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Raymond Weil SA v. Watchesplanet (M) Sdn Bhd [2001] GENDND 1259 (30 June 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1. The Parties

The Complainant is Raymond Weil SA, Av. Eugène-Lance 36-38, Grand-Lancy, 1212 Lancy, Switzerland.

The Respondent is Watchesplanet (M) Sdn Bhd, B-1-8 Megan Phileo Avenue, Jalan Yap Kwan Seng, Kuala Lumpur, WP 50450, Malaysia.

2. Domain Name and Registrar

The domain name at issue is <raymond-weil-watches.com>, hereinafter referred to as the "Domain Name". The Registrar is Omnis Network, Network, Omnis (ON-1), 3655 Torrance, Blvd Suite 440, Torrance, CA 90503, United States of America.

The Complaint was submitted by e-mail to the WIPO Arbitration and Medication Center (the "Center") on April 26, 2001. A hard copy of the Complaint was received at the Center on April 27, 2001. On April 30, 2001, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant by e-mail.

On May 2, 2001, a Request for Registrar Verification was transmitted to the Registrar. The Registrar transmitted the Registrar Verification on May 4, 2001, confirming that the Respondent is the registrant of the Domain Name and that as a condition of registering domains with the Registrar, all registrants must agree to be bound by the Uniform Domain Name Dispute Resolution Policy.

On May 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent. In this Notification the Respondent was advised that the Response must be submitted to the Complainant and to the Center by May 29, 2001. The Notification was sent to the Respondent by means of post/courier, facsimile and e-mail to "pauline@watchesplanet.com".

On May 11, 2001, the Respondent submitted to the Center by e-mail that it is "not interested to keep the name". Having received no further Responses from the Respondent, on June 8, 2001, the Center issued a Notification of Respondent Default to the Complainant and the Respondent by e-mail.

On June 20, 2001, Dr. Andrea Jaeger-Lenz, having provided the Center with a Statement of Acceptance and Declaration of Impartiality and Independence, was appointed as a single member Administrative Panel and the Parties were so informed via e-mail. An electronic copy of the Complaint was e-mailed to the Administrative Panel on May 20, 2001, and the hard copy of the Case File followed by courier on June 22, 2001.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.

As the Respondent has not submitted a Response in accordance with Paragraph 5(b) of the Rules, the following Decision is issued on the basis of the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a Response from the Respondent.

The Complainant is the proprietor of the International Trademark No. 446 233 "RAYMOND WEIL" which is registered in more than 40 countries for a number of goods in class 40, inter alia watches of different kinds. The Complainant uses the term "Raymond Weil" for its goods in more than 100 countries through its authorised distributors. According to the submission of the Complainant, the trademark "Raymond Weil" is a notorious trademark. Considering the scale of use in Germany known to the Panel, the Panel has no reason to doubt this.

By letter of April 14, 2000, the Complainant had claimed an infringement of the trademark by the Respondent through its use on the Respondent’s website "www.watchesplanet.com". On November 17, 2000, however, the Respondent registered the Domain Name with the Registrar.

The Respondent is not authorised to use the trademark "Raymond Weil" by way of a licence or any other agreement with the Complainant. On its website "www.watchesplanet.com", the Respondent sells watches manufactured by the Complainant and distributed under the name "Raymond Weil" which are acquired on the unofficial parallel or grey market. It is not an authorised retailer of Raymond Weil watches.

The Domain Name was actively used by the Respondent. However, after the Complaint had been filed, the Respondent ceased to use the Domain Name.

The Complainant contends that the Domain Name is confusingly similar to the Complainant's trademark "Raymond Weil" and that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and is being used in bad faith. The Complainant requests that the Domain Name be transferred to the Complainant by the Respondent.

The Respondent is in default as it has not contested the allegations of the Complaint by way of a formal Response.

Paragraph 4(a) of the Policy directs that the Complainant must assert each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and

(ii) that the Respondent has no rights of legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

On the facts submitted by the Complainant, the Panel concludes that the Domain Name <raymond-weil-watches.com> is confusingly similar to the trademark "Raymond Weil" which is owned by the Complainant. The term "watches" added to the trademark in the Domain Name is merely descriptive of the goods the trademark is registered for and the Domain Name has been used for. Therefore, it does not exclude the likelihood of confusion. The same applies to the use of hyphens between the elements of the Domain Name because they do not make a substantial difference to the appearance and pronunciation of the trademark.

According to Paragraph 4(c) of the Policy, for the purposes of Paragraph 4(a)(ii) the following circumstances, in particular, but without limitation, shall demonstrate rights or legitimate interests of the Respondent.

(i) the Respondent'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, before any notice to the Respondent of the Dispute; or

(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the Domain Name, even if the Respondent has no trademark or service marks rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

The Complainant denies any direct connection with the Respondent and contends that the Respondent's use of the trademark is not authorised. The Respondent has not opposed these submissions. By e-mail of May 11, 2001, it stated that, in fact, it is not interested in the Domain Name anymore and, consequently, it has ceased the use of the Domain Name subsequently. Hence, the Respondent obviously does not claim to have any rights or legitimate interest in the Domain Name.

From the evidence provided by the Complainant with the Complaint nothing indicates that the Respondent has any rights or interests in respect of the Domain Name according to Paragraph 4(c)(i-iii) of the Policy, or any other rights or legitimate interest.

The collateral use of the trademark in connection with the resell of the Complainant's products on the Respondent's website does not confer any proprietary rights in the Complainant's trademark on the Respondent (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113). Moreover, at the time of the registration of the Domain Name, the Respondent was fully aware of the Complainant's trademark. The Panel, therefore, finds that the Respondent selected and used the Domain Name solely in order to attract internet users to its website by trading on the fame of the Complainant's trademark. This does not constitute a "bona fide" offering of goods (see Madonna Ciccione, p/k/a Madonna v. Dan Parisi and <Madonna.com>, WIPO Case No. D2000-0847).

According to Paragraph 4(b) of the Policy, for the purpose of Paragraph 4(a)(iii) the Respondent's intent to attempt to attract, for commercial gains, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website, by using the domain name shall be evidence of their registration and use of the domain name in bad faith.

By using a domain name which is confusingly similar to a well known trademark it is likely that Internet users hold the proprietor of the trademark responsible for the website the domain name is used for or, alternatively, assume that some kind of legal or economic affiliation exists between the operator of the website and the proprietor of the trademark. Since the Respondent was well aware of the Complainant's trademark at the time of registration and use of the Domain Name and considering the obvious similarity of the Domain Name with the trademark, the Panel is convinced that the Respondent, by using the Domain Name, intended to provoke confusion with the Complainant's trademark and to take advantage of such confusion as to the source of its website or its affiliation in order to attract, for commercial gain, internet users to its website. It is the Respondent's burden to demonstrate that the registration and use of the Domain Name was intended for other purposes. In absence of a response and in view of the evidence submitted by the Complainant the Panel holds that the Respondent registered and used the Domain Name in bad faith.

Irrespective of the wording of Paragraph 4(a)(iii) of the Policy that the domain name "is being used" in bad faith, the Panel holds that active use of the domain name by the respondent at the time of the decision of the Panel is not required. Otherwise a respondent could easily avoid the proceedings under the Policy by suspending the use of the Domain Name after notification of the Complaint. Therefore, the Panel takes the view that Paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

In the light of the foregoing reasons, the Panel decides that the Domain Name at issue is confusingly similar with the Complainant's trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and used in bad faith.

Accordingly, the Panel requires, pursuant to Paragraph 4(i) of the Policy, that the Domain Name be transferred to the Complainant.

Dr. Andrea Jaeger-Lenz
Sole Panelist

Date: June 30, 2001