Decision for dispute CAC-UDRP-107044

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

The Complainants have evidenced to be the owners of various trademark registrations relating to their PATEK PHILIPPE brand, including, but not limited to, the following:

- word trademark PATEK, International registration (World Intellectual Property Organization (WIPO)), registration number: 280381, registration date: March 22, 1958, status: active;

- word trademark PATEK PHILIPPE, United States Patent and Trademark Office (USPTO), registration No.: 520291, registration date: January 24, 1950, status: active.

Moreover, the Complainants have demonstrated to enjoy rights in various domain names relating to the PATEK And PATEK PHILIPPE trademarks, e.g. since 1996 the domain name <patek.com> which resolves to the Complainants’ official website at “www.patek.com”, used to promote the Complainants’ watches and related other goods and services internationally.

The Complainants, Patek Philippe SA GENEVE, Switzerland (the Complainant No. 1) and Henri Stern Watch Agency, Inc., United States of America (the Complainant No. 2) (together “the Complainants”), contend that the requirements of the Policy have been met and that the disputed domain names should be transferred to them.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainants have, 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 Complainants have rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainants have, 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 Complainants have, 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.

First, as regards the multitude of the Complainants, given that they belong to the same PATEK PHILIPPE group of companies (the Complainant No. 2 is a subsidiary of the Complainant No. 1), the Complainants obviously have a specific common grievance against the Respondent why it is appropriate in the case at hand and in line with the UDRP panelists’ majority view to accept this Complaint filed by multiple complainants within the general powers of the Panel set forth by paragraph 10(e) of the UDRP Rules. As regards the multitude of three disputed domain names, the Panel notes that they all belong to the same Respondent and filing a complaint in relation to more than one domain name of the same domain name owner is per se in line with the UDRP (see e.g. paragraph 3(b)(vi) of the Policy).

Second, the Panel finds that the disputed domain names are confusingly similar to the Complainants’ PATEK and PATEK PHILIPPE trademarks, as they incorporate at least the PATEK trademark in its entirety (and the PATEK PHILIPPE in parts), thereby adding the generic terms “caseback”, ”lostandfound” or “papers”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark. Moreover, it has also been held in many UDRP decisions and has meanwhile become a consensus view among UDRP panels that the mere addition of generic or other terms (such as e.g. the terms “caseback”, ”lostandfound” or “papers”) is not capable to dispel the confusing similarity arising from such entire incorporation of at least the Complainants’ PATEK trademark in the disputed domain names.

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Third, the Complainants contend, and the Respondent has not objected to these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, nor is the Respondent commonly known under the disputed domain names, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain.

The Respondent is not affiliated with the Complainants, nor has it been authorized to use the Complainants’ PATEK and/or PATEK PHILIPPE trademarks, either as a domain name or in any other way.  Also, there is no reason to believe that the Respondent’s name somehow corresponds with the disputed domain names and the Respondent does not appear to have any trademark rights associated with the terms/names “Patek” or “Philippe” on its own. Finally, all three domain names resolve to an identical website at “www.robertmaron.com” which offers watches for online sale, including watches baring the Complainant’s PATEK and PATEK PHILIPPE trademarks as well as watches from many of the Complainants’ direct competitors in the watches industry, without any authorization by the Complainants to do so; this website does not contain any disclaimer notifying Internet users that there is no business relationship between the Parties. Such use of the disputed domain names, obviously in a fraudulent manner, neither qualifies as a bona fide nor as a legitimate noncommercial of fair use under the UDRP, not even so under the so-called Oki data principles applied by UDRP panels, which would have required the Respondent to e.g. sell only the PATEK/PATEK PHILIPPE trademarked goods or services on the website to which the disputed domain names resolve and to accurately and prominently disclose on this website the non-existing relationship between the Parties.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that, therefore, the Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Finally, the Panel holds that the disputed domain names were registered and are being used by the Respondent in bad faith.

It is obvious from the circumstances of this case that the Respondent was well aware of the Complainants’ business in the watches industry and their rights in the undisputedly well-known PATEK and PATEK PHILIPPE trademarks when registering the disputed domain names, and that the latter are directly targeting the Complainants and their trademarks. Moreover, resolving the disputed domain names to a website which offers watches for online sale, including watches baring the Complainant’s PATEK and PATEK PHILIPPE trademarks as well as watches from many of the Complainants’ direct competitors in the watches industry, without any authorization by the Complainants to do so and without notifying Internet users that there is no business relationship between the Parties, leaves no doubts that the Respondent, by registering and using the disputed domain names, had the intention to somehow unjustifiably profit from the undisputed reputation attached to the Complainants’ PATEK and PATEK PHILIPPE trademarks, and, thus, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s own website. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Therefore, the Complainants have also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).