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Cerruti 1881 S.A.S v. Trading House Morellino BV [2005] GENDND 793 (11 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cerruti 1881 S.A.S v. Trading House Morellino BV

Case No. D2005-0224

1. The Parties

The Complainant is Cerruti 1881 S.A.S, Paris, France, represented by Baker & McKenzie, Italy.

The Respondent is Trading House Morellino BV, Amsterdam, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <cerruti1881watches.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2005. On March 1, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On March 1, 2005, Register.com 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 March 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2005.

The Center appointed Paz Soler Masota as the sole panelist in this matter on April 27, 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

From the Complaint and the various Exhibits to it, the Panel has found the following:

(1) The Complainant is the legitimate owner of several worldwide marks “CERRUTI” and “CERRUTI 1881”.

(2) The Complainant has also provided evidence of a worldwide license granted to the entity Eganagoldpfeil (Holdings) Ltd., for the production and commercialization of watches for men and women. The said commercialization is also carried out through the website “ www.cerrutiwatches.com”. The Panel has visited the mentioned website and asserts that it is fully operative.

(3) On January 25, 2005, and February 11, 2005, respectively, the Complainant sent a cease and desist letter to Respondent. According to Complainant’s contentions, said letters were returned to it, due to the fact that the Respondent’s addresses were not correct. Copies of the letters have been duly attached to the Complaint.

(4) The Panel has tried unsuccessfully to enter the website operated under the disputed domain name, on April 28, 2005, May 2, 2005, and on the date of issue of the present Decision, respectively.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

(1) That the disputed domain name <cerruti1881watches.com> is identical or confusingly similar to the trademarks in which it has rights, since:

(i) the disputed domain name reproduces the worldwide well-known trademarks “CERRUTI” and “CERRUTI 1881”, and the addition of the term “watches” which does not avoid the likelihood of confusion for consumers;

(ii) the trademark “CERRUTI 1881” is used by the Complainant to commercialize its products, which include watches.

(2) That the Respondent has no rights or legitimate interests in respect of the disputed domain name, since:

(i) “Cerruti 1881” is not a common name and has never been associated to any activity by the Respondent;

(ii) Respondent has never been authorized by Complainant to use the trademark “CERRUTI 1881”; and

(iii) the domain name under dispute has never been used since its registration, on July 16, 1998.

(3) That the domain name was registered and is maintained by using it in bad faith, since:

(i) the lack of use of the domain evidences the purpose of Respondent to obtain an illegitimate profit out of the sale of the domain name to the owner of the trademark or a competitor;

(ii) Respondent has never responded the warning letters of Complainant which, in addition, were returned to it due to the fact that the Respondent provided the Registrar with a false contact address.

Consequently, Complainant requests that the disputed domain name <cerruti1881watches.com> be transferred to it.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant needs to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights, 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.

A. Identical or Confusingly Similar

The disputed domain name contains verbatim the trademarks “CERRUTI” and “CERRUTI 1881” of the Complainant, with the mere addition of the generic term “watches”. The Panel considers that the mentioned addition does not provide the domain name with a distinctive character.

In fact, the addition of a generic term to a trademark has steadily been disregarded by UDRP panels as a sufficient means to avoid the likelihood of confusion, especially if the mark in question is well-known, as it occurs in the case at issue. See Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398: “The addition of the words ‘watch’ and ‘relojes’ (the Spanish word for wristwatches), generic terms that refer to the goods in connection with which the ROLEX trademark is used (…) does nothing to change the fact that the Domain Names incorporate the ROLEX mark. Therefore, the Panel finds that the Domain Names are identical or confusingly similar to the ROLEX mark”. As in the cited case, the likelihood of confusion for consumers is here immediate, since Complainant effectively uses its trademarks to precisely commercialize watches for men and women.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the registered trademarks of the Complainant, the requirement of the Policy paragraph 4(a)(i) has thus been satisfied.

B. Rights or Legitimate Interests

Respondent has not contested the Complaint’s contentions and the Respondent has not put forward any rights or legitimate interest in respect of the disputed domain name, which incorporates the trademarks of Complainant’s.

The Complainant has alleged that they have not authorized the Respondent to use the trademarks, nor to register the domain name containing them. Complainant has provided the Panel with a copy of the worldwide licence granted to a third party other than Respondent to manufacture and commercialize watches for men and women under Complainant’s trademarks. Bearing in mind the fact that Complainant’s trademark is well-known, it is difficult to conceive of any plausible use of the disputed domain name by the Respondent that would not cause consumer confusion or (alternatively) infringement of the Complainant’s trademark in the various jurisdictions involved.

The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name, the requirement of the Policy paragraph 4(a)(ii) has thus been satisfied.

C. Registered and Used in Bad Faith

Taking into consideration the famous character of the Complainant’s trademarks which are reproduced in the disputed domain name, it is very unlikely that the Respondent would not have been aware of the existence of those trademarks at the time of registration of the domain name.

Respondent has taken active steps to conceal its identity to the registrar by providing false contact details (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131), and has not responded to Complainant’s cease and desist letters which facts can be considered as further indications of registration and use in bad faith.

Bearing in mind that Respondent has made no use of the domain name since 1998, and in light of all circumstances concurring in this case, the Panel finds that the Respondent’s passive holding of the domain name mounts to bad faith registration and use.

The Panel concludes that the domain name at issue has been registered and is being used 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 <cerruti1881watches.com> be transferred to the Complainant.

Paz Soler Masota
Sole Panelist

Dated: May 11, 2005