The Complainant is Tissot SA, Switzerland, represented by The Swatch Group Ltd., Switzerland.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / NB LANGLANG, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2021, 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 April 19, 2021, 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 April 19, 2021. 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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2021. The Center appointed Douglas Clark as the sole panelist in this matter on May 21, 2021. 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 was founded in 1853 in Switzerland and is a designer, manufacturer, seller and retailer of wristwatches. The Complainant’s website at “www.tissotwatches.com” is used to promote its brand, products and services on the internet. The Complainant also owns the domain name The Complainant holds more than 440 registrations for the TISSOT trade mark around the world. The Complainant has commenced use of the TISSOT trade mark as early as 1853 and the trade mark is present in more than 160 countries worldwide. The Complainant owns many registrations for the TISSOT trade mark, including the following: Trade Mark Registration Number Registration Date International Class(es) Jurisdiction TISSOT 614931 January 31, 1994 1 to 42 International TISSOT 532550 December 14, 1988 8, 14 International TISSOT 1639684 April 2, 1991 14 United States of America T TISSOT 159951 July 15, 1982 14 China T TISSOT SWISS WATCHES 12884960 March 7, 2015 35 China The disputed domain name The Complainant contends that: (a) The disputed domain name is confusingly similar to its trade mark. The addition of the term “usa” in the disputed domain name does not eliminate the overall notion that the designation is connected to the trade mark and the likelihood of confusion that the disputed domain name and the trade mark are associated; (b) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not commonly known by the disputed domain name, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name; and (c) The disputed domain name was registered and is being used in bad faith. The Respondent was aware of the Complainant’s trade mark at the time the Respondent registered the disputed domain name and has used the TISSOT trade mark to increase Internet user traffic on its website. The Respondent is using the disputed domain name to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s trade mark. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action: (i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights to; (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 finds that the disputed domain name is confusingly similar to the Complainant’s trade mark. The disputed domain name incorporates the Complainant’s TISSOT trade mark in full with the geographical term “usa” added to it. The addition of “usa” does not avoid a finding of confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” is generally disregarded when considering the first element. The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name. Section 2.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides: The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorized nor licensed to use the Complainant’s TISSOT trade mark or to apply for registration of the disputed domain name. Furthermore, there is no evidence that the Respondent has used or is planning to use the disputed domain name for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name. Moreover, the disputed domain name, comprising the Complainant’s trade mark in its entirety in combination with the geographical term “usa”, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Based on the given evidence, the Panel finds that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant has registered the TISSOT trade mark. The TISSOT trade mark is used by the Complainant to conduct its business and the Complainant has used the trade mark for its wristwatch-related business since 1853. In addition, the fame and reputation of the TISSOT trade mark has been recognised in prior UDRP decisions. The Panel is satisfied that the Respondent was aware of the Complainant and its TISSOT trade mark when the disputed domain name was registered. It appears to the Panel that the Respondent has registered the disputed domain name to attract Internet users to the website for commercial gain in accordance with paragraph 4(b)(iv) of the Policy. The pornographic materials on the website that the disputed domain name resolves to establish the Respondent is making a commercial gain from the website by attracting users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of its website. Further, the pornographic materials on the website tarnish the TISSOT trade mark. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith (see also section 3.12 of WIPO Overview 3.0). Moreover, as described above, the disputed domain name has also displayed the information of a Chinese company specialized in producing motors. For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore satisfied the third element under 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 Douglas Clark
SINCE 1853 & Device
“While the overall burden of proof in UDRP proceedings is on the complainant, 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.”
Sole Panelist
Date: May 31, 2021
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