The Complainant is Swatch AG of Bienne, Switzerland, represented by FairWinds Partners, LLC, United States of America.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America/ Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with D LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2016. On July 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2016, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2016 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 July 11, 2016.
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 July 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2016.
The Center appointed Zoltán Takács as the sole panelist in this matter on August 15, 2016. 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background
The Complainant is a worldwide leader in design, manufacture, sale and retail of wristwatches and has hundreds of dedicated, branded retail stores throughout North America, Europe, the Middle East, Central and South America, Asia and Australia, as well as a growing number of online shops.
The Complainant owns great number of trademark registrations for the mark SWATCH, e.g.:
- US Trade Mark registration No. 1980517 registered on June 18, 1996 for goods and services of Class 25 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter: the “Nice Classification”); and
- the European Union Trade Mark (“EUTM”) registration No. 000226019 registered on October 2, 1998 for goods and services of Class 14 of the Nice Classification.
Since June 11, 1996 the Complainant owns the domain name which it has been using to promote the SWATCH brand as well as its products and services on the Internet.
The disputed domain name was registered on April 9, 2016.
Both at the time of filing of the Complaint and rendering of this administrative decision the disputed domain name resolved to a pay-per-click website displaying links to other websites which are not associated with the Complainant but which refer to wristwatches. 5. Parties’ Contentions A. Complainant
The Complainant contends that apart from the generic Top-Level Domain (“gTLD”) “.com” and the letters “www” the disputed domain name is identical on its face to the Complainant’s SWATCH trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Given the worldwide fame of the Complainant’s SWATCH trademark, the Respondent most likely knew of it at the time of registering the disputed domain name.
The Complainant states that the fact that the disputed domain name resolves to a pay-per-click website of the Respondent indicates that the disputed domain name was obtained with intent to ride on reputation of the Complainant’s SWATCH trademark.
In addition, the Complainant states that the Respondent has already been involved in great number of UDRP proceedings leading to transfers and it appears that the Respondent is familiar with registration of domain names reproducing third parties’ prior rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”.
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(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 in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademark SWATCH, and for the purpose of this proceeding, the Panel establishes that the Complainant’s US Trade Mark registration No. 1980517 and EUTM registration No. 000226019 for the mark SWATCH satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the SWATCH mark, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the SWATCH trademark of the Complainant.
According to paragraph 1.2 of the WIPO Overview 2.0, the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine Internet user confusion.
In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, negative terms in the domain name typically being regarded as insufficient to prevent threshold Internet user confusion. In addition, the applicable gTLD suffix in the domain name would also be usually disregarded under the confusing similarity test, as it is a technical requirement of registration.
The disputed domain name contains the Complainant’s SWATCH trademark in its entirety. The applicable gTLD suffix in the disputed domain name, “.com” should in relation to this administrative proceeding be disregarded.
The only element in the disputed domain name other than the widely-known SWATCH trademark of the Complainant is the dictionary word “www”, the acronym which stands for World Wide Web. Addition of the letters “www” is irrelevant for purposes of paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain name is confusingly similar to the SWATCH trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it 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.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark SWATCH.
The Complainant has never authorized the Respondent to use its SWATCH trademark in any way, and the Complainant’s prior rights in the SWATCH trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden of proof rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.
If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant’s SWATCH trademark is widely known, and the disputed domain name is reproducing it in its entirety. These facts lead the Panel to conclude that the Respondent must have been aware of the Complainant’s trademark at the time of obtaining the disputed domain name.
The disputed domain name resolved and resolves to a pay-per-click website displaying links to “Swatch Watches”, “Swatch Swiss”, “Swatch Store” and “Swatch Shop” which are not associated with the Complainant.
According to paragraph 3.8 of the WIPO Overview 2.0, “a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content- for example, in case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks”.
The Panel cannot conceive of any legitimate use that the Respondent could plausibly make of the disputed domain name, which incorporates the Complainant’s trademark in its entirety.
In the Panel’s opinion the only plausible explanation for the Respondent’s choice to register the disputed domain name that reproduces the widely-known trademark of the Complainant is to exploit the reputation behind the SWATCH trademark without any authorization or rights to do so.
The Respondent’s failure to respond to repeated communication from the Complainant and its initial use of the identity shield in view of this Panel support presumption of bad faith disregard for the trademark rights of others.
It is difficult to see and find any reason for the Respondent’s use of the domain name privacy service other than to make it as difficult as possible for the Complainant to identify the registrant of the disputed domain name and protect its trademark rights against cybersquatting, which does not reflect good faith.
The Complainant produced evidence that the Respondent had already been involved in a number of UDRP cases because of registering domain names reproducing or incorporating trademarks of third parties, such as inter alia Fenix Outdoor AB v. Milen Radumilo/Perfect Privacy, LLC,WIPO Case No. D2016-0333; Celgene Corporation v. Milen Radumilo,WIPO Case No. D2016-0018; Intesa Sanpaolo S.p.A. v. Milen Radumilo Privacy Protection Service, Communigal Communication Ltd.,WIPO Case No. D2015-2290; Carrefour v. Milen Radumilo/United Privacy Corp,WIPO Case No. D2015-1851; Bharti Airtel Limited v. Milen Radumilo,WIPO Case No. D2015-1948.
All of these proceedings resulted in transfers of the corresponding domain names registered by the Respondent, since all panels found bad faith registration and use of the domain names by the Respondent.
The Panel finds that the Respondent has engaged in a pattern of conduct of bad faith registration and use of domain names incorporating trademarks of third parties.
In view of this Panel, all the above discussed facts and circumstances unquestionably support applicability of paragraphs 4(b)(ii) and (iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Date: August 28, 2016
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