Decision for dispute CAC-UDRP-107532

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

The Complainants have demonstrated ownership of rights in the trademarks PATEK and PATEK PHILIPPE for the purposes of standing to file a UDRP complaint.

The first Complainant, Patek Philippe SA Genève, is the owner of trademark registrations for PATEK and PATEK PHILIPPE, including the following, as per trademark registration details submitted as annexes to the Complaint:

- International trademark registration No. 208381 for PATEK (word mark), registered on March 22, 1958, in classes 9 and 14;

- International trademark registration No. 394802 for PATEK PHILIPPE (word mark), registered on December 21, 1972, in classes 9, 14, 16 and 34;

- Swiss trademark registration No. P-396660 for PATEK PHILIPPE (word mark), filed on August 28, 1992, and registered on October 21, 1992, in classes 9, 14, 16 and 34;

The second Complainant, Henri Stern Watch Agency Inc, is a subsidiary of the first Complainant in the United States and, within the frame of its activities, is the owner of the following trademarks in the United States, as shown by the trademark registration details submitted in annex to the Complaint:

- United States trademark registration No. 520291 for PATEK PHILIPPE (word mark), filed on January 29, 1949, and registered on January 24, 1950, in international class 14;

- United States trademark registration n. 764655 for PATEK PHILIPPE (word mark), filed on April 22, 1963, and registered on February 11, 1964, in international class 14;

- United States trademark registration No. 6983438 for PATEK PHILIPPE (word mark), filed on September 28, 2021, and registered on February 21, 2023, in international class 14.

The first Complainant, Patek Philippe SA Genève is a Swiss watchmaking company, founded in 1839 by Antoine Norbert de Patek and Jean-Adrien Philippe.

As one of the last independent, family-owned watch manufacturers in Geneva, PATEK PHILIPPE SA GENEVE offers connoisseurs high-end watches and accessories around the world, maintaining to date over 300 retail locations globally and a dozen distributors in many countries of the world.

The first Complainant is the owner of the domain names <patek.com> and <patekphilippe.com>, both registered on March 7, 1996, and redirected to the website “www.patek.com”, used to promote the PATEK PHILIPPE products online.

As highlighted above, the second Complainant, Henri Stern Watch Agency Inc, is a subsidiary of the first Complainant and owns trademark registrations for PATEK PHILIPPE in the United States.

The disputed domain name <patekboutiquesmiami.com> was registered on April 14, 2025, and resolves to a registrar parking page.

COMPLAINANT

The Complainants contend that the disputed domain name <patekboutiquesmiami.com> is confusingly similar to the trademarks PATEK and PATEK PHILIPPE in which the Complainants have rights as it:

reproduces the Complainants’ trademarks “PATEK” and the first part of the trademark "PATEK PHILIPPE", with the mere addition of the descriptive term “boutiques” and the geographical indicator “Miami”, which does not prevent the likelihood of confusion between the disputed domain name and the Complainants’ marks.

The Complainants submit that the addition of the terms “boutiques” and “Miami” on the contrary only serve to exacerbate the likelihood of confusion, since the Complainants’ authorized retailer in Miami operates the website under the almost identical domain name <patekboutiquemiami.com>. 

The Complainants assert that the Respondent has no rights or legitimate interests in respect of the disputed domain names since: i) the Complainants own trademark rights on PATEK PHILIPPE at least since 1949; ii) the Complainants have given no authorization to the Respondent, in any form, to use the sign PATEK PHILIPPE, nor to register a domain name including their trademarks; and iii) the Respondent is not using the disputed domain name in connection with any legitimate use, as it does not lead to any active website but resolves to a mere parking page.

With reference to the circumstances evidencing bad faith, the Complainants indicate that the Respondent knew, or at least should have known, about the Complainants’ trademark rights, due to its wide scope of activities and renown. The Complainants submit that they are very well known in the field of fine watchmaking and that PATEK PHILIPPE is widely protected as a trademark and also widely used, due to their large network of retailers. The Complainants further state that PATEK appears to be an unusual patronymic name, leading to the fact that its selection cannot be considered accidental, and PATEK PHILIPPE is often called PATEK, as demonstrated by the press articles submitted as Annex 2 to the Complaint.

The Complainants assert that the Respondent’s bad faith in the present case is reinforced by the fact that, not only the disputed domain name reproduces the trademark PATEK, but it also encompasses the element PATEK alone rather than PATEK PHILIPPE, which is the choice made by the Complainants for the domain name hosting their main website "www.patek.com". The Complainants further underline that one of the Complainants’ authorized retailers in Miami, "Patek Philippe Boutique", has an active website at the domain name <patekboutiquemiami.com>, which has only one letter difference with the disputed domain name.

The Complainants further point out that the disputed domain name has been configured with a mail server, which could give rise to the suspicion that the disputed domain name may have been registered for phishing purposes to reach third parties whilst pretending to be affiliated with the Complainants.   

Lastly the Complainants underline that the Respondent likely provided false contact details in the Whois of the disputed domain name, since online searches do not yield results concerning an “ArctivAir Logistics Service” located in Nashville, Tennessee, nor a “Geoge Westwood” linked to a company named “ArcticAir” or similar. Likewise, the email address provided by Respondent has no link whatsoever with either the registrant’s personal name or company name.

RESPONDENT

No administratively compliant Response has been filed.

The Complainants have, 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 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 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.

1. The Complainants have provided evidence of ownership of valid trademark registrations for PATEK and PATEK PHILIPPE.

The Panel finds that the disputed domain name <patekboutiquemiami.com> is confusingly similar to the trademark PATEK of the first Complainant, as it reproduces the trademark in its entirety with the mere addition of the descriptive term “boutiques” and the geographical indicator “Miami”, which are not sufficient to prevent a finding of confusing similarity under the first element.

As to the gTLD “.com”, as established in a number of prior UDRP cases, it is viewed as a standard registration requirement and as such it can be disregarded for the purpose of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy.

2. With reference to the Respondent’s rights or legitimate interests in the disputed domain name, the Panel finds that the Complainants have made a prima facie case and that the Respondent, by not submitting a Response, has failed to provide any element from which a Respondent’s right or legitimate interest in the disputed domain name could be inferred.

The Panel notes that, based on the records, the Respondent has been in no way authorized or licensed by the Complainants to use their trademarks PATEK or PATEK PHILIPPE or to register and use the disputed domain name. Moreover, there is no evidence that the Respondent might have rights to, or be commonly known by, the disputed domain name or a name corresponding to the disputed domain name.

Furthermore, the disputed domain name resolves to a mere parking page and there is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use.

In addition to the above, the Panel finds that the disputed domain name, reproducing the trademark PATEK in its entirety with the addition of the descriptive term “boutiques” and the geographical indicator “Miami”, carries a high risk of implied affiliation with the Complainants, especially considering one of the Complainants’ authorized retailers in Miami operates a website at the almost identical domain name <patekboutiquemiami.com>.

Therefore, the Panel finds that the Complainants have demonstrated that the Respondent has no rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy.

3. As to bad faith at the time of registration, the Panel finds that, in light of the Complainants’ prior registration and use of the trademarks PATEK and PATEK PHILIPPE, also online on the Complainants’ website “www.patek.com”, and considering the well-known character of the Complainants’ trademark PATEK PHILIPPE, the Respondent was or should have been aware of the Complainants and their trademark rights when it registered the disputed domain name in April 2025.

Moreover, considering i) the composition of the disputed domain name, reproducing the trademark PATEK in combination with the terms “boutiques” and “Miami”, which are directly referrable to the Complainants, as they have an authorized retailer located in Miami; and ii) the one-letter difference of the disputed domain name with the domain name <patekboutiquemiami.com> used by the Complainants’ authorized retailer in Miami, the Panel finds that, on balance of probabilities, the Respondent was indeed aware of, and intended to target, the Complainants and their authorized reseller at the time of registration.

The disputed domain name currently resolves to a registrar parking page. As established in a number of prior UDRP cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding. In the present case, in light of i) the composition of the disputed domain name, which incorporates the first Complainant’s trademark PATEK in its entirety and appears to have been intentionally registered as a misspelling of the domain name <patekboutiquemiami.com> used by the Complainants’ authorized reseller in Miami; ii) the Respondent’s failure to submit a Response to provide any evidence of actual or contemplated good-faith use of the disputed domain name; iii) the configuration of MX records in connection with the disputed domain name, which gives rise to the suspicion that it may also be used for email communication purposes, potentially misleading recipients as to the source or approval of the communications sent by email; and iv) the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that the current passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Therefore, the Panel finds that the Complainants have also demonstrated that Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.