What
Domain name dispute between 2 retailers.
Who
The Complainant, Rivoli Group LLC, is a well known purveyor of
luxury goods in the region particularly in the UAE with a multitude
of retail outlets.
The Respondent, Brilliant Watches LLC, is a competitor in the
fiercely competitive retail watch market.
The Prize
www.rivoliwatch.com
Why
RIVOLI is the Complainant's house mark, which it has cultivated
over decades to become a household name in luxury goods. The
Complainant enjoys substantial goodwill and reputation in its
RIVOLI mark.
The use of RIVOLI in
www.rivoliwatch.com is unauthorised and detrimental to
the Complainant as it seeks to divert business away from the
Complainant and results in brand dilution of its RIVOLI mark.
Where
World Intellectual Property Organization ("WIPO')
Arbitration and Mediation Centre under the Rules for Uniform Domain
Name Dispute Resolution Policy
Facts of the Case
The Respondent had registered the disputed domain name and had been
using it by maintaining it such that all internet traffic to the
domain name is automatically diverted to the domain name, an active
website which provides extensive information and offers watches for
sale including RIVOLI branded watches.
The Complainant has trade mark registrations for RIVOLI in a number
of countries and has been using RIVOLI as a trade name since
1976.
The Complainant had finally succeeded in cancelling a trade mark
registration for RIVOLI held by a company related to the Respondent
following protracted litigation.
The Complainant's Case
The disputed domain name is confusingly similar to marks in which
the Complainant has rights, the Respondent has no rights or
legitimate interests in use of the disputed domain name and the
Respondent's registration and use of the disputed domain name
is in bad faith.
The Respondent's Case
The Respondent alleged that they have trade mark registrations for
RIVOLI in Pakistan, India, Kuwait and Switzerland and have been
selling RIVOLI branded watches since 1994 in multiple markets such
as UAE, U.K., Russia, Qatar, Saudi Arabia, Kuwait, Pakistan,
Jordan, India and many African countries.
WIPO's Findings
1. The WIPO Panel agreed with the Complainant that the disputed
domain name had incorporated its RIVOLI trade mark in its entirety
and crucially that the addition of the descriptive term, watch, had
actually exacerbated the risk of confusion experienced by internet
users because the disputed domain name implies that Respondent is
offering the Complainant's goods for sale.
This significant finding underscores the Respondent's lack of
bona fides.
2. It was found that the Respondent's use of the disputed
domain name cannot be characterised as use in connection with the
bona fide offering of goods. The Complainant had argued that the
Respondent's conduct in using the domain name to divert
internet users to the Respondent's own website, which offers
competing watches with full knowledge of the Complainant's name
and its trade mark following the lawsuits in which its related
company was embroiled in must necessarily lead to the inescapable
conclusion that there was no bona fide offering of goods under the
disputed domain name.
3. The WIPO Panel found that the disputed domain name was
registered and used in bad faith.
The Complainant had vigorously argued that there was no plausible
reason why the Respondent would have chosen to use RIVOLI as part
of the disputed domain name except to misappropriate the vault of
goodwill and reputation, which the Complainant had painstakingly
cultivated over decades of use. Quite clearly,
www.rivoliwatch.com was not a domain name, which any
user would have chosen unless they knew of the RIVOLI trade mark
and the custom, which it attracts. The Respondent had manifestly
registered the domain name solely for the purpose of attracting
users who type in in the presumption that they will reach a site
operated by the Complainant relating to watches.
It was obvious from the matrix of use with the auto redirect from
the disputed domain name to the Respondent's own website, which
offers competing watches that the disputed domain name was being
used in bad faith.
Accordingly, the WIPO Panel was satisfied that the Complainant had
succeeded in proving its case and ordered that the disputed domain
name be transferred to the Complainant.
Learnings
Fortifying one's cyber presence has never been more important
as an increasing number of users log onto the internet to shop and
be entertained especially in the Middle East where internet
penetration is set to balloon as indicated by the recent
introduction of more available domains such as the Arabic domain
names in Saudi Arabia (.alsaudiah), UAE (.emarat), Egypt (.misr),
Jordan (.alordon) and Palestine (.falasteen).
It is important to be vigilant in monitoring any unauthorised usage
of your intellectual property in cyberspace and to act swiftly and
decisively in rooting out the problem. Using the WIPO Arbitration
and Mediation Centre as a means to do so has proven highly
effective and quick in resolving domain name disputes. The fact
that the Complainant has been vigilant in enforcing its rights
against offenders in cyberspace was important in shoring up its
arguments that any attempt to free ride on its substantial goodwill
and reputation was damaging to its brand integrity and likely to
cause brand dilution.
This significant case represents yet another decisive victory for
the Al Tamimi & Company Domain Name Dispute Resolution
practice, part of our award winning IP/IT practice which continues
to counsel clients in ensuring that their valuable goodwill and
reputation is well protected in cyberspace.
In the celebrated case, which reached the Abu Dhabi Supreme Federal
Court, the litigation team headed by senior counsel, Al Tamimi
& Company founder & Senior Partner, Essam Al Tamimi, had
successfully convinced the court in overturning the Abu Dhabi
Federal Court of Appeal's decision to cancel the RIVOLI
registration. The decision represented a high water mark for issues
concerning use of a trade name and the resultant rights
thereto.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.