The Complainants are The Swatch Group AG, Switzerland, and Swatch AG, Switzerland (hereinafter the “Complainant”), represented internally.
The Respondent is thomas, thomas bolton, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2019. On July 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2019, 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 August 1, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On August 1, 2019, the Center sent a communication regarding a Complaint deficiency, inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 5, 2019.
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 August 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2019.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 6, 2019. 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 designs, manufactures, sells and retails wristwatches under the brand “Swatch”. The Complainant also has produced or produces apparel, sunglasses and other items under the same brand.
The Complainant’s business conglomerate obtained registrations for the trademark SWATCH in numerous countries, including in the United Stations of America (Registration Number 1356512, registered on August 27, 1985), since 1985, as well as international trademark registrations (such as Registration Number 506123, registered on September 9, 1986), since 1986. The Complainant’s business conglomerate also obtained registrations for the trademark SWATCH GROUP (Registration Number 1187122, registered on September 18, 2013), since 2013.
The Respondent registered the disputed domain name on April 30, 2019.
The Panel accessed the disputed domain name on September 15, 2019, at which time the disputed domain name did not resolve to any active website. According to the evidence submitted by the Complainant (Exhibit F to the Complaint), the email configuration has been activated for the disputed domain name. Phishing emails were sent from “[T.R]@” and “[B.H]@” between May and July of 2019, providing, inter alia, false banking details of “The Swatch Group (UK) LTD” for clients. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name incorporates the entirety of the well-known trademark SWATCH and trade name “Swatch Group” with a prefix comprising a geographical abbreviation for the United Kingdom. The addition of the geographic term “uk” is the only difference between the disputed domain name and the Complainant’s trade name. It has been held, in decisions too numerous to mention, that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, such as geographical indications, would not prevent a finding of confusing similarity under the first element. The addition of the geographic prefix “uk” does not prevent a finding of confusing similarity under the first element. The Respondent in the present dispute creates confusion by using a misspelling of the Complainant’s SWATCH and SWATCH GROUP marks (merely adding the letters “uk”), thereby seeking to make those who view the disputed domain name wrongly believe that it is a legitimate domain name of the Complainant. Even if those who encounter the dispute domain name realize it is not owned by the Complainant, they may nevertheless be led to believe that the Complainant endorsed, sponsored or affiliated itself with activities carried out using the disputed domain name.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. None of these circumstances apply to the Respondent in the present dispute. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and so its actions do not fall within Policy, paragraph 4(c)(iii).
- The disputed domain name was registered and is being used in bad faith. The Policy clearly explains that bad faith can be found where a respondent uses a domain name primarily for the purpose of disrupting the business of a competitor or intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. The disputed domain name has been used in phishing emails, which purported to come from persons employed by the affiliate of the Swatch Group AG, The Swatch Group UK (Limited). Where an email address connected to a disputed domain name is used to mislead clients of a complainant into paying fraudulent invoices, such use cannot be considered a legitimate noncommercial or fair use of a domain name. The Respondent used minor permutations of the trademark in an attempt to mislead the Complainant’s clients into paying fraudulent invoices. In response to the email sent from the disputed domain name, a client of the Complainant paid a significant sum relating to the fraudulent invoice. The Complainant provides evidence of emails sent to clients from “[...]@”, purporting to come from “The Swatch Group (UK) LTD” and requesting the processing of payments. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three 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
The Panel has no doubt that “swatch” is a term directly connected with the Complainant’s famous wristwatches.
Exhibit E to the Complaint shows trademark registrations for SWATCH and SWATCH GROUP in numerous countries as early as 1985 and 2013, respectively.
The trademark SWATCH is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark SWATCH merely by the addition of the prefix “uk” (which usually corresponds to the acronym of the United Kingdom), of the suffix “group” (commonly used to refer to a company conglomerate), as well as the generic Top-Level Domain (“gTLD”) extension “.com”.
Moreover, the trademark SWATCH GROUP is also wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s SWATCH GROUP trademark merely by the addition of the prefix “uk” and the gTLD “.com”.
Previous UDRP decisions have found that the mere addition of geographical or descriptive terms (such as the acronym “uk” and the term “group”) to a trademark in a domain name does not avoid a finding of confusing similarity (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284, ; and Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287, ).
It is also already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name has been used to send fraudulent emails in a phishing scheme targeting distributors and clients of the Complainant in an attempt to arrange payment for non-existent invoices.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “ukswatchgroup” was chosen to compose the disputed domain name.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent in April 2019, the trademark SWATCH was already widely-known and directly connected to the Complainant’s wristwatches.
The disputed domain name encompasses the trademarks SWATCH and SWATCH GROUP. The addition of the term “uk” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to a United Kingdom affiliate of the Complainant.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the adoption of the disputed domain name was a mere coincidence.
Currently no active website is linked to the disputed domain name, however, the fact that the disputed domain name has been used to send fraudulent emails in a phishing scheme targeting distributors and clients of the Complainant in an attempt to arrange payments for non-existing invoices is enough in this Panel’s view to characterize bad faith registration and use.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 Complainant.
Rodrigo Azevedo
Sole Panelist
Date: September 20, 2019
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