Audemars Piguet Holding S.A. v Jim 79

WIPO Case No. D2024-3683

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Audemars Piguet Holding S.A. v. Jim 79

Case No. D2024-3683

1. The Parties

The Complainant is Audemars Piguet Holding S.A., Switzerland, internally represented.

The Respondent is Jim 79, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <audemarspiguetstore.com> and <audemarspiguetvn.com> are registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11,
2024. On September 12, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On September 12, 2024, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain names which differed from the named Respondent (Redacted for Privacy) and contact
information in the Complaint. The Center sent an email communication to the Complainant on September
13, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the

Complaint on September 18, 2024.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2024.

page 2

The Center appointed Petra Pecar as the sole panelist in this matter on October 23, 2024. 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 Complainant, Audemars Piguet Holding S.A., is a luxury watch manufacturer founded in 1875 by Louis
Audemars and Edward Piguet. The Complainant is among the oldest family-owned watchmakers, known for
its complex handcrafted watches and for launching the iconic “Royal Oak” stainless steel sports watch in
1972. The Complainant produces approximately 50,000 watches annually, available in 65 countries.

The Complainant owns several trademark registrations for AUDEMARS PIGUET around the world, including but not limited to the following registrations:

- Switzerland registration for word trademark AUDEMARS PIGUET, Registration No. 2P-349004,

registered on August 29, 1986, in Class 14;

- International registration for figurative trademark , Registration No. 1247290

registered on March 16, 2015, in Class 14, designating among others European Union; and

- United States of America registration for word trademark AUDEMARS PIGUET, Registration No.

1,591,934, registered on April 17, 1990, in Class 14.

The Complainant owns multiple domain names, including but not limited to <audemarspiguet.com>, which operates as its official website.

The disputed domain names <audemarspiguetstore.com> and <audemarspiguetvn.com> were registered on which the Respondent falsely represented as an authorized reseller of the Complainant.

The Respondent is an individual from United Kingdom.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends that it promotes its trademarks globally through various media channels and partnerships with ambassadors, including athletes like LeBron James and Serena Williams, and celebrities such as Justin Bieber and Dwayne Johnson. The Complainant highlights its affiliations with golf and art, focusing on values of precision and creativity, and collaborates with figures like musician Mark Ronson. Additionally, it sponsors cultural events like Art Basel and the Montreux Jazz Festival, dedicating resources to boost its presence in these respected fields.

The Complainant asserts that the disputed domain names closely resemble its official trademark and website, creating a misleading impression of affiliation. By adding “vn” (suggesting Viet Nam) and “store”, the Respondent allegedly seeks to associate these sites with the Complainant’s trademarks, falsely implying an authorized relationship. The Complainant highlights that the Respondent’s official representation in Viet Nam and worldwide are entirely unfounded, as the Respondent has not been appointed as an authorized retailer, potentially misleading consumers into a belief of legitimacy where none exists.

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names and is unlawfully using its trademarks to falsely suggest an authorized affiliation. Additionally, the

page 3

Complainant claims that the Respondent is operating a fraudulent scheme by advertising the Complainant’s watches without intent to fulfill orders. Invalid contact information provided on the Respondent’s site further supports the allegation of deceptive and fraudulent activity. The Complainant alleges that the Respondent copied Complainant’s copyrighted watch images from its website without permission, using them unlawfully to promote or sell products, which constitutes copyright infringement and does not qualify as fair use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Even if the Respondent did not file a Response to the Complainant’s contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“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”, as
indicated in paragraph 15(a) of the Rules.

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.

A. 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the trademark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of “vn” and “store”, may bear on assessment of the second and third elements, the domain names and the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Furthermore, it is well accepted practice by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11.1 of the WIPO Overview 3.0). For that reason, the Panel accepts not to take gTLD “.com” when assessing confusing similarity of the disputed domain names.

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

page 4

B. 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. WIPO Overview 3.0, section 2.1.

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 names. 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 names such as those enumerated in the Policy or otherwise.

According to the Complainant, it seems that the Respondent is not associated or connected with the Complainant in any way, and the Complainant has not granted the Respondent any license or authorization to use or register any domain names that include the Complainant’s trademark. The Respondent has also failed to provide a response to the Complaint, thereby failing to present any information or factors that could potentially justify prior rights or legitimate interests in the disputed domain names. Additionally, there appears to be no evidence of the Respondent engaging in any legitimate or genuine use of the disputed domain names, whether for noncommercial or bona fide activities, as the disputed domain names, at the time of the Complaint filing, resolve to websites that closely resemble the Complainant’s official trademark and website, creating a misleading impression of affiliation, which does not confer rights or legitimate interests in this case. The websites allegedly seek to associate themselves with the Complainant’s trademark, falsely implying an authorized relationship. Panels have held that the use of domain names for illegitimate activity, such as using the Complainant’s trademark to deceive Internet users by creating a false association with the Complainant, and achieving economic gain by imitating the Complainant’s business to deceive Internet users, can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).

The Panel finds the second element of the Policy has been established.

C. 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.

In the present case, the Panel notes that the disputed domain names closely resemble the Complainant's trademark and website, creating a misleading impression of affiliation. The addition of “vn” (suggesting Viet Nam) and “store”, which is descriptive of the Complainant’s retail activities, implies an unauthorized association with the Complainant. The Complainant highlights that the Respondent’s claims to official representation in Viet Nam and globally lack any basis, as the Respondent has not been appointed as an authorized retailer, potentially misleading consumers into a belief of legitimacy.

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. WIPO Overview 3.0, section 3.2.1.

page 5

Regarding bad faith in registration, the Panel finds it likely that the Respondent was aware of the Complainant’s established rights and reputation in the AUDEMARS PIGUET trademark. This likelihood is reinforced by the content displayed on the disputed domain names websites bearing the Complainant’s trademarks and copyrighted photos of the Complainant’s products, seemingly crafted to create a false association with the Complainant. The Complainant’s trademark predates the registration of these disputed domain names by approximately 38 years, leading the Panel to conclude that the disputed domain names were registered in bad faith.

Regarding use in bad faith, the Panel finds that the Respondent’s actions appear intentionally deceptive, positioning itself as a legitimate retailer to exploit the Complainant’s trademarks and create a misleading association with the Complainant. The Panel observes that this conduct, including unauthorized use of copyrighted images and false contact information, demonstrates an intent to mislead consumers and unfairly

benefit from the Complainant’s established reputation. This pattern of behavior, lacking any legitimate rights
or interests in the disputed domain names, supports a finding of bad faith use, as it appears designed to
improperly capitalize on the Complainant's goodwill.

The Complainant’s AUDEMARS PIGUET trademark should be observed as a trademark that is sufficiently distinctive and that enjoy a certain level of reputation based on longstanding use. The Respondent has failed to provide any response to the Complaint and has therefore failed to provide any justification for the registration and use of the disputed domain names. Based on the foregoing reasons, the Panel finds that the Respondent’s conduct should be considered as in bad faith.

Panels have held that the use of a domain name for illegitimate activity involving an unauthorized association with the Complainant constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <audemarspiguetstore.com> and <audemarspiguetvn.com> be transferred to the Complainant.

/Petra Pecar/ Petra Pecar Sole Panelist Date: November 6, 2024