email are the most quickly deleted and have the lowest open rates…because primarily most are SPAM… Our company Gift.Digital works in an even more difficult space from the point of view of the receiver of a card, as we deliver a card as a digital MMS image direct to a smart phone, security in our space is key, BUT equally important is user trust – how we communicate with our clients going forward in this space will be very important to us.”
The submissions made by the Respondent leads the Panel to conclude that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the trademark in a corresponding domain name because it states it will not use the disputed domain name for a web site [“GiftDigital will NEVER advertise a web site using this TLD.”]. In addition, the Respondent himself provided that it is part of his business strategy to register other brand names in the form of [trademark.digital] and using those for his business, thus leading to the conclusion that the Respondent has engaged in a pattern of such conduct. Pursuant to URS 1.2.6.3 (b) such conduct demonstrates bad faith registration and use of the disputed domain name.
The Panel also concludes that Respondent’s registered and intends to use the disputed domain name in bad faith in order to lead Internet users to trust Respondent’s Gift GURU marketplace, products, MMS messages or emails as they carry the Complainant’s mark. Such use will cause a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s products with the trademark of the Complainant contrary to URS 1.2.6.3(d).
In view of the fame and notoriety of Complainant's TAG HEUER mark, it is inconceivable that, in this case, the Respondent could have registered the domain name without actual and/or constructive knowledge of Complainant's rights in the TAG HEUER mark. The Respondent admitted as much and therefore cannot enjoy the defense under URS 5.7.1. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complaint satisfied URS 1.2.6.3 that the disputed domain name was registered and is being used in bad faith.
After reviewing the parties’ submissions, the Panel determines that
The Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Panel hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<tagheuer.digital>
The Panel further finds the Complaint was not brought in an abuse of the administrative proceeding or with material falsehoods.
_____________________________
Jonathan Agmon, Appeal Panelist (Chair)
Ahmet AKGULOGLU, as Appeal Panelist
Petter Rindforth, as Appeal Panelist
November 24, 2015
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