Audemars Piguet Holding SA v. Oliver Bisko
Claim Number: FA1601001656382
Complainant is Audemars Piguet Holding SA (“Complainant”), Switzerland. Respondent is Oliver Bisko (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <royaloak.watch>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2016; the Forum received payment on January 14, 2016.
On January 14, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <royaloak.watch> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@royaloak.watch. Also on January 14, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 3, 2016.
On February 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed ROBERT T. PFEUFFER, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the ROYAL OAK mark in connection with its business as a manufacturer of timepieces with the same name. The ROYAL OAK watch was created in 1972 and revolutionized the industry as the first high-end steel watch that was sold in the same price range as watches made from precious metals. Complainant’s rights in the ROYAL OAK mark stem from registration of the mark with the Swiss trademark authority (Reg. No. 256,609 registered December 23, 1971). Respondent’s domain <royaloak.watch> is confusingly similar because the domain is entirely composed of Complainant’s ROYAL OAK mark and the top-level domain (“TLD”) “.watch,” which increases the likelihood of confusion.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the ROYAL OAK mark nor has Respondent been commonly known by the disputed domain name. Further, Respondent’s purported use of the domain name, to create an “art project,” is questionable because Respondent has not used the domain since 2014 and only changed the domain to reflect the “art project” after receiving Complainant’s first letter. Respondent has not made an active use of the domain until contacted by Complainant and thus Respondent’s use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent registered the domain with the intent of selling, renting, or otherwise transferring the domain to Complainant for consideration in excess of out of pocket costs. Respondent has demonstrated a pattern of bad faith registration related to the watch industry as shown by prior adverse UDRP disputes.
B. Respondent
Respondent’s domain is comprised of the generic terms “royal” and “oak,” and the TLD “.watch.” Respondent’s domain is therefore generic and Complainant does not have exclusive use of the terms in any context. Additionally, the TLD “.watch” does not increase confusion because Respondent is using the TLD as a verb meaning to “look at or observe” rather than in connection with timepieces.
Respondent plans to use the domain to create an art project that will commemorate the 365th anniversary of King Charles II hiding in an oak tree (the “royal oak”) after the Battle of Worcester. Respondent did not have any content on the disputed domain because he intended the art project to be a surprise for the British royal family.
Respondent never intended to sell the domain and only offered to exchange the project (including the domain) for one of Complainant’s watches after Complainant approached Respondent about selling the domain.
Findings of Fact
The panel finds that Complainant’s allegations are sustained by a preponderance of the evidence and that:
(1) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(4) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) The domain name has been registered and is being used in bad faith.
Complainant claims to use the ROYAL OAK mark in connection with its business as renowned manufacturer of timepieces. Complainant asserts rights in the ROYAL OAK mark through registration of the mark with the Swiss trademark authority (Reg. No. 256,609 registered December 23, 1971). This panel holds that registration of a mark with a state trademark authority is sufficient evidence to demonstrate a complainant’s rights in a mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant next contends that Respondent’s disputed domain <royaloak.watch> is confusingly similar to the ROYAL OAK mark in which Complainant asserts rights. The disputed domain contains the entire ROYAL OAK mark and adds the TLD “.watch,” which Complainant believes increases confusing similarity. The Panel holds that a TLD related to a mark or a complainant’s business can increase the confusing similarity between a mark and a domain name. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA 1594837 (Nat. Arb. Forum Jan. 22, 2015) (“While the addition of gTLDs are generally considered irrelevant to the confusing similarity analysis, the Panel finds that Respondent’s election of the “.lawyer” and “.attorney” descriptive terms do heighten the likelihood of confusion because Complainant’s MCGUIREWOODS mark is used to promote the services of lawyers and attorneys.”). This Panel thus concludes that Respondent’s domain <royaloak.watch> is confusingly similar to the ROYAL OAK mark in which Complainant claims to have rights.
While Respondent contends that the <royaloak.watch> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel is aware that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has not been authorized to use the ROYAL OAK mark in any manner, nor is there any information to indicate that Respondent has been commonly known by the disputed domain name. WHOIS information shows that Respondent registered the domain using the name, “Oliver Bisko,” which does not resemble the disputed domain. The Panel finds the respondent to not be commonly known by a domain based on WHOIS information and a lack of information to the contrary. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
This Panel finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Although Respondent contends that he intends to use the disputed domain for an art project, the domain appears to have been inactively used up until Respondent received a cease and desist letter from Complainant. Complainant believes that this protracted period of inactive use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Other Panels have seen a respondent’s inactive use of a domain, or use that only took place after notice of a dispute, as not constituting a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel so finds in this case. See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute). This Panel finds that Respondent’s use does not allow for a finding for Respondent having rights or legitimate interests in the domain.
Complainant argues that Respondent registered the domain with the intent of selling, renting, or otherwise transferring the domain to Complainant for consideration in excess of out of pocket costs. Complainant believes that Respondent’s bad faith intent to sell is evident from offering to transfer the domain in exchange for one of Complainant’s watches worth approximately 20,000 Swiss Francs. The Panel finds bad faith where a respondent attempted to sell a domain for an amount in excess of out of pocket costs. Here, the Respondent asked for an expensive watch in return for the transfer demanded by Complainant. See Randstad Gen. Partner, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000); see also Gutterbolt, Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that the consideration demanded in exchange for a domain name registration does not have to be monetary in nature to run afoul of Policy ¶ 4(b)(i), but can be anything of value that exceeds the amount spent in registering and maintaining the domain name); but see Coca-Cola Co. v. Svensson, FA0 103933 (Nat. Arb. Forum Feb. 27, 2002) (finding that the respondent was not acting in bad faith when it engaged in discussions to sell its domain name registration to the complainant after the complainant initiated the discussion). This Panel may find that Respondent has acted in bad faith under Policy ¶ 4(b)(i).
Complainant further contends that Respondent has demonstrated a pattern of bad faith registration related to the watch industry as shown by prior adverse UDRP disputes. Specifically, a past panel found that Respondent had registered the <elprimero.watch> which was found to be confusingly similar to another’s’ mark, in which respondent had no rights, and the registration was done in bad faith. See LVMH Swiss Manufactures SA v. Oliver Bisko et al., FA 1593543 (Nat. Arb. Forum Dec. 23, 2014). Other Panels have found bad faith where a respondent has shown a pattern of bad faith registrations. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). This Panel holds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED
Accordingly, it is Ordered that the <royaloak.watch> domain name be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFFER, Panelist
Dated: February 15, 2016
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