The Complainants are The Swatch Group AG (the “First Complainant”) and Swatch AG (the “Second Complainant”), both of Biel/Bienne, Switzerland, represented by FairWinds Partners, LLC, United States of America.
The Respondent is caizhen of Zhanjiang, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 22net, Inc. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2017. On March 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On March 30, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on April 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2017.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 3, 2017. 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 Complainants design, manufacture and sell wristwatches. The First Complainant is the parent company of the Second Complainant. The First Complainant owns International Trademark Registration number 1187122 for SWATCH GROUP, registered from September 18, 2013, designating multiple jurisdictions including China and Japan, and specifying services in multiple classes including retail and wholesale services via worldwide informatic networks in class 35. The Second Complainant owns trademark registrations including Chinese trademark registration number 232954 for SWATCH in a particular script, registered from September 15, 1985, specifying quartz wristwatches and parts thereof in class 14; and Japanese trademark registration number 2184860 for SWATCH in a particular script, registered from October 31, 1989, specifying horological instruments and parts thereof in class 14. The Complainants have also registered the domain names and which they use in connection with their official websites to provide information about The Swatch Group AG and SWATCH brand products, respectively.
The Respondent is an individual located in Zhanjiang, Guangdong, China and the registrant of the disputed domain name. The disputed domain name was created on June 20, 2016. It resolves to a website in Japanese that offers for sale luxury brand goods including wristwatches, handbags, purses, belts and jewellery. Prices are displayed in Japanese yen. A banner across the top of the website advertises a website operated at the domain name . 5. Parties’ Contentions A. Complainants
The disputed domain name is confusingly similar to the Complainants’ SWATCH and SWATCH GROUP trademarks. The disputed domain name is a minor misspelling of these trademarks. The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” does nothing to alleviate confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s website displays links that divert visitors, who are likely the Complainants’ customers and potential customers, to buy goods, many of which are not offered by the Complainants and some of which are associated with the Complainants’ competitors. The Respondent is not commonly known by the disputed domain name or the name “Swatch”. The disputed domain name is not being used for the generic meaning of the word “swatch” in English. The Respondent has tarnished and diluted the Complainants’ trademarks as a result of its using those trademarks in association with a website that offers goods and services not associated with or related to the Complainants’ products and services.
The disputed domain name was registered and is being used in bad faith. The Respondent used the SWATCH and SWATCH GROUP trademarks without consent from the Complainants. The Respondent was on notice of the Complainants’ rights due to their extensive use of those trademarks and the Complainants’ cease-and-desist letters. The Respondent is using the disputed domain name primarily to disrupt the business of the Complainants. The Respondent uses the disputed domain name to promote third party goods and services which are either competitive with, or unrelated to, those provided by the Complainants. The Respondent is a serial cybersquatter who owns other domain names that are similar to well-known trademarks. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainants request that the language of the proceeding be English. Their main arguments are that the disputed domain name is composed of English words and that it would not be fair or equitable to require the Complainants to go to the unnecessary time and expense of translating their pleadings into another language. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Consolidation of Multiple Complainants
The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group. The First Complainant owns the trademark SWATCH GROUP and the Second Complainant owns the trademark SWATCH. The Panel finds that they have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below individually and collectively as “the Complainant” except as otherwise indicated. 6.3 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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
Based on the evidence submitted, the Panel finds that the Complainant has rights in the SWATCH and SWATCH GROUP trademarks.
The disputed domain name wholly incorporates the Complainant’s SWATCH trademark as its initial and only distinctive element. The disputed domain name includes the additional element “es”, which in context is merely a plural ending, and “group”, which is a dictionary word. Accordingly, the Panel does not find that either of these elements dispels confusing similarity between the disputed domain name and the SWATCH trademark for the purposes of the first element in paragraph 4(a) of the Policy. On the contrary, the addition of the word “group” creates confusing similarity between the disputed domain name and the Complainant’s SWATCH GROUP trademark. The only difference between them is the interposition of the plural ending “es” between the words “swatch” and “group” in the disputed domain name. The Panel finds this difference to be too minor to dispel confusing similarity to the SWATCH GROUP trademark.
The only other additional element in the disputed domain name is the gTLD suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s SWATCH and SWATCH GROUP trademarks. Although “swatch” is a dictionary word in English meaning a small sample of fabric, the disputed domain name is not used in connection with a purpose relating to its dictionary sense. Rather, the website to which the disputed domain name resolves offers for sale a wide variety of goods, including watches that compete with the Complainant’s watches. That is not a use of the disputed domain name in connection with a bona fide offering of goods or services within the terms of the first circumstance of paragraph 4(c) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The name of the Respondent is “caizhen” not “swatchesgroup” or “swatches”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the terms of the second circumstance of paragraph 4(c) of the Policy.
The disputed domain name resolves to a website offering goods for sale. That is not a legitimate noncommercial or fair use within the terms of the third circumstance of paragraph 4(c) of the Policy.
Accordingly, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”
The disputed domain name was registered in 2016, decades after the Complainant obtained its trademark registrations of SWATCH, and years after the Complainant obtained its trademark registration of SWATCH GROUP, including in China, where the Respondent is located. The Complainant has made extensive use of these trademarks in connection with watches around the world. The disputed domain name wholly incorporates the Complainant’s SWATCH trademark and it also incorporates the Complainant’s SWATCH GROUP trademark with only the interposition of the plural ending “es”. The disputed domain name contains no other distinctive element. Although “swatch” is a dictionary word in English, the disputed domain name is not used in connection with a purpose relating to its dictionary sense. The Respondent’s website offers for sale watches, among other goods. This all gives the Panel reason to believe that the Respondent deliberately registered the Complainant’s trademarks as part of the disputed domain name in bad faith.
The Respondent uses the disputed domain name, including the Complainant’s trademarks, with a website that offers goods for sale, including watches that compete with the Complainant’s watches. Given these facts, the Panel considers that the disputed domain name is being used intentionally to an attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 be transferred to the Complainants.
Matthew Kennedy
Sole Panelist
Date: May 8, 2017
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