The Complainant is The Swatch Group Management Services Ltd., Switzerland, internally represented, Switzerland.
The Respondent is Pavel Polikarpov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2019. On December 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 December 27, 2019 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 January 2, 2020. 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 January 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2020. The Center appointed Assen Alexiev as the sole panelist in this matter on February 5, 2020. 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 is a subsidiary of The Swatch Group Ltd, the world’s leading designer, manufacturer, seller, and retailer of wristwatches. The group includes such brands as HARRY WINSTON, BREGUET, BLANCPAIN, GLASHÜTTE ORIGINAL, OMEGA, LONGINES, RADO, TISSOT, SWATCH, and others. The Complainant is the owner of the following trademark registrations for the sign “Tourbillon” (the “TOURBILLON trademark”): - the International trademark TOURBILLON with design with registration No.966805, registered on May 30, 2008 for services in International Classes 35 and 37, covering various jurisdictions, designating the Russian Federation and Ukraine; - the European Union trademark TOURBILLON with registration No.006199145, registered on August 21, 2008 for goods and services in International Classes 14, 35 and 37. The Complainant maintains an official website at “www.tourbillon.com”. The disputed domain name was registered on April 11, 2016. It resolves to a Russian language commercial website offering various brands of luxury watches for sale. 5. Parties’ Contentions A. Complainant The Complainant states that the word “tourbillon” means “whirlwind” in the French language and it is also the name of a particular type of wristwatch movement, developed around 1795 and patented by the French-Swiss watchmaker Abraham-Louis Breguet-the founder of the BREGUET brand, now belonging to the Complainant’s group. Since 2008, the Complainant has used the sign “Tourbillon” for its retail stores offering luxury wristwatches and jewelry and their repair and maintenance. There are now 13 Tourbillon stores around the world, including in San Francisco, Las Vegas, Amsterdam, Miami, Moscow and St. Petersburg. The Complainant submits that the disputed domain name is identical to the Complainant’s TOURBILLON trademark, as it incorporates the entirety of the trademark. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has not authorized the Respondent to use the TOURBILLON trademark. The Complainant maintains that the Respondent incorporated the TOURBILLON trademark in the disputed domain name in an attempt to capitalize on the fame of this trademark for financial gain through the sale of grey market or possibly counterfeit watches. The Complainant points out that the Respondent’s website features a logo, which copies the TOURBILLON trademark, and offers not only watches of several brands of the Complainant’s group but also of competitor brands, without disclosing the lack of commercial relationship with the Complainant. In addition, the “About us” section of the Respondent’s website includes the misleading statement “We only work with authorized dealers who sell original premium watches.” thus suggesting a connection to the Complainant. The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent’s website features a logo which copies the Complainant’s TOURBILLON trademark and offers watches of several brands of the Complainant’s group, intensively using the Complainant’s official product images and marketing materials without authorization, while at the same time falsely claiming copyright in this material. According to the Complainant, this shows that the Respondent registered the disputed domain name with knowledge of the TOURBILLON trademark and uses it in an attempt to create the false impression of a commercial relationship with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (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 Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent has however not submitted a Response in this proceeding and has not disputed the arguments of the Complainant and the evidence that it has put forward. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the TOURBILLON trademark for the purposes of the Policy. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.top” gTLD section of the disputed domain name. The relevant part of the disputed domain name is therefore the element “tourbillon”, which is identical to the TOURBILLON trademark. Therefore, the Panel finds that the disputed domain name is identical to the TOURBILLON trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Complainant has not authorized the Respondent to use the TOURBILLON trademark and that the Respondent has incorporated the TOURBILLON trademark in the disputed domain name in an attempt to capitalize on the fame of this trademark for financial gain through the sale of grey market or possibly counterfeit watches. The Complainant points out that the disputed domain name resolves to a website that features a copy of the TOURBILLON trademark (including a logo similar to one of the TOURBILLON marks with design) and is offering for sale various watches of luxury brands of the Complainant and of its competitors, without disclosing the lack of relationship between the Parties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not submitted any arguments in support of the existence of any rights and legitimate interests in the disputed domain name, and has not denied the allegations of the Complainant or disputed the evidence that it has brought forward. The disputed domain name is identical to the TOURBILLON trademark. The evidence shows that it has been used for a commercial website with the title “Catalogue of original wristwatches Tag Heuer, Omega, Breitling and others. Best prices in Ukraine.” The website features the TOURBILLON trademark and various product photos and claims the copyright in its content, without disclosing the lack of relationship between the Parties. In view of this, it appears likely to the Panel that by registering and using the disputed domain name, the Respondent has attempted to capitalize on the reputation and goodwill associated with the TOURBILLON trademark by attracting and confusing Internet users that the disputed domain name and the associated website are affiliated to or endorsed by the Complainant, and then offering to visitors not only watches of the Complainant’s group but also of its competitors. In the Panel’s view, such conduct is not legitimate and cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(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 disputed domain name is identical to the TOURBILLON trademark. As discussed above, the undisputed evidence shows that it has been used for a commercial website offering wristwatches of various brands, including those of the Complainant’s group and of its competitors. The website features the TOURBILLON trademark and various marketing materials and claims the copyright in its content, without disclosing the lack of relationship between the Parties. This is sufficient to satisfy the Panel that it is more likely than not that the Respondent was well aware of the goodwill of the TOURBILLON trademark when it registered the disputed domain name and that its registration was made in view of its goodwill and in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the TOURBILLON trademark as to the affiliation or endorsement by the Complainant of the Respondent’s website and of the products offered on it. Taking the above into account, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith. 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 Assen Alexiev
Sole Panelist
Date: February 14, 2020
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