The Complainants are Swatch Group AG (the “First Complainant”) and Swatch AG, Switzerland (the “Second Complainant”), represented internally.
The Respondent is Deena Newman, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 15, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 22, 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 November 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2019. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 24, 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 Complainants are designers, manufacturers, sellers, and retailers of wristwatches and other fashion accessories, having their registered offices in Switzerland. The First Complainant, The Swatch Group AG, is the parent company of the Second Complainant, Swatch AG. The Complainants are the owners of various trademark registrations for the marks SWATCH and SWATCH GROUP, including: - , International trademark number 496846, registered on September 5, 1985, in numerous classes of goods and services and designating numerous jurisdictions; - SWATCH, Canadian trademark number TMA622953, registered on October 20, 2004, in class 14; - SWATCH GROUP, International trademark number 1187122, registered on September 18, 2013, in numerous classes of goods and services and designating 5 jurisdictions. The Disputed Domain Name was registered on October 22, 2019. The Disputed Domain Name does not appear to have resolved to any active website. However, the Complainants have provided evidence of emails sent from an email address linked to the Disputed Domain Name to one of the Complainants’ employees and to third parties. This email address also uses the name of an employee of one of the Complainants’ subsidiaries. 5. Parties’ Contentions A. Complainants The Complainants state that they have continuously used the marks SWATCH and SWATCH GROUP since at least 1983 and that the marks are distinctive of the Complainants as an industry leader in the field of wristwatches. The Complainants produce evidence of substantial sponsorship, advertising and promotion associated with the marks SWATCH and SWATCH GROUP and of significant public recognition of those marks. The Complainants submit that the Disputed Domain Name is identical or confusingly similar to their trademarks SWATCH and SWATCH GROUP. The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, as it is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Finally, the Complainants submit that the Respondent registered and used the Disputed Domain Name in bad faith. The Complainants refer to phishing emails sent from an address linked to the Disputed Domain Name and using the name of a person employed by the affiliate of the First Complainant. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Preliminary Procedural Issue: Multiple Complainants In the present case, the Complaint was filed by two Complainants. While the Policy and Rules do not directly contemplate the consolidation of multiple complainants in a single administrative complaint, numerous panels have found that in certain circumstances such a consolidation may be permitted. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (see section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the case at hand, it is clear from the evidence provided by the Complainants that the First Complainant is the parent company of the Second Complainant and that the Complainants therefore belong to the same corporate group with some sort of common control and management. The Panel therefore finds that it is sufficiently established that the Complainants have a specific common grievance against the Respondent and that it would be equitable and procedurally efficient to consolidate the Complainants. 6.2. Substantive elements of the Policy Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The onus is on the Complainants to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities. Thus, for the Complainants to succeed they must prove, within the meaning of paragraph 4(a) of the Policy, that: (i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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. The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar To prove this element, the Complainants must first establish that there is a trademark or service mark in which they have rights. The Complainants have both clearly established that they have trademarks rights for SWATCH and SWATCH GROUP. The Complainants’ SWATCH and SWATCH GROUP trademarks have been registered and extensively used in connection to their business. The Disputed Domain Name incorporates the Complainants’ SWATCH and SWATCH GROUP trademarks in their entirety, merely adding the letter “e”. As stated at section 1.8 of the WIPO overview 3.0, where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity. In this case, the Panel finds that the confusing similarity is obvious as only one letter has been added to the Complainants’ SWATCH GROUP trademark. Additionally, it is well established that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainants have rights. In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainants’ SWATCH and SWATCH GROUP trademarks. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As established by previous UDRP panels, it is sufficient for the Complainants to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see> section 2.1 of the WIPO Overview 3.0 ). The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the WhoIs records connected to the Disputed Domain Name, the Respondent is “Deena Newman”. There are no indications that a connection between the Complainants and the Respondent existed. Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. While the Disputed Domain Name currently does not resolve to an active webpage, the Respondent has actively used an email address connected to the Disputed Domain Name with an intent to mislead one of the Complainants’ subsidiaries and third parties. The email address and signature of the emails mentioned the name of an employee of The Swatch Group (Canada) Ltd., which is one of the Complainants’ subsidiaries. Evidently, such a use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name. Previous UDRP panels have 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 the Respondent (see section 2.13 of the WIPO Overview 3.0). The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a reply from the Respondent, the prima facie case established by the Complainants has not been rebutted. Therefore, the Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainants succeed on the second element of the Policy. C. Registered and Used in Bad Faith The Complainants must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location. In the present case, it is inconceivable that the Respondent was unaware of the Complainants and its trademark rights when it registered the Disputed Domain Name. The Complainant provides a copy of several emails sent from an address connected to the Disputed Domain Name. The signature of the emails mentions The Swatch Group (Canada) Ltd., which is one of the Complainants’ subsidiaries, the address of this subsidiary’s registered offices and the name of an employee of this subsidiary. The Respondent specifically impersonated this employee in the emails. Considering the distinctive character of the Complainants’ SWATCH trademark, the Respondent must have had knowledge of the Complainants’ rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent’s awareness of the Complainants’ trademark rights at the time of registration suggests bad faith (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). In the present case, the Panel is of the opinion that the Complainants’ trademarks have a strong reputation, including in Canada where the Respondent is residing. This makes it difficult to conceive any plausible legitimate use of the Disputed Domain Name by the Respondent. Further, the Respondent has used an email address connected to the Disputed Domain Name to impersonate an employee of a subsidiary of the Complainants. Although the emails referred to by the Complainants do not indisputably show the Respondent’s intention for commercial gain, the Respondent’s use of the email address associated with the Disputed Domain Name constitutes bad faith (see section 3.4 of the WIPO Overview 3.0). Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainants also succeed on the third and last 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 Flip Jan Claude Petillion
Sole Panelist
Date: January 7, 2020
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