Decision for dispute CAC-UDRP-108497

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

The Complainant has demonstrated ownership of rights in the trademark PATEK for the purposes of standing to file a UDRP complaint.

The Complainant 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, the Complainant 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 disputed domain name was registered on July 23, 2020, and it does not resolve to any active website. MX Records are configured on the disputed domain name. 

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

In particular, the Complainant argues that the disputed domain name is confusingly similar to its PATEK trademark as this trademark is contained in its entirety within the disputed domain name in combination with the term "SEA" which is likely used in this context as an acronym for "South East Asia". Further, the Complainant contends that ".com" gTLD is viewed as a standard registration requirement and as such is disregarded.

Regarding the second UDRP element, the Complainant asserts that the Respondent has no rights or legitimate interests with respect of the disputed domain name. No authorization has been granted to the Respondent to make any use of the Complainant’s trademark, or apply for registration of the disputed domain name by the Complainant. Having in mind that the Respondent did not use the disputed domain name for more than 5 years, there can be no legitimacy in respect to the disputed domain name.

With respect to the third UDRP element, the Complainant holds that its PATEK trademark is well-known and that the Respondent knew or, at least, should have known about the Complainant's trademark rights. The incorporation of well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith. The configuration of the MX record on the disputed domain name further reinforces the use of bad faith, as it indicates that the disputed domain name may have been reserved for phishing purposes.

The Respondent has provided a short response, simply negating that the requirements of the Policy have been met, without the provision of any additional arguments or evidence.

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.

Preliminary issue – Language of the Proceedings

The Panel notes that the language of the Registration Agreements is Chinese, as confirmed by the Registrar. The Complaint was submitted in English and the Respondent submitted its short Response in English as well. Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant requests that English be used as the language of the proceeding, arguing, inter alia, that translating the Complaint into Chinese would not put the Complainant in a position of equality towards the Respondent, and neither ensure the proceedings take place with due expedition, and that it is likely that the Respondent is in a position to understand English.

The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English, the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant and the fact that the Respondent provided its response in English language, from which the Panel deducts that the Respondent understands, and is able to communicate in English. In view of all these elements, the Panel determines that the language of proceedings shall be English.

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy stipulates that the complainant must prove each of the following:

• that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
• that the disputed domain name has been registered and is being used in bad faith.

I. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name, as stipulated in section 1.7 of WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”).

The Complainant has shown rights in respect of the PATEK trademark for the purposes of the Policy (WIPO Overview 3.1, section 1.2.1).

The entirety of the Complainant's trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Complainant's trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.7).

Although the addition of other terms, here “sea”, may bear on the assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark for the purposes of the Policy (WIPO Overview 3.1, section 1.8).

In addition, it is well established that “.com”, as a generic Top-Level Domain, can be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark (WIPO Overview 3.1, section 1.11.1).

The Panel, therefore, finds that the first element of the Policy has been established. 

II. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In particular, the Panel notes that there appears to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s PATEK trademark. There appears to be no element from which the Panel could infer the Respondent’s rights and legitimate interests in the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The Panel also finds that the structure of the disputed domain name, which contains the Complainant’s PATEK trademark in combination with what appears to be the geographical term "sea" as an abbreviation for "South East Assia", carries a high risk of implied affiliation (see WIPO Overview 3.1, section 2.5.1). This additional word closely corresponds to the Complainant and may imply sponsorship or endorsement by the Complainant.

Having in mind the above, the Panel finds the second element of the Policy has been established.

III. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.  

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (see WIPO Overview 3.1, section 3.2.1).

Regarding the registration of the disputed domain name in bad faith, the Panel holds that the Respondent had the Complainant in mind when registering the disputed domain name. The Complainant’s PATEK trademark has been registered and used long before the Respondent registered the disputed domain name, so it is unlikely that the Respondent was not aware of this trademark. It is, therefore, highly unlikely that the Respondent decided to register a domain name containing the Complainant's PATEK trademark in its entirety without having the Complainant in mind when doing so.

Due to the above, the Panel finds that the disputed domain name has been registered in bad faith. 

The disputed domain name currently resolves to an inactive page, meaning that the disputed domain has not been actively used by the Respondent. Nevertheless, the Panel holds that the particular circumstances of this case would lead to the establishment of bad faith on the Respondent's side under the doctrine of passive holding. Previous panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of Respondents’ behavior (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The principles established in Telstra Corporation Limited v. Nuclear Marshmallows, have been widely adopted by UDRP panels and have found their place in WIPO Overview 3.1. In accordance with Section 3.3. of WIPO Overview 3.1, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s taking active steps to conceal its identity, and (iv) the use of false or inaccurate contact details (noted to be in breach of the respondent’s registration agreement. Taking the above factors into consideration, panels assess the overall plausibility of any (claimed) good faith use to which the domain name may be put in light of the composition of the domain name in relation to the relevant mark, such that, the more arbitrary or distinctive a mark the less plausible a claimed non-infringing good faith use is likely to be, and vice versa. It should be emphasized that it is not required that all the above-listed factors be present in order to establish bad faith use of the disputed domain name (see, for example, Compagnie Générale des Etablissements Michelin v. K Nandalal, BlueHost, WIPO Case No. D2021-3990).

The Complainant’s PATEK trademark enjoys a certain reputation within its field of business. Furthermore, the Respondent, although submitted a brief response, has failed to provide any explanation for the choice of the disputed domain name and its planned use. In the Panel's opinion, it is rather difficult to imagine any good faith use that the disputed domain name could be put into, and deems that if such good faith use could be proved or argued, the Respondent would use the opportunity to provide evidence or arguments in that respect in its Response. For that reason, the Panel finds that the disputed domain name has been used in bad faith in accordance with the doctrine of passive holding.

The Panel also considers that the configuration of mail exchange records (MX records) on the disputed domain name can also contribute to the Respondent’s bad faith.  Previous panels have held that the configuration of such records may give rise to a significant risk of phishing or other fraudulent and abusive activities (see, for example, Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533 and Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Basikta James, WIPO Case No. D2020-2955).  

In circumstances where a disputed domain name contains third party’s trademark that enjoys a certain reputation in its field of business, it is difficult to conceive of any plausible good faith use of the mail server attached to such a domain name. In the present case, the disputed domain name contains the Complainant's PATEK trademark in its entirety along with the term "sea" (which likely stands for an abbreviation for "South East Asia"), and the Panel finds that it is rather difficult to imagine any good faith use in which MX records attached to such a domain name could be put.

The Panel finds that the disputed domain name has been both registered and is being used in bad faith, and consequently that the Complainant has established the third element of the Policy.