Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Montres MDM Fabrication S.A. ("Complainant") represented by Russell Tisman, Groman, Ross & Tisman. The Respondent is Belle Antique S.L. ("Respondent").

The domain name at issue is hublot.com registered with Register.com.

The Panelist 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 the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 19, 2000; The Forum received a hard copy of the Complaint on September 19, 2000.

On September 27, 2000, Register.com confirmed by e-mail to the Forum that the domain name hublot.com is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 27, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@hublot.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 25, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

Respondent did not submit a response in this matter.

Since 1980, Complainant has manufactured and sold watches under the HUBLOT trademark. The HUBLOT trademark has been registered in over 50 countries, including in Spain. Respondent’s business is located in Marbella, Spain.

Complainant maintains a web site at hublot.ch, a domain name indicative of its native Switzerland. In January 2000, Complainant discovered, while attempting to register hublot.com, that the domain name had already been registered by Swiss Prestige, Ltd., a company owned by former employees of Complainant. Swiss Prestige apparently agreed to transfer the domain name to Complainant but instead, Network Solutions, the original registrar of hublot.com, simply cancelled Swiss Prestige’s registration, making the domain name available for anyone to register.

On March 9, 2000, Respondent registered the domain name hublot.com. Since that time, Respondent has not made any use of the domain name other than to offer its transfer to Complainant in exchange for 50 million pesetas-roughly $275,000 U.S.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain name hublot.com is identical to Complainant’s HUBLOT mark. See Hormel Foods Corp. and Hormel Foods, LLC v. Spotted Cow Media, FA 95067 (Nat. Arb. Forum July 31, 2000) (finding that the domain name <kidskitchen.com> is identical to the Complainant’s trademark KIDSKITCHEN).

Respondent has failed to demonstrate any rights or legitimate interests in the hublot.com domain name in accordance with the requirements of ICANN Policy ¶ 4(c). Therefore, this panel may infer that Respondent has no such rights. See ICANN Rules ¶ 14(b).

Several factors point to a finding that the domain name was registered and is being used in bad faith. First, the domain name incorporates a mark which has trademark protection in over 50 countries. The notoriety of such a mark leads to the inference that Respondent registered the domain name in violation of paragraph 2(b) of the ICANN Policy which states "By applying to register a domain name…you hereby represent and warrant to us that…(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party." See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Second, soon after registering the domain name, Respondent offered to transfer the domain name in exchange for 50 million pesetas- roughly $275,000 U.S. This is clearly evidence of bad faith under ICANN Policy ¶ 4(b)(i) which states:

Here, the evidence clearly indicates bad faith. See Cream Pie Club v. Britany Halford, FA95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the Respondent offered the domain name for sale to the Complainant for $125,000); America Online, Inc. v. Netsbest, FA 93563 (Nat. Arb. Forum Mar. 29, 2000) (finding bad faith where the Respondent made no use of the domain name <icqguide.com> other than offering it for sale for $99,000).

Having established all three elements required by the ICANN Policy, it is the decision of this panel that the requested relief be granted.

Accordingly, it is ordered that the domain name hublot.com be transferred from the Respondent to the Complainant.