Complainants are Swatch Group AG and Swatch AG, Switzerland, represented internally.
Respondent is John Wison, 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 December 24, 2019. On December 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on January 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 13, 2020. The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on February 25, 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 Complainant Swatch Group AG is the parent company of Complainant Swatch AG.1 Complainants are leading designers, makers, sellers and retailers of wristwatches, apparel, sunglasses, and other items. Complainant Swatch Group AG owns a number of international registrations for the marks SWATCH GROUP (such as International Registration number 1187122, registered on September 18, 2013) and SWATCH (such as International Registration number 506123, registered on September 9, 2016), as used since 1988 on or in connection with retail services, watches, and jewelry. Complainants have fully owned and branded retail stores throughout North America, Canada, Europe, the Middle East, Africa, Central and South America, Asia, and Australia, as well as a growing number of e‑commerce shops available at “www.shop.swatch.com”. Major sporting events around the world are sponsored by Complainants and the SWATCH and SWATCH GROUP marks are promoted on various social media platforms. The disputed domain name, Complainants allege that the disputed domain name is confusingly similar to the marks SWATCH GROUP and SWATCH. Complainants point out that the disputed domain name incorporates in full the term “swatchgroup” together with descriptive (“accounting”) and generic (“.com”) terms. Complainants further contend that Respondent has no rights or legitimate interests in the disputed domain name. Complainants assert that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. While the term “swatch” has a dictionary meaning, Complainants point out that such term, as used in the disputed domain name, is not being used for its dictionary meaning. Complainants maintain that the use of a domain name for illegal purposes, such as phishing, can never confer rights or legitimate interests on a respondent. Finally, Complainants assert that none of the other circumstances set forth in paragraph 4(c) of the Policy as grounds for establishing rights or legitimate interests is applicable. With respect to the issue of bad faith registration and use, Complainants contend that Respondent has intentionally attempted to attract Complainants’ clients to engage with Respondent by creating a likelihood of confusion with the SWATCH and SWATCH GROUP marks with the view to making a fraudulent financial gain. Moreover, Complainants add, the disputed domain name does not resolve to an active website but is used to send fraudulent emails in a phishing scheme targeting distributors and clients of Complainant in an attempt to arrange payment for a non-existent invoice. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel further concludes that the evidence establishes that Complainant Swatch Group AG, through its ownership of international registrations, has rights in the marks SWATCH GROUP and SWATCH. The Panel finds that the disputed domain name, is confusingly similar to the marks SWATCH and SWATCH GROUP. The disputed domain name incorporates both marks in full, adding only a dictionary term. The disputed domain name’s inclusion of the term “accounting” does not avoid a finding of confusing similarity insofar as accounting is a function in which all companies engage. Thus, in viewing the disputed domain name, the focus of Internet users would be on the recognizable term “swatchgroup”, which appropriates Complainant’s SWATCH GROUP mark in full. B. Rights or Legitimate Interests The Panel concludes that Complainants have sustained their burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The record establishes that the disputed domain name reverts to an inactive website and has been used in several fraudulent emails targeted at Complainants’ distributors and clients in an effort to get them to pay a non-existent invoice. Such illegal activity does not give rise to any rights or legitimate interests under the applicable Policy. C. Registered and Used in Bad Faith The Panel concludes that the disputed domain name was registered and is being used in bad faith. The disputed domain name which copies Complainant’s marks in full was registered more than 30 years after Complainants first began use of the SWATCH GROUP and SWATCH marks, which marks have been widely used and advertised throughout the world, including Canada, the apparent home country of Respondent. The Panel, therefore, finds that Respondent was aware of Complainants and of the SWATCH and SWATCH GROUP marks at the time the disputed domain name was registered. As noted above, the disputed domain name does not resolve to an active site but is used for a fraudulent invoice scheme. Such fact strongly supports a determination of bad faith. The record thus plainly indicates that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation or endorsement of such site, within the meaning of paragraph 4(b)(iv) of the Policy. Complainants allege that the disputed domain name and corresponding website is or has been used in connection with unlawful activity, i.e., fraud, that is intended to and, presumably, results in commercial gain to Respondent. In this regard, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers.” SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 3.4, and cases cited therein. Further, as determined above, the disputed domain name incorporates in full the mark SWATCH GROUP. The addition of the term “accounting” to the disputed domain name, rather than serving as a distinguishing feature, exacerbates the confusion since Internet users, upon viewing the disputed domain name, may (wrongly) assume it is controlled by Complainants’ accounting department, especially in the present case. The fact that Respondent in its emails purported to be a “Leo [G.]” who works as “Sales Support Coordinator” in the “Accounting department” in the Swatch Group (Canada), Ltd. is further evidence of Respondent’s fraudulent invoice scheme and is clear evidence of Respondent’s bad faith registration and use of the disputed domain name. 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 Jeffrey M. Samuels 1 Given the close legal relationship between Complainants and the fact that Complainants seek a common remedy against a single Respondent, the Panel finds that consolidation of this complaint is appropriate. See Alabama One Call, Louisiana One Call System, Tennessee One- Call System, Inc. v. Windward Marketing Group, Inc.,WIPO Case No. D2009-1243.
Sole Panelist
Date: March 10, 2020
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