Patek Philippe SA Geneve v jin

WIPO Case No. D2024-0747

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Patek Philippe SA Geneve v. jin

Case No. D2024-0747

1. The Parties

The Complainant is Patek Philippe SA Geneve, Switzerland, represented by Cabinet Vidon Marques &

Juridique PI, France.

The Respondent is jin, China.

2. The Domain Name and Registrar

The disputed domain name <patek.group> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2024. On February 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 20, 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 amended Complaint on February 23, 2024.

The Center verified that the Complaint together with the amended 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 March 4, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was March 24, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 28, 2024.

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The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on April 8, 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, a Swiss based company established in 1839, is a family-owned watch manufacturer in over 300 retail locations globally and a dozen distributors across America, Asia, and Europe.

The Complainant owns various corresponding trademarks worldwide, including amongst many others:

- International trademark registration for “PATEK” No. 208381 in classes 9 and 14, registered on March
22, 1958, designating various countries and territories;

- International trademark registration for “PATEK PHILIPPE” No. 394802 in classes 9, 14, 16, and 34,
registered on December 21, 1972, designating various countries and territories;

- International trademark registration for “PATEK PHILIPPE” No. 594078 in classes 9, 14, 16, and 34, registered on October 21, 1992, designating, among others, China where the Respondent is located;

- Swiss trademark registration for “PATEK” No. 00215/1978 in class 14, filed on January 6, 1978, and
registered on March 1, 1978; and

- Swiss trademark registration for “PATEK PHILIPPE” No. 06393/1992 in classes 9, 14, 16 and 34, filed
on August 28, 1992, and registered on October 21, 1992.

The Complainant holds and promotes its business on the website under the domain name <patek.com> registered on March 7, 1996. This website has been continuously used at least since 1998.

The Complainant’s trademarks “PATEK PHILIPPE” and “PATEK” are both famous throughout the world.

The disputed domain name was registered on June 30, 2023, and is directed to a parked website hosted by a third party.

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 name.

The Complainant asserts that the disputed domain name is identical to the Complainant’s trademark PATEK.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It has not been authorized or licensed by the Complainant to use the PATEK trademark. The Complainant claims that the Respondent cannot assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainants claim that the Respondent must have known the Complainant’s trademark when registering the disputed domain name and that the Respondent is using the disputed domain name for

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selling at the price of USD 400 which is much more expensive than a traditional domain name reservation in
the extension “.group” and that, in any case, passive holding of this disputed domain name cannot be in
good faith in accordance with the conditions set out in prior UDRP decisions establishing the under the

doctrine of passive holding.

B. Respondent

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

6. Discussion and Findings

6.1. Effect of the Default

Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response,
the Panel infers that the Respondent does not deny the facts asserted and contentions made by the

Complainant.

Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject
to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v.

Global Net 2000, Inc, WIPO Case No. D2000-0441.

6.2 Substantive Issues

In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove the followings:

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

the Complainant has rights;

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

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

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

As indicated above, PATEK is the Complainant’s registered trademark since at least 1958 and the

Complainant holds multiple registrations for PATEK all around the world.

The disputed domain name integrates the Complainant’s PATEK trademark as a sole element.

As regards the domain suffix “.group”, it is typically disregarded under the confusing similarity test.

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Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and it is then for the Respondent to rebut this case.

The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.

Rather, the Respondent has used the disputed domain name, which being identical to the Complainant’s fanciful mark carries a high risk of implied affiliation, to present a parked website, clearly reflecting the Respondent’s intention to attract traffic to his website, which cannot confer rights or legitimate interests upon the Respondent.

In accordance with the established jurisprudence of the Policy, the burden of production on the Respondent’s
rights or legitimate interests thus shifts to the Respondent to come forward with relevant evidence. The
Respondent has not filed a Response.

The Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complainant succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant's assertions that the trademark PATEK is a well-known trademark.

The incorporation of a well-known trademark into a domain name by a registrant having no plausible
explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison
Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v.
CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,
WIPO Case No. D2000-1568).

The Respondent has registered the disputed domain name but has not put it to any material use. Rather, the disputed domain name resolves to a parked website.

According to the submission of the Complainant, which is not contested, the Respondent offered to sell the disputed domain name for apparently more than out-of-pocket expenses by requesting USD 400. The fact that the Respondent did not approach the Complainant does not change this evaluation.

From the above behavior of the Respondent, the Panel concludes that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant.

Given the Respondent’s lack of participation in this proceeding, the composition of the disputed domain name, and the lack of any credible good-faith use to which the identical disputed domain name could be put, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).

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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 <patek.group> be transferred to the Complainant.

/Emre Kerim Yardimci/
Emre Kerim Yardimci
Sole Panelist
Date: April 24, 2024