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ÁÖ½Äȸ»ç ÆÛ½ºÆ® ¿¥ µî ´ë ÀÌ¿õ (Lee, Wung) [2005] GENDND 439 (27 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TAG HEUER v. Whois Privacy Protection Service, Inc.

Case No. D2005-0133

1. The Parties

The Complainant is TAG HEUER S.A., Marin, Switzerland, represented by LVMH, France.

The Respondent is Whois Privacy Protection Service, Inc., Bellevue, WA 98007, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tagheur.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2005. On February 8, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 8, 2005, eNom 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 February 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2005.

The Center appointed Peter G. Nitter as the sole panelist in this matter on March 17, 2005. 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

Complainant owns the well-known watches company identified by the trademark “TAG HEUER”. Complainant was founded in 1860 for the purpose of creating sports watches. TAG heuer is today one of the key references in Swiss Made watch-making know-how. Its watches are associated with advertising campaigns using well-known ambassadors, and are known by the public all over the world. TAG Heuer has also developed a worldwide distribution network among retailers.

Complainant is via its International Trademark Registration No 689200 of March 24, 1998 the owner of numerous TAG Heuer trademark registrations all over the world cf. Annex D to the Complaint.

Complainant is also the owner of trademark registrations in USA since 1988 cf. Annex E to the Complaint.

Complainant has been present on the Internet since 1995, and owns the domain names:

<tagheuer.com>, <tag-heuer.co.uk>, <tagheuer.net>, <tag-heuer.net>, <tagheuer.org>, <tag-heuer.org>, <tagheuer.ch>, <tagheuer.de>, <tagheuer.es> and <tagheuer.com.hk>.

5. Parties’ Contentions

A. Complainant

The domain name is confusingly similar and practically identical to the Complainants trademark. The single difference between the Complainant’s trademarks “TAG Heuer” and the domain name <tagheur.com> is that the letter “E” does not appear in the domain name. This distinction is practically imperceptible. The deletion of the letter “E” does not preclude a finding of confusingly similarity, and Internet users are very likely to misspell the Complainant’s mark and be directed to the Respondent.

The practice of registering misspelled versions of marks owned by others is commonly known as typosquatting and is firmly condemned in several WIPO cases.

The other difference between the contested domain name and the Complainant’s trademark is the addition of the generic top level domain “.com”, which is completely without legal significance.

Respondent does not have any rights or legitimate interests in the domain name. Respondent is in no way affiliated with the Complainant and the Respondent has never sought or obtained consent from the Complainant to register the domain name. Respondent is not a licensee or otherwise permitted to use Complainant’s trademarks. These circumstances are sufficient to constitute a prima facie absence of rights or legitimate interest in the domain name.

Respondent does not use the domain name as part of its legal name, corporate name, or upon information and belief, any commonly known identifier.

The choice of the domain name itself proofs the bad faith of the Respondent. Respondent was inevitably aware of the notoriety of the Complainant’s trademark when he registered the disputed domain name February 17, 2004. TAG Heuer is a well-known trademark in Europe and all over the world since more than one century. By suppressing the letter “E”, Respondent has clearly indicated his intentions: He has registered the domain name in order to unfairly benefit from the Complainant’s trademarks notoriety.

The domain name is currently being used to host a search engine, which proposes links to various retailers of, among others, discounted TAG Heuer watches.

On three recent occasions the panel has found that the Respondent has acted in bad faith by registering domain names containing key components of famous names.

The Respondent is only a tool proposed by eNom to permit ill-intentioned owners to mask their true identity. This fact constitutes evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of various registrations of the trademark “TAG HEUER”. The Complainant’s International Trademark registration is from 1998. Complainant has also been the owner of registrations of the trademark in the USA since 1988.

There are few differences between the trademark and the domain name. One is that the domain name has left the last “E” in the trademark out. Another is that the domain name consists of “tagheur” in one word, and the trademark “tag heuer” is divided in two words. The Panel considers these differences as minor. The domain name is clearly a misspelled version of the marks, and the Panel finds that the domain name and the trademark both visually and phonetically will appear as similar.

Another difference is that the domain name has the “.com” suffix. Various decisions have noted that top-level domain denominators such as “.com” have no distinguishing capacity in the context of domain names.

The Panel concludes that the domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

The Panel has considered Complainant’s allegation that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue. Since Respondent is in default, these allegations have not been contested.

Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain name at issue, while Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4 c) of the Policy, previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing of its assertion.

The Panel finds that the circumstances mentioned and evidenced by Complainant is sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.

As Respondent has not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a) (ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel has considered Complainant’s assertions and evidence with regard to the Respondent’s registration and use of the domain name in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name at issue in bad faith.

The Respondent must have known of the Complainant’s well-known marks when he registered the disputed domain name and he did so in order misleadingly to divert traffic to his site.

The Panel accepts the Complainant’s assertion that the Respondent’s registration of a domain name similar to the trademark of the Complainant is an attempt to unfairly benefit from the Complainant’s trademarks notoriety. The fact that the Internet website corresponding to the domain name at issue includes various links to retailers of, among others, discounted TAG Heuer watches, indicates that Respondent is aware of Complainant’s trademark.

The Panel furthermore finds it evidenced that the Respondent previously has been found to be involved in the registration of domain names in bad faith, see Medco Health Solutions Inc v. Whois Privacy Protection Service Inc. WIPO Case No. D2004-0453, Jacuzzi UK Group PLC v. Whois Privacy Protection Service Inc. WIPO Case No. D2004-0254 and Fox News Network, L.L.C v. C&D International Ltd. and Whois Privacy Protection Service Inc. WIPO Case No. D2004-0108. The Panel sees this as a further indication of bad faith.

Therefore the Panel concludes that Respondent registered and used the domain name in bad faith.

7. Decision

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 name <tagheur.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Date: March 31, 2005