WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION Patek Philippe S.A. v. Thinksecure Labs, Raymond Pestalozzi Case No. D2010-0169

1.

The Parties The Complainant is Patek Philippe S.A. of Switzerland, represented by Samantha Jelin of Switzerland. The Respondent is Thinksecure Labs, Raymond Pestalozzi of United States of America.

2.

The Domain Name and Registrar The disputed domain name <patekwatches.com> (“Domain Name”) is registered with GKG.NET, INC.

3.

Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2010. On February 5, 2010, the Center transmitted by email to GKG.NET, INC a request for registrar verification in connection with the disputed domain name. On February 5, 2010, GKG.NET, INC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 11, 2010. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March

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4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2010. The Center appointed Antony Gold as the sole panelist in this matter on March 10, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Domain Name was registered on August 25, 2005. It does not resolve to an active website. On September 4, 2009, the Complainant’s representatives wrote to the Respondent to put it on notice of the Complainant’s rights and to request the transfer of the Domain Name (annex 12a to the Complaint). The Complainant’s representatives also state that they sent an email to the Respondent on January 25, 2010. A copy of the email has not been appended to the Complaint but an email from the registrar stating that the email has been sent is appended (annex 13a to the Complaint). No responses to the letter or the email have been received by the Complainant or its representatives. 5. Parties’ Contentions A. Complainant

As evidence of its rights in a trade mark or service mark to which the Domain Name is identical or confusingly similar, the Complainant states that it has used the name PATEK for many years. It has produced a timeline which indicates that Patek, Czapek & Co was founded in 1839 and it produced its first watch in 1844. The Complainant also relies on its International trade mark registration for PATEK which has been registered in connection with classes 9 (all apparatus and articles for measuring time) and 14 (all apparatus and articles for measuring time, timepieces and jewellery). The International registration was based on a Swiss trade mark which was registered on March 22, 1958. The International registration has been designated in 18 countries. The Complainant has produced evidence to show that it manufactures and sells a wide range of watches and accessories to an international market. The Complainant asserts that it says that the Respondent has no rights and legitimate interests in the Domain Name as: (a) (b) (c) (d) the Respondent is unconnected with the Complainant’s business; the Respondent has not registered a trade mark for PATEK in the United States of America where it is based; the Complainant has not authorised the Respondent’s use of the Domain Name; and the Respondent has no commercial interest in the Domain Name and registered it to block the Complainant from registering it.

The Complainant also asserts that the Domain Name was registered and is being used in bad faith as:
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(i) (ii)

the Respondent registered the Domain Name without regard to the Complainant’s rights in the name PATEK; the Respondent agreed to the terms and conditions of the registration agreement which refers to the UDRP and the Respondent would have known that, by registering a well-known trade mark, it was risking the commencement of legal proceedings; and

(iii) the Respondent must be aware of his infringing activities as it has received correspondence from the Complainant’s representatives (this being a letter dated September 4, 2009) regarding the Domain Name. B. Respondent

The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 14 of the Rules provides, amongst other matters, that if a party does not comply with a provision of the Rules, the Panel shall draw such inferences as it thinks fit. A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. From the screen shots of the Complainant’s website annexed to the Complaint, it can be seen that the Complainant has been manufacturing watches for about 165 years. The screen shots indicate that the Complainant appears to use the trade name Patek Philippe rather than Patek alone. Although the evidence adduced by the Complainant could have been considerably more detailed in this respect, the Panel is satisfied that the Complainant has rights in the PATEK mark. Whilst its trading style appears to be Patek Philippe, the Complainant has an International registration for PATEK dating back to 1958 and has a website at “www.patek.com”. Therefore, the Complainant has demonstrated its trademark rights in PATEK and this requirement of the UDRP is satisfied. The Panel is also satisfied that the Domain Name is confusingly similar to the Complainant’s trade mark for PATEK as the word “watches” is merely descriptive of the principal form of goods sold by the Complainant. B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name. There is no evidence to suggest that the Respondent has any rights or legitimate interests in respect of the Domain Name. In particular, it is accepted that, in the absence of any evidence to the contrary, the Respondent is not known as PATEK and has not registered a trade mark in the United States of America (where it is based) for PATEK (annex 9 to the Complaint). The Respondent is also not cited in the list of the
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Complainant’s retailers. Furthermore, the Domain Name was registered nearly 5 years ago, however it does not resolve to a live website and there is no evidence to show that the Respondent has made any preparations to use the Domain Name prior to being notified of this dispute. In the absence of any indication to the contrary, the Panel accepts the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the Domain Name which the Respondent has not rebutted. Accordingly, the Panel finds that the Complaint has satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith

For this element of a Complaint to be met, a Complainant is required to show both that the Domain Name was registered in bad faith and that it is being used in bad faith. In terms of the registration of the Domain Name, the Complainant asserts that, if the Respondent had undertaken a search on the Internet prior to registering the Domain Name in 2005, it would have revealed the Complainant’s rights in the name PATEK. The Google search appended to the Complaint which is relied on by the Complainant to support its contention was undertaken in February 2010, and therefore does not accurately indicate what information would have been revealed had a search been conducted in 2005, at the time of registration of the Domain Name. However, the Complainant’s business is long established. In the Panel’s view, it is reasonable to suppose that a Google search undertaken in 2005 would have yielded broadly similar results. It would at least have identified the Complainant’s business in the first few results. The Panel is willing to accept the Complainant’s contention that the Registrant was aware of the Complainant’s business and its rights in the name PATEK at the time of registration of the Domain Name. There is no realistic likelihood that anyone would associate watches and the name PATEK and register a domain name comprising both elements purely by chance. This is particularly unlikely having regard to the fact that the Complaint’s business was clearly very well established and international in its scope as at the time of registration of the Domain Name. In the absence of any evidence to the contrary, the Panel accepts that the Complainant’s submission that it is likely that the Respondent would have known about the notoriety of the Complainant and its rights in PATEK at the time of registration of the Domain Name and that its registration of the Domain Name was accordingly in bad faith. In terms of use of the Domain Name, the evidence available suggests that the Respondent has not made any use of the Domain Name (nor has made any demonstrable preparations to use the Domain Name) since it was registered in 2005. No evidence has been submitted to show that the Respondent has engaged in a pattern of registering domain names to prevent trade mark owners from reflecting their marks in corresponding domain names which would amount to evidence of bad faith use of the Domain Name within the meaning of paragraph 4(b)(ii) of the Policy. Nor is there any evidence to suggest that the Respondent is a competitor of the Complainant, such that it could be asserted that the Respondent registered the Domain Name primarily for the purpose of disrupting the Complainant’s business, which would also amount to evidence of bad faith use of the Domain Name (paragraph 4(b)(iii) of the Policy).

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Notwithstanding that the Complainant has not provided any evidence to support a claim that the Domain Name has been used in bad faith by reference to the list of circumstances at paragraph 4(b) of the Policy, the list is stated to be “without limitation”. As a result, the Panel is able to consider other factors to determine whether the Domain Name has been used in bad faith. In this case, no use has been made of the Domain Name for nearly 5 years and the Respondent has not responded to communications sent to it by the Complainant to justify its registration and use of the Domain Name. In the absence of any evidence to the contrary, the Panel accepts that the Respondent’s use of the Domain Name has prevented the Complainant from registering the Domain Name and it has disrupted the Complainant’s business. There are number of decisions under the UDRP (such as for example. Ladbroke Group Plc v. Sonoma International LDS, WIPO Case No. D 2002-0131)) where Panel have found that the passive holding of domain names can in certain circumstances constitutes use in bad faith. In this case: (1) (2) the Complainant’s rights in PATEK would have been well known and easily established at the date of registration of the Domain Name and thereafter; the Respondent has failed to reply to any communication from the Complainant or to take the opportunity to justify its registration of the Domain Name either in these proceedings or otherwise; it is difficult to conceive of any justified or proper motive for continued retention of a domain name which comprises the word PATEK (being a central component of the Complainant’s brand and the Complainant’s registered trademark) and “watches” which are the primary goods sold by it; this means, in the view of the Panel, that the continued retention of the domain name by the Respondent constitutes passive holding which amounts to bad faith “use” of the Domain Name.

(3)

In these circumstances, the Panel accepts that the Domain Name has been registered and is being used in bad faith by the Respondent. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <patekwatches.com> be transferred to the Complainant.

Antony Gold Sole Panelist Dated: March 22, 2010

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