The Complainant is Swatch Ltd. of Biel, Switzerland, represented by Baker & McKenzie, Netherlands.
The Respondent is Jenneke van der Meijden of Herwijnen, Netherlands, represented by De Gier / Stam & Advocaten, Netherlands. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2011. On September 16, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On September 16, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 10, 2011. On October 4, 2011, the Center received an email communication from the Respondent’s representatives requesting to extend the due date for the response until October 21, 2011. The Complainant agreed to extend the due date for the response until October 17, 2011, which date was then set accordingly by the Center on October 7, 2011. The Response was filed with the Center on October 17, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 21, 2011. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a member of the Swatch Group Ltd., an international group with more than 25,000 employees in over 50 countries worldwide, whose business consists of the design, manufacture and sale of finished watches, jewelry, watch movements and components. The Swatch Group is the number one manufacturer of finished watches in the world.
The Complainant is registered owner of numerous trademarks for SWATCH, including International Registration no. 469696 SWATCH registered in 1982; International Registration no. 506123 SWATCH & design registered in 1986; Community trademark registration no. 000226316 SWATCH & design registered in 1998; and Community trademark registration no. 000226019 SWATCH registered in 1998 (hereinafter referred to as the “SWATCH Marks”). All of the aforementioned SWATCH Marks cover the BENELUX countries, i.e., Belgium, Netherlands and Luxembourg.
The Complainant offers its goods and services online on websites available at various domain names, including , , , , and .
The disputed domain names were registered on January 19, 2001 () and September 11, 1997 () in the name of WATCH STORE ROTTERDAM B.V., which had sold the Complainant’s products since 1996 and was the first franchisee of the Complainant in the Netherlands. The franchise agreement was signed in February 1999 and terminated in 2006, when WATCH STORE ROTTERDAM B.V. sold its shops in Amsterdam, Rotterdam and the Hague as well as the inventory of the aforementioned shops to the Complainant.
The Respondent in this proceeding is an employee of the hosting company Quickproducts, which took care of all matters regarding the domain names, e-mail addresses and hosting space of WATCH STORE ROTTERDAM B.V., and WATCH STORE ROTTERDAM B.V.’s account manager with Quickproducts. The domain names were accidentally registered in the name of the Respondent in 2005 after having been transferred to Quickproducts from another registrar. Still, WATCH STORE ROTTERDAM B.V. has continuously paid for the renewal of the disputed domain names until today.
The website available at is a standard placeholder website provided by the Respondent’s registrar, while the website at shows an “under construction” sign and the registered SWATCH logo. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is met in the present case:
(1) The disputed domain names are identical or confusingly similar to the Complainant's SWATCH Marks, as they incorporate the SWATCH Marks in their entirety as a dominant element and the additional elements “business” and “store” do not distinguish or differentiate the disputed domain names from the SWATCH Marks, as they are generic or descriptive elements that only increase the likelihood of confusion.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names as the Complainant has not authorized or licensed the Respondent to use the famous and distinctive SWATCH Marks, as there is no evidence that the disputed domain names are used in connection with a bona fide offering of goods or services (but are used in connection with placeholder and under construction websites), as the Respondent is not commonly known by the disputed domain names, and as the disputed domain names are not used in connection with a noncommercial or fair content.
(3) The disputed domain names were registered and are being used in bad faith. With regard to bad faith registration, the Complainant contends that the SWATCH Marks have been used for more than 15 years, that it has always actively used the marks both as trademark and trade name in the Dutch, European and worldwide market, and that the Respondent must have been aware of the existence and use of the SWATCH Marks by the Complainant prior to the registration of the disputed domain names. With regard to bad faith use, the Complainant contends that the Respondent is using the disputed domain names in bad faith through passive holding which indicates the Respondent’s intention to sell the disputed domain names for valuable consideration in excess of the documented out-of-pocket-costs directly related to the disputed domain names. B. Respondent
The Respondent, referring to WATCH STORE ROTTERDAM B.V. and Jenneke van der Meijden collectively as the “Respondent”, denies the remedies asked for by the Complainant and requests a finding that the Complaint was brought in bad faith and constitutes an abuse of this administrative proceeding.
The Respondent contends that the Complainant conceals that WATCH STORE ROTTERDAM B.V. used to be the first franchisee of the Complainant in the Netherlands, that the Complainant has been aware of the registration of the disputed domain names since 1997 with respect to the domain name and since 2000 with respect to the domain name , that the disputed domain name was in fact registered by the Complainant itself in the name of WATCH STORE ROTTERDAM B.V., and that the attorneys-at-law of the Respondent and the Complainant were in touch earlier this year with regard to the disputed domain names, when the Respondent denied the alleged claims of infringement, relying on the facts included in the Response as well as its annexes.
The Respondent argues that the registration of the disputed domain names was approved by the Complainant, intending to grant Internet access to WATCH STORE ROTTERDAM B.V. as a franchisee and to prevent third parties such as unofficial Swatch dealers from registering the disputed domain names.
With regard to the elements specified in paragraph 4(a) of the Policy, the Respondent states that the second and third elements are not present in this case.
(1) The Respondent argues that it can rely on rights or legitimate interests of WATCH STORE ROTTERDAM B.V. in the disputed domain names.
It states that after it started to sell the Complainant’s products in 1996, the Complainant gave WATCH STORE ROTTERDAM B.V. the permission to use the Swatch trademarks in its company name, which was subsequently changed to “Swatch Store Rotterdam”. The Respondent further states that WATCH STORE ROTTERDAM B.V. registered the domain name in 1997 and asked the Complainant for permission before doing so. The Respondent contends that the Complainant pointed out to WATCH STORE ROTTERDAM B.V. that an unofficial dealer of watches in Rotterdam wished to sell “Swatch” watches as well and that it was decided that WATCH STORE ROTTERDAM B.V. should register the domain name in order to prevent that other party from registering it. Furthermore, the Respondent contends that the Complainant initially gave WATCH STORE ROTTERDAM B.V. the permission to host a web shop at in 2001, which was online for a couple of months before the Complainant ordered WATCH STORE ROTTERDAM B.V. to take it down. With regard to , the Respondent states that the domain name was originally meant to point to a website where companies could order tailor-made watches, for example with their company logo. However, after shutting down the web shop at never got off the ground either.
The Respondent contends that the Complainant and WATCH STORE ROTTERDAM B.V. debated in length over the purchase price of the shops in Amsterdam, Rotterdam and the Hague in 2006 when the franchise agreement was terminated, and that the disputed domain names were eventually exempt from the transfer because the parties could not agree on a purchase price.
(2) With regard to bad faith registration and use, the Respondent argues that WATCH STORE ROTTERDAM B.V. registered the disputed domain names in good faith and that a registration originally made in good faith cannot turn into a bad faith registration. It states that WATCH STORE ROTTERDAM B.V. had solid reasons to register the domain name , consisting of its former trading name, with the prior written permission of the Complainant, and that WATCH STORE ROTTERDAM B.V. wished to use the domain name to run a web shop at the time of the registration. The Respondent states that the domain name was nota bene registered by the Complainant itself, in the name of WATCH STORE ROTTERDAM B.V. The Respondent states that WATCH STORE ROTTERDAM B.V. registered the disputed domain names in connection with the bona fide offering of the Complainant’s goods and that WATCH STORE ROTTERDAM B.V. reasonably believed that the Complainant, through the Complainant’s manager, approved of WATCH STORE ROTTERDAM B.V.’s registration and use of the disputed domain names and did not object to WATCH STORE ROTTERDAM B.V. retaining the disputed domain names in 2006. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain names are identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names fully incorporate the Complainant’s SWATCH Marks, in which the Complainant has exclusive rights, and are confusingly similar to such marks.
Firstly, the fact that some of the Complainant’s SWATCH Marks include additional graphical elements does not hinder a finding of confusing similarity under the Policy. It is well established that the similarity between a trademark and a disputed domain name is not necessarily eliminated by the fact that the trademark includes additional graphical elements (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932).
Secondly, the additional words “business” and “store” in the disputed domain names are merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “business” and “store” (cf. PICK ‘N PAY Retailers (Proprietary) Limited v. Menno H and Partyvrienden,WIPO Case No. D2008-1985 ( et al.); MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2008-1999 ( et al.); Embarq Management Company v. BizZoo BizZoo.Biz, NAF Claim No. 1015118 (); TXDC, L.P. v. James Northcott, NAF Claim No. 144650 ( et al.); Target Brands, Inc. v. Bealo Group S.A., NAF Claim No. 128684 ()).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of production in rebutting the Complainant’s prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy, and the burden of rebuttal is correspondingly shifted to the Respondent.
However, the Respondent brought forward additional facts and evidence, which in the Panel’s assessment could conceivably support rights or legitimate interests on the part of WATCH STORE ROTTERDAM B.V. in the disputed domain names for the purpose of the Policy. According to the evidence provided by the Respondent, the disputed domain name was registered by the Complainant itself in the name of its former licensee WATCH STORE ROTTERDAM B.V. The domain name was registered by WATCH STORE ROTTERDAM B.V. at a point of time when it already sold the Complainant’s products. Furthermore, the Complainant was aware of this domain name registration and has, if not approved, at least not objected it. The Panel therefore finds in favor of rights or legitimate interests of WATCH STORE ROTTERDAM B.V. in the disputed domain names.
There is also a question as to whether Jenneke van der Meijden, who is the current registered owner of the disputed domain names, could rely on WATCH STORE ROTTERDAM B.V.’s rights or legitimate interests in the disputed domain names for purposes of these proceedings if the Panel were to make a finding in favor of WATCH STORE ROTTERDAM B.V. in this respect. Based on the evidence before the Panel, the disputed domain names were accidentally transferred to Jenneke van der Meijden in 2005, when WATCH STORE ROTTERDAM B.V. was still the Complainant’s franchisee. Furthermore, when acquiring the “Swatch” shops from WATCH STORE ROTTERDAM B.V. in 2006, the parties discussed the transfer of WATCH STORE ROTTERDAM B.V.’s domain names and decided not to include them in the purchase agreement - not because they were not registered in the name of WATCH STORE ROTTERDAM B.V. but because the parties would otherwise not have been able to negotiate a purchase price. Given that the Complainant itself felt confident that WATCH STORE ROTTERDAM B.V. was the beneficial owner of the disputed domain names and that it discussed their acquisition with WATCH STORE ROTTERDAM B.V. even after the disputed domain names had been transferred to Jenneke van der Meijden, the Panel finds that the Complainant was, in all likelihood, aware that WATCH STORE ROTTERDAM B.V. is the beneficial owner of the disputed domain names. Thus, the Panel would be inclined towards a conclusion in the circumstances and record of this case that Jenneke van der Meijden could indeed rely on WATCH STORE ROTTERDAM B.V.’s rights or legitimate interests in the disputed domain names if the Panel were to make a finding under the second element of the Policy in favor of the Complainant’s former franchisee.
Ultimately, however, because of its findings under the third element, the Panel need not reach a final conclusion as to whether the Respondent has rights or legitimate interests in the disputed domain names for purposes of the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Based on the evidence before the Panel, the Panel finds that the disputed domain names were not registered in bad faith and that the Complaint consequently fails. The Respondent provided evidence in these Policy proceedings that the disputed domain names were both registered after WATCH STORE ROTTERDAM B.V. started to sell the Complainant’s products and that the Complainant was aware of the domain name registrations from the very beginning. Furthermore, it is clear to this Panel from the evidence provided by the Respondent that the disputed domain name was in fact registered by the Complainant itself in the name of WATCH STORE ROTTERDAM B.V., and that WATCH STORE ROTTERDAM B.V. built a web shop for the Complainant’s products at with the Complainant’s consent. Therefore, the Panel finds that the disputed domain names were not registered in bad faith, but rather, for the purpose of the authorized distributorship of the Complainant’s products.
As already found by previous panels, a complainant’s inability to establish registration of disputed domain names in bad faith will generally be fatal to its case under the Policy – and the Panel makes such finding on the record in the present case, (e.g., Finlandia-Uistin Oy v. Juha P. Raatikainen,WIPO Case No. D2007-0570; Telaxis Communications Corp. v. William E. Minkle,WIPO Case No. D2000-0005; Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS,WIPO Case No. D2004-1085; Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI),WIPO Case No. D2001-0782; Teradyne, Inc. v. 4Tel Technology,WIPO Case No. D2000-0026). Naturally, such finding under the Policy does not curtail recourse to pursue other legal options including the courts.
Consequently, the Panel finds that the Complainant failed in these Policy proceedings to satisfy the requirements of paragraph 4(a)(iii) of the Policy. 7. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover, paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
In the present case, where the Complainant owns trademark rights confusingly similar to the disputed domain names and where the legal aspects of the case with regard to the Respondent’s rights or legitimate interests are not undisputed, the Panel declines to make a finding of reverse domain name hijacking. 8. Decision
For the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Dated: November 4, 2011
Full & Egal Universal Law Academy