Raymond Weil SA v. Watchesplanet (m) Sdn Bhd

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Raymond

Weil SA v. Watchesplanet (M) Sdn Bhd

Case No.

D2001-0601

1. The Parties

The Complainant is Raymond

Weil SA, Av. Eugène-Lance 36-38, Grand-Lancy, 1212 Lancy, Switzerland.

The Respondent is Watchesplanet

(M) Sdn Bhd, B-1-8 Megan Phileo Avenue, Jalan Yap Kwan Seng, Kuala Lumpur,

WP 50450, Malaysia.

2. Domain Name and Registrar

The domain name at issue

is <raymond-weil-watches.com>, hereinafter referred to as the "Domain

Name". The Registrar is Omnis Network, Network, Omnis (ON-1), 3655 Torrance,

Blvd Suite 440, Torrance, CA 90503, United States of America.

3. Procedural History

The Complaint was submitted

by e-mail to the WIPO Arbitration and Medication Center (the "Center") on April

26, 2001. A hard copy of the Complaint was received at the Center on April 27,

2001. On April 30, 2001, the Center sent an Acknowledgement of Receipt of Complaint

to the Complainant by e-mail.

On May 2, 2001, a Request

for Registrar Verification was transmitted to the Registrar. The Registrar transmitted

the Registrar Verification on May 4, 2001, confirming that the Respondent is

the registrant of the Domain Name and that as a condition of registering domains

with the Registrar, all registrants must agree to be bound by the Uniform Domain

Name Dispute Resolution Policy.

On May 10, 2001, a Notification

of Complaint and Commencement of Administrative Proceeding was transmitted to

the Respondent. In this Notification the Respondent was advised that the Response

must be submitted to the Complainant and to the Center by May 29, 2001.

The Notification was sent to the Respondent by means of post/courier, facsimile

and e-mail to "pauline@watchesplanet.com".

On May 11, 2001, the Respondent

submitted to the Center by e-mail that it is "not interested to keep the name".

Having received no further Responses from the Respondent, on June 8, 2001,

the Center issued a Notification of Respondent Default to the Complainant and

the Respondent by e-mail.

On June 20, 2001, Dr. Andrea

Jaeger-Lenz, having provided the Center with a Statement of Acceptance and Declaration

of Impartiality and Independence, was appointed as a single member Administrative

Panel and the Parties were so informed via e-mail. An electronic copy of the

Complaint was e-mailed to the Administrative Panel on May 20, 2001, and the

hard copy of the Case File followed by courier on June 22, 2001.

The Sole Panelist finds

that the Administrative Panel was properly constituted and appointed in accordance

with the Policy, the Rules and the Supplemental Rules.

As the Respondent has not

submitted a Response in accordance with Paragraph 5(b) of the Rules, the following

Decision is issued on the basis of the Complaint, the Policy, the Rules and

the Supplemental Rules and without the benefit of a Response from the Respondent.

4. Factual Background

The Complainant is the

proprietor of the International Trademark No. 446 233 "RAYMOND WEIL" which is

registered in more than 40 countries for a number of goods in class 40, inter

alia watches of different kinds. The Complainant uses the term "Raymond

Weil" for its goods in more than 100 countries through its authorised distributors.

According to the submission of the Complainant, the trademark "Raymond Weil"

is a notorious trademark. Considering the scale of use in Germany known to the

Panel, the Panel has no reason to doubt this.

By letter of April 14,

2000, the Complainant had claimed an infringement of the trademark by the Respondent

through its use on the Respondent’s website "www.watchesplanet.com". On November

17, 2000, however, the Respondent registered the Domain Name with the Registrar.

The Respondent is not authorised

to use the trademark "Raymond Weil" by way of a licence or any other agreement

with the Complainant. On its website "www.watchesplanet.com", the Respondent

sells watches manufactured by the Complainant and distributed under the name

"Raymond Weil" which are acquired on the unofficial parallel or grey market.

It is not an authorised retailer of Raymond Weil watches.

The Domain Name was actively

used by the Respondent. However, after the Complaint had been filed, the Respondent

ceased to use the Domain Name.

5. Parties Contentions

a) Complainant

The Complainant contends

that the Domain Name is confusingly similar to the Complainant's trademark "Raymond

Weil" and that the Respondent has no rights or legitimate interests in respect

of the Domain Name, and that the Domain Name has been registered and is being

used in bad faith. The Complainant requests that the Domain Name be transferred

to the Complainant by the Respondent.

b) Respondent

The Respondent is in default

as it has not contested the allegations of the Complaint by way of a formal

Response.

6. Discussions and

Findings

Paragraph 4(a) of the Policy

directs that the Complainant must assert each of the following:

(i) that the Domain

Name registered by the Respondent is identical or confusingly similar to the

trademark in which the Complainant has rights; and

(ii) that the Respondent

has no rights of legitimate interests in respect of the Domain Name; and

(iii) that the Domain

Name has been registered and is being used in bad faith.

a) Similarity of Trademark

and Domain Name

On the facts submitted

by the Complainant, the Panel concludes that the Domain Name <raymond-weil-watches.com>

is confusingly similar to the trademark "Raymond Weil" which is owned by the

Complainant. The term "watches" added to the trademark in the Domain Name is

merely descriptive of the goods the trademark is registered for and the Domain

Name has been used for. Therefore, it does not exclude the likelihood of confusion.

The same applies to the use of hyphens between the elements of the Domain Name

because they do not make a substantial difference to the appearance and pronunciation

of the trademark.

b) Rights or legitimate

interests of the Respondent in the Domain Name

According to Paragraph

4(c) of the Policy, for the purposes of Paragraph 4(a)(ii) the following circumstances,

in particular, but without limitation, shall demonstrate rights or legitimate

interests of the Respondent.

(i) the Respondent's

use of, or demonstrable preparations to use, the Domain Name or a name corresponding

to the Domain Name in connection with a bona fide offering of goods or services,

before any notice to the Respondent of the Dispute; or

(ii) the Respondent

(as an individual, business, or other organisation) has been commonly known

by the Domain Name, even if the Respondent has no trademark or service marks

rights; or

(iii) the Respondent

is making a legitimate non-commercial or fair use of the Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the

trademark or service mark at issue.

The Complainant denies

any direct connection with the Respondent and contends that the Respondent's

use of the trademark is not authorised. The Respondent has not opposed these

submissions. By e-mail of May 11, 2001, it stated that, in fact, it is not interested

in the Domain Name anymore and, consequently, it has ceased the use of the Domain

Name subsequently. Hence, the Respondent obviously does not claim to have any

rights or legitimate interest in the Domain Name.

From the evidence provided

by the Complainant with the Complaint nothing indicates that the Respondent

has any rights or interests in respect of the Domain Name according to Paragraph

4(c)(i-iii) of the Policy, or any other rights or legitimate interest.

The collateral use of the

trademark in connection with the resell of the Complainant's products on the

Respondent's website does not confer any proprietary rights in the Complainant's

trademark on the Respondent (see The Stanley Works and Stanley Logistics,

Inc. v. Camp Creek Co., Inc., WIPO Case

No. D2000-0113). Moreover, at the time of the registration of the Domain

Name, the Respondent was fully aware of the Complainant's trademark. The Panel,

therefore, finds that the Respondent selected and used the Domain Name solely

in order to attract internet users to its website by trading on the fame of

the Complainant's trademark. This does not constitute a "bona fide" offering

of goods (see Madonna Ciccione, p/k/a Madonna v. Dan Parisi and <Madonna.com>,

WIPO Case No. D2000-0847).

c) Registration and

use in bad faith

According to Paragraph

4(b) of the Policy, for the purpose of Paragraph 4(a)(iii) the Respondent's

intent to attempt to attract, for commercial gains, Internet users to its website,

by creating a likelihood of confusion with the Complainant's trademark as to

the source, sponsorship, affiliation, or endorsement of the website or of a

product or service on the website, by using the domain name shall be evidence

of their registration and use of the domain name in bad faith.

By using a domain name

which is confusingly similar to a well known trademark it is likely that Internet

users hold the proprietor of the trademark responsible for the website the domain

name is used for or, alternatively, assume that some kind of legal or economic

affiliation exists between the operator of the website and the proprietor of

the trademark. Since the Respondent was well aware of the Complainant's trademark

at the time of registration and use of the Domain Name and considering the obvious

similarity of the Domain Name with the trademark, the Panel is convinced that

the Respondent, by using the Domain Name, intended to provoke confusion with

the Complainant's trademark and to take advantage of such confusion as to the

source of its website or its affiliation in order to attract, for commercial

gain, internet users to its website. It is the Respondent's burden to demonstrate

that the registration and use of the Domain Name was intended for other purposes.

In absence of a response and in view of the evidence submitted by the Complainant

the Panel holds that the Respondent registered and used the Domain Name in bad

faith.

Irrespective of the wording

of Paragraph 4(a)(iii) of the Policy that the domain name "is being used"

in bad faith, the Panel holds that active use of the domain name by the respondent

at the time of the decision of the Panel is not required. Otherwise a respondent

could easily avoid the proceedings under the Policy by suspending the use of

the Domain Name after notification of the Complaint. Therefore, the Panel takes

the view that Paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

In the light of the foregoing

reasons, the Panel decides that the Domain Name at issue is confusingly similar

with the Complainant's trademark, that the Respondent has no rights or legitimate

interests in respect of the Domain Name, and that the Domain Name has been registered

and used in bad faith.

Accordingly, the Panel

requires, pursuant to Paragraph 4(i) of the Policy, that the Domain Name be

transferred to the Complainant.

Dr. Andrea

Jaeger-Lenz

Sole Panelist

Date: June

30, 2001

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