Patek Philippe SA Geneve v Host Master, 1337 Services LLC
WIPO Case No. DIO2025-0021
•07-08-2025
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Patek Philippe SA Geneve v. Host Master, 1337 Services LLC
Case No. DIO2025-0021
1. The Parties
Complainant is Patek Philippe SA Geneve, Switzerland, represented Federation of the Swiss Watch Industry
FH, Switzerland.
Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <replicapatekphilippe.io> is registered with Sarek Oy (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2025. On June 10, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24 and June 26, 2025, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 18, 2025.
The Center appointed Scott R. Austin as the sole panelist in this matter on July 24, 2025. 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.
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4. Factual Background
The following facts appear from the Complaint (as amended) and its attached Annexes, which have not been contested by Respondent, and provides evidence sufficient to support:
Complainant is considered one of the leaders in the luxury watch making industry, marketing its high-end watches under the trademark PATEK PHILIPPE (the “PATEK PHILIPPE Mark”). Founded in 1839 the brand has its origin in the name of two of the founders: Antoine Norbert de Patek and Jean-Adrien Philippe. One of the last independent, family-owned watch manufacturers in Geneva, Complainant offers high-end watches and accessories to connoisseurs around the world, and within its country of origin, namely Switzerland as shown on its official website at “ (the “Official PATEK PHILIPPE Mark Website”).
Complainant owns a number of registrations in Switzerland and around the world for the PATEK PHILIPPE
Mark for its watch products, including the following:
United States of America Registration No. 520,291, PATEK PHILIPPE, registered on January 24, 1950, for watches in International Class 14;
European Union Trademark Registration No. 594078, PATEK PHILIPPE, registered on October 21, 1992, for products in International Classes 9, 14, 16, and 34.
Switzerland Trademark Registration No. P-396660, PATEK PHILIPPE, registered on October 21, 1992, for a range of products and services in International Classes 9, 14, 16 and 34.
Complainant also shows both prior UDRP panels, the Swiss Federal Institute of Intellectual Property and
numerous media publications have referred to Complainant as one of the most recognized companies
in the history of the Swiss watchmaking industry and the PATEK PHILIPPE Mark as well-known and famous
worldwide.
The disputed domain name was registered on April 22, 2023, and the record evidence submitted shows it resolved to what is generally referred to as a “copycat” website displaying pages strikingly similar to the content on the Official PATEK PHILIPPE Mark Website. The similarities include prominent use of
Complainant’s trademark, color scheme, font and similar design choices, including Complainant’s official logo, the Calatrava cross, and features infringing copies of Complainant’s copyright protected digital images of its products to offer the possibility to order purportedly hundreds of models of unauthorized, counterfeit “replica” watches identified with the PATEK PHILIPPE Mark.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
B. Respondent
Respondent did not reply to Complainant ’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
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WIPO Overview 3.0”), section 4.2. [1]
The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that before any order can be made to transfer or cancel a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“
Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered or is being used in bad faith.
The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below.
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 Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.
Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
Trademark registration evidence has been submitted in the form of electronic copies of valid and subsisting
national and international trademark registration documents in the name of Complainant referenced in
Section 4 above. Ownership of a nationally registered trademark constitutes prima facie evidence that the
complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO
Overview 3.0, section 1.2.1; see Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v.
Voguechen, WIPO Case No. D2014-0657; see also Janus International Holding Co. v. Scott Rademacher,
WIPO Case No. D2002-0201.
The Panel finds Complainant’s foregoing national and international registrations are sufficient to demonstrate statutory trademark rights in Complainant’s PATEK PHILIPPE Mark to meet Complainant’s burden under the first element of the Policy.
A side-by-side comparison between the disputed domain name and Complainant’s mark shows the disputed domain name is confusingly similar to Complainant’s PATEK PHILIPPE Mark.
Complainant’s PATEK PHILIPPE Mark is incorporated in its entirety in the disputed domain name except for Respondent appending the term “replica” before the Mark and followed by official registered country-code Top-Level Domain (“ccTLD”) “.io” designated as the territorial code for the British Indian Ocean Territory. Complainant also shows that this ccTLD is also often used for its abbreviation of the standard technology industry term “input/output.”.
Prior panels have held in similar circumstances “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP
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standing”. See L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; see
also, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Complainant also shows that the disputed domain name must be considered confusingly similar to Complainant’s Mark because the added term “replica” has been specifically held by prior panels as insufficient to prevent a finding of confusing similarity. See Bulgari S.p.A. v. Che Kane Jose, WIPO Case No.
D2023-3212; Breitling SA v. tao tao, WIPO Case No. D2023-3302.
Prior panels have also found that a ccTLD, like a gTLD, being viewed as a standard registration requirement, may typically be disregarded under the paragraph 4(a)(i) analysis. See WIPO Overview 3.0, section 1.11.1; see also Kinetic Concepts, Inc. v. Sheppard Stetve, WIPO Case No. DCO2015-0007.
The Panel finds that the added term “replica” does not prevent a finding of confusing similarity with Complainant’s PATEK PHILIPPE Mark in which Complainant has rights, and the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
Based on the available record, the Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
Although the overall burden of proof in .IO 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 accepts Complainant’s undisputed allegations that Respondent has no authorization to use Complainant’s trademarks and that Respondent is not commonly known by the disputed domain name. Similarly, the Panel accepts the allegations that Respondent is not making bona fide use of the disputed domain name under the Policy.
Complainant contends Respondent is not using the disputed domain name in connection with legitimate noncommercial or fair use or a bona fide offering of goods or services because, as Complainant’s attached screen shots of the web pages accessed through the disputed domain name show, the disputed domain name resolves to a carefully crafted “copycat” version of Complainant’s Official PATEK PHILIPPE Mark Website to create a false association with Complainant for Respondent’s commercial benefit.
The Panel notes that the evidence submitted persuasively supports Complainant’s argument because it shows Respondent’s website prominently features the unauthorized use of infringing copies of Complainant’s content: copyright protected digital images of its luxury watch products and offers users the possibility of ordering competing counterfeit “replicas” sold by Respondent. Respondent’s activities therefore undermine
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any claim of rights and legitimate interests because Respondent is using the disputed domain name to confuse Internet users and suggest an affiliation with or sponsorship by Complainant to direct users to Respondent’s website for its commercial gain. Based on these facts the Panel finds Respondent’s actions
selling counterfeit goods are clearly not legitimate and clearly are misleading. Respondent, therefore, cannot claim rights or legitimate interests or noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels Inc. v. “m on”, WIPO Case No. D2012-2525; see also Frankie Shop LLC v. Jie Wen, WIPO Case No. D2022-4197.
It is a well-established principle according to a consensus of panels that the use of a domain name for “illegal activity (e.g., the sale of counterfeit goods or […] impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. Particularly in the case of counterfeits and
pharmaceuticals, this is true irrespective of any disclosure on the related website that such infringing goods are “replicas” or “reproductions” or indeed the use of such term in the domain name itself”. WIPO Overview 3.0, section 2.13.1. See also Frankie Shop LLC v. Domain Protection Services, Inc. / My Mo, WIPO Case No. D2022-0825.
Having reviewed the record, the Panel finds Complainant has established a prima facie case that 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.
The Panel finds the second element of the Policy has been established.
C. Registered or 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 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 also 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.
Complainant contends that Respondent’s configuration of the disputed domain name demonstrates a knowledge of and familiarity with Complainant’s well-known brand and business by registering a domain name that incorporates the PATEK PHILIPPE Mark in its entirety with the addition of the term “replicas” appended in front of Complainant’s mark. Complainant contends such configuration also shows Respondent’s intent to create a false association in the minds of consumers between Respondent’s offered fake watches and Complainant’s authentic PATEK PHILIPPE Mark high-end luxury timepiece products because it is implausible that Respondent was not aware of Complainant’s PATEK PHILIPPE Mark and its association with high-end watches, given Respondent’s admitted intention to “replicate” numerous models of Complainant’s watches and sell them by trading on the brand’s renown - both generally, and in the watch- making industry in which Respondent’s copycat website purports to operate. The Panel notes there can be no doubt of Respondent’s knowledge of Complainant’s mark since Complainant shows that Respondent actually sells (or at least, claims to sell) counterfeit watches as “replicas” labeled with the PATEK PHILIPPE Mark on its website. Respondent has thereby intentionally created a domain name for registration that is confusingly similar to Complainant’s trademark, as well as its official domain name, to redirect users to its website and sell counterfeit products for its commercial benefit. Prior panels have found a domain name was registered in bad faith where the respondent registered a domain name incorporating a well-known mark for illegal purposes, such as intentionally attempting to impersonate or mislead in order to commit fraud or the sale of counterfeit goods. See, e.g., Hachette Filipacchi Presse v. Domains by Proxy, LLC / Al-Rahim International, WIPO Case No. D2014-1635; Accor v. Jiangdeyun, WIPO Case No. D2011-2277.
Prior panels have also held where the disputed domain name is configured in a manner to wholly incorporate a complainant’s mark, as Complainant’s Mark is incorporated here, with an added term, “replica”, related to Complainant’s watches, the disputed domain name can only sensibly refer to Complainant; thus, there is no
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obvious possible justification for Respondent’s selection of the disputed domain name other than registration
in bad faith. See Frankie Shop LLC v. Bgeew Aferg, WIPO Case No. D2022-3619.
As discussed in greater detail in Section 6.B above, Complainant shows in evidence in the Annexes to its Complaint that Respondent used the disputed domain name to configure a copycat website to impersonate Complainant to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion attract Internet users seeking Complainant’s products through the purported sale by Respondent of
counterfeit watches constitutes evidence of bad faith use under the Policy, paragraph 4(b)(iv). WIPO
Overview 3.0, section 3.4; see also The Coca-Cola Company v. PrivacyProtect.org/ N/A, Stephen
Chukwumaobim, WIPO Case No. D2012-1088; FC2, Inc. v. 申昌兰 (Shen Chang Lan), WIPO Case No.
D2023-4590; Karl Lagerfeld B.V. v. Hongdong Hu, WIPO Case No. D2022-4375.
Having reviewed the record, the Panel finds Respondent had actual knowledge of Complainant, targeted advantage. Accordingly, 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 name <replicapatekphilippe.io> be transferred to Complainant.
/Scott R. Austin/
Scott R. Austin
Sole Panelist
Date: August 7, 2025
(NIC.IO) on June 1, 2020, is similar to the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) with the notable exception that the third element operates in the disjunctive, requiring a showing of either registration or use in bad faith for a complainant to sustain its burden there. Thus, the Panel, has referred to the WIPO Overview 3.0, where appropriate.
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