Decision for dispute CAC-UDRP-107397

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

International Registration No. 208381 PATEK designating numerous jurisdictions including France, the United Kingdom and Vietnam and dated 22 March 1958

The Complainant is a Swiss-based watch manufacturer that trades under the surname of its two founders "PATEK PHILIPPE". It operates a global business with over 300 retail locations around the world offering high-value watches and accessories. It uses both the trademarks "PATEK PHILPPE" and the shortened "PATEK" and it has trademark registrations for both these marks in numerous jurisdictions, including the ones referred to above. Both trademarks have been promoted extensively around the world and the Complainant owns the domain names <patekphilppe.com> and <patek.com>. The Complainant asserts, and the Respondent does not deny, that both trademarks are "worldwide famous".

 The Complainant asserts, the Respondent does not deny, that the word MASION is a descriptive term used by various traders to indicate that a location is one that provides luxury goods. Essentially a house of luxury goods. The terms have been used by the Complainant itself for the purpose of communicating this meaning to consumers.

The disputed domain name was registered on 11 March 2024.  The Respondent has recorded is registrant name as "Keane Loh" of "Cravepact Pte Ltd" and its address as a location in Singapore. The disputed domain name resolves to a website that promotes and offers for sale luxury perfume from a location in Singapore priced in the hundreds of Singaporean dollars.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name 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 name is 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 name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is 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.

Paragraph (4)(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name registered by the Respondent should be transferred to the Complainant:

1) the disputed domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3) the disputed domain name has been registered and is being used in bad faith.

The Panel is satisfied that the Complainant has satisfied all three elements for the principal reasons set out below.

RIGHTS IN AN IDENTICAL OR CONFUSINGLY SIMILAR TRADEMARK

The Complainant asserts it has an international trademark registration consisting of the word PATEK that designates numerous jurisdictions.  This registration predates the registration date of the disputed domain name by over 60 years.

To satisfy paragraph 4(a)(i) of the Policy it is enough that the Panel is satisfied that the Complainant has registered rights in a trademark that predates the registration of the disputed domain name in a single jurisdiction (even if that single jurisdiction is not one in which the Respondent resides or operates) (Koninklijke KPN N.V. v. Telepathy, Inc D2001-0217 (WIPO May 7, 2001); see also WIPO Case Nos. D2012-0141 and D2011-1436). The Complainant has clearly satisfied such in relation to the trademark PATEK.

The next question is whether the disputed domain name is confusingly similar to the PATEK trademark.

The Panel disregards the gTLD suffix ".asia" for the purpose of this comparison. If anything, the ".asia" gTLD suffix just reinforces in the mind of the consumer that the Complainant is providing goods from a location in asia. Further, the Panel accepts the Complainant's evidence and submissions that MAISON is commonly used by traders to indicate a location that provides luxury goods. In essence, a 'house of luxury'. Therefore MAISON does not operate as a branding element associated with any one trader. It merely reinforces to a consumer that the goods that are being provided are luxury goods. Therefore the sole distinctive branding element that a consumer is likely to focus on when observing the disputed domain name is PATEK.

The disputed domain name is therefore confusingly similar to the PATEK trademark.

NO RIGHTS OR LEGITIMATE INTERESTS

The Respondent's name according to information provided by the registrar for the disputed domain name is "Keane Loh" of "Cravepact Pte Ltd". This name bears no resemblance to "PATEK". Further, the website to which the domain name resolves does not have content that would indicate any right or legitimate interest in the disputed domain name.

The Respondent has no rights or interests in the disputed domain name.

BAD FAITH

The Complainant's PATEK trade mark is distinctive and very well known internationally. Further, the Complainant has used the disputed domain name to direct consumers to a website selling luxury goods. Whilst such luxury goods are perfume, and not the luxury watches and accessories that PATEK is famous for, it is nevertheless concerning to the Panel that a domain name so strikingly similar to a famous luxury brand is used for luxury goods generally. In such circumstances, it is reasonable to infer that the Respondent registered the strikingly similar disputed domain name with full knowledge of the Complainant's right in the PATEK trademark. Such similarity will inevitably confuse web-users. It is further reasonable to infer that the only foreseeable purpose that the Respondent had to register the disputed domain name and direct it to a website was to opportunistically profit from such confusion or assist another person to do so. Such opportunism has been recognised as bad faith by numerous panels, the Panel refers to the commentary of the learned Gerald M Levine, Domain Name Arbitration, Legal Corner Press, 2nd ed. 2019, pp. 432 to 434.

The Respondent has registered and used the disputed domain name in bad faith.