{ "case_number": "CAC-UDRP-106198", "time_of_filling": "2024-08-09 14:43:01", "domain_names": [ "patekphilippemiami.com" ], "case_administrator": "Olga Dvořáková (Case admin)", "complainant": [ "PATEK PHILIPPE SA GENEVE", "HENRI STERN WATCH AGENCY, INC " ], "complainant_representative": "Amandine LEBRET (Cabinet Vidon, Marques & Juridique PI)", "respondent": [ "Vadim Yakubov" ], "respondent_representative": null, "factual_background": "

FACTS ASSERTED BY THE COMPLAINANTS AND NOT CONTESTED BY THE RESPONDENT:<\/strong><\/span><\/p>\n

THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANTS HAVE RIGHTS<\/strong><\/span><\/p>\n

The First Complainant states that it is one of the most recognized companies in the history of Swiss watchmaking industry awarded many times for both its innovations and designs. It was founded in 1839 and has risen to the top of the luxury watch industry under the “PATEK PHILIPPE” trademark. As one of the last independent, family-owned watch manufacturers in Geneva, it offers connoisseurs high-end watches and accessories around the world. The company maintains over 300 retail locations globally and a dozen distributors across different continents.<\/p>\n

The First Complainant owns various “PATEK PHILIPPE” trademarks including the international and Swiss registrations referred to above.<\/p>\n

The Second Complainant is a subsidiary of the First Complainant in the United States of America. The Second Complainant owns various “PATEK PHILIPPE” trademarks in the US including the US registrations referred to above.<\/p>\n

The Complainants claim that they share a common interest in acting against the Respondent since the disputed domain name affects their rights in the “PATEK PHILIPPE” trademarks. The Complainants request transfer of the disputed domain name to the First Complainant.<\/p>\n

The Complainants allege that the disputed domain name is confusingly similar to their “PATEK PHILIPPE” trademarks. The Complainants claim that the disputed domain name reproduces the mark in its entirety plus the geographical element “Miami” and that the “PATEL PHILIPPE” mark is recognizable within the disputed domain name.<\/p>\n

The <.com> gTLD does not affect confusing similarity analysis.<\/p>\n

THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME<\/strong><\/span><\/p>\n

The Complainants assert that they gave no authorization to the Respondent to use the sign “PATEK PHILIPPE”, nor to register a domain name that includes their trademarks.<\/p>\n

The Complainants state that the Respondent is not making any legitimate or fair use of the disputed domain name.<\/p>\n

The Complainants provide screenshots of the website at the disputed domain name and note that the disputed domain name seems to be operated by a US company “WRIST AFICIONADO” that has no rights in respect of the “PATEK PHILIPPE” mark.<\/p>\n

The Respondent is Vadim Yakubov who appears to be the founder and CEO of “WRIST AFICIONADO”.<\/p>\n

The Respondent claims to be an authorized re-seller of “PATEK PHILIPPE” goods. The Complainants allege that there are only two (2) authorized resellers of “PATEK PHILIPPE” in Miami and the Respondent and his company are not one of them.<\/p>\n

The website at the disputed domain name says that it offers certified goods, however it is impossible to confirm that they are indeed certified.<\/p>\n

The Complainants claim that the Respondent fails to comply with the nominative fair use criteria and the “Oki Data” test, namely:<\/p>\n

- he fails to accurately and prominently disclose his relationship with the trademark holder;<\/p>\n

- the Respondent is not using his site to sell only the trademarked goods as the website also offers goods of competitors such as “Rolex”, “Audemars Piguet” and “Richard Mile” and<\/p>\n

- the Respondent tries to “corner the market” in domain names that reflect the trademark preventing the Complainants to reserve the domain name associating the trademark “PATEK PHILIPPE” with a location of their activities, namely “Miami”.<\/p>\n

Therefore, the Complainants claim that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.<\/p>\n

THE DISPUTED DOMAIN NAME WAS REGISTERED AND BEING USED IN BAD FAITH<\/strong><\/span><\/p>\n

The Complainants’ submissions on the bad faith element can be summarized as follows:<\/p>\n