Decision for dispute CAC-UDRP-106796

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant is the owner of several trademarks PATEK PHILIPPE, e.g. international trademark registration (WIPO Reg. No. 394802) in classes 9 and 14 since 1972 and EU TM registration in class 14, since 21 October, 1992 (Reg. No. 594078).

The Complainant, PATEK PHILIPPE SA GENEVE, is a Swiss company, famous for being significant part of the history of Swiss watchmaking industry since 1839. As one of the last independent, family-owned watch manufacturers in Geneva, the Complainant offers connoisseurs high-end watches and accessories around the world. The company maintains over 300 retail locations globally and a dozen distributors across America, Asia and Europe.

The Complainant is the owner of several trademarks PATEK PHILIPPE, e.g. international trademark registration (WIPO Reg. No. 394802) in classes 9 and 14 since 1972 and EU TM registration in class 14, since 21 October, 1992 (Reg. No. 594078).

The Complainant also owns multiple domain names consisting in the wording “PATEK” and “PATEK PHILIPPE”, such as the domain name <patekphilippe.com> registered on March 7, 1996.

The disputed domain names <houseofpatekphilippe.com> and <maisonpatekphilippe.com> were registered on June 18, 2024, and June 19, 2024, accordingly. They are both inactive. The Respondent is ARUNASHI (Arun Bohra) from California, USA.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.
No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Panel agrees with the Complainant that the disputed domain names <houseofpatekphilippe.com> and <maisonpatekphilippe.com> are confusingly similar to the Complainant's trademark PATEK PHILIPPE. The Complainant’s trademark is included in the disputed domain names in its entirety. The addition of the terms “house of” or “maison” (meaning “house” in French) is not sufficient to escape the finding that the disputed domain names are confusingly similar to the trademark (see WIPO Overview 3.0, section 1.8). On the contrary, the addition of the generic words “house of” or “maison” increases the likelihood of confusion with the Complainant’s trademark, because it refers to the manufacture place of luxury watches or jewellery (Nice class 14).

The Panel acknowledges that the Complainant presented prima facie evidence that the Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to use Complainant’s trademark in any manner, including in domain names. The Respondent's name does not resemble the disputed domain names in any manner. Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use (Policy Para. 4(c)).

As no administratively compliant response has been provided to the Panel and the prima facie evidence was not challenged by the Respondent, the Panel concludes that the Respondent, when he registered the disputed domain names, meant nothing else except the Complainant's trademark PATEK PHILIPPE (see WIPO Overview 3.0, para. 3.1.1). Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Accordingly, the Panel finds that the disputed domain names were registered in bad faith.

The disputed domain names are inactive. From the inception of the UDRP, previous panellists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having regard to the notoriety of the Complainant’s trademark, the failure of the Respondent to submit a response and the implausibility of any good faith use, the Panel concludes that the disputed domain names are being used in bad faith (section 3.3 of WIPO Overview 3.0).

On these bases, the Panel concludes that the Respondent has both registered and used the disputed domain names in bad faith.