Complainants are The Swatch Group AG and Swatch AG, Switzerland, internally represented.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Rick James, India. 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 28, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 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 Complainant on April 28, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 29, 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 Respondent of the Complaint, and the proceedings commenced on May 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2021. On May 23, 2021, an email was received from Respondent, requesting additional time to file a response. On May 27, 2021, the Center acknowledge receipt of Respondent’s request. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The due date for Response was extended to May 28, 2021. Respondent did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment Process. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 28, 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 Complainant The Swatch Group AG is the parent company of Complainant Swatch AG. Complainants are the owners of the SWATCH and SWATCH GROUP trademarks, which have been used since at least 1983 in connection with wristwatches. Complainants’ trademark registrations include International Registration no. 506123 for the SWATCH mark (registered on September 9, 1986) and International Registration no. 1187122 for the SWATCH GROUP mark (registered on September 18, 2013). Complainants also offer apparel, sunglasses and other items under the SWATCH and SWATCH GROUP marks. Complainants’ website at “www.swatch.com” is used to promote the SWATCH brand and its products and services on the Internet and the “www.swatchgroup.com” website is used to inform viewers about Complainant The Swatch Group AG. At least one prior UDRP panel has found the SWATCH and SWATCH GROUP marks to be well known. See Swatch AG v. Boomin Jeong,WIPO Case No. D2018-2627. The disputed domain name Complainants assert that the disputed domain name is identical, on its face, to Complainants’ registered SWATCH marks and incorporates the entirety of the well-known trademark SWATCH and trade name SWATCH. Complainants allege that the use of Complainant Swatch AG’s mark SWATCH immediately followed by the generic word “holdings”, which is synonymous to “group” in the context of company consolidations, reinforces the purported association between the Complainants and the disputed domain name. According to Complainants, the term “Swatch Holdings” and the accordingly named disputed domain name Complainants assert that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainants, there are no signs that Respondent has been commonly known by the disputed domain name, and Respondent is not in any way related to the Complainants or their business activities nor have the Complainants granted a license or authorized Respondent to use its trademarks or apply for registration of the disputed domain name. According to Complainants, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and noted that while the word “holdings” does have a generic meaning in the English language, Respondent is not using the disputed domain name for any such generic use. According to Complainants, prior to the Complainants’ notice to the parking provider of the advertisements shown on Respondent’s website and the subsequent suspension of the parking page, Respondent displayed watch-related advertisements on its page thereby establishing an unambiguous connection to the Complainants’ and their business activities. Complainants also assert that Respondent has registered and used the disputed domain name in bad faith. According to Complainants, by using the disputed domain name, Respondent is creating confusion and is giving potential visitors of its website the impression to be Complainants official website and/or a website sponsored, affiliated, or otherwise endorsed by the Complainants. Complainants note that Respondent does not provide any disclaimer or disclosure of the (lacking) relationship with the Complainants on his website whatsoever. According to Complainants, the fact that Respondent not only registered a domain name confusingly similar to Complainants’ well-known SWATCH and SWATCH GROUP marks, but subsequently displayed watch-related advertisements on its website, clearly shows that Respondent has targeted the Complainants. According to Complainants, Respondent is aiming at Complainants’ prospective customers, i.e.,Respondent is diverting Internet users seeking to visit Complainants’ official website to its website in order to boost the commercial gain generated through the advertisements placed on its website. Therefore, according to Complainants, Respondent is clearly using the disputed domain name to siphon off Complainants’ SWATCH and SWATCH GROUP marks’ accumulated goodwill for profit, and thus, Respondent is using the disputed domain name in bad faith. Complainants also note that while at the time of writing, no phishing attempts using the disputed domain name have been made known to the Complainants, given Respondent clearly lacks any legitimate interests in respect of the disputed domain name, it is only a matter of time until the disputed domain name is used for nefarious purposes such as passing off and/or phishing. B. Respondent Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 1. Multiple Complainants Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. 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. Given that Complainants here are parent-subsidiary and collectively own the various applicable trademark rights, these parties have a common grievance against Respondent, and the Panel therefore permits the consolidation of their claims against Respondent in this proceeding. The Panel also finds it is equitable and procedurally efficient to permit the consolidation. 2. Substantive Elements Under paragraph 4(a) of the Policy, to succeed Complainants must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainants contentions, the burden remains with Complainants to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainants have provided evidence of their rights in the SWATCH mark through their International Registrations and various other registrations. With Complainants’ rights in the SWATCH mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the TLD in which the domain name is registered) is identical or confusingly similar to Complainants’ mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id. Here, the disputed domain name consists of the identical SWATCH mark followed by the dictionary term “holdings”. The inclusion of this dictionary term after the mark does not obviate the confusing similarity between the dispute domain name and the SWATCH mark. The Panel therefore finds that Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing their trademark rights and showing that the disputed domain name is confusingly similar to their SWATCH mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, Complainants must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainants make such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainants. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainants will have sustained their burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, Complainants have alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainants’ contention that it has never authorized, licensed or permitted Respondent to use the SWATCH mark in any way. There is no evidence suggesting that Respondent is commonly known by the disputed domain name. Respondent also does not appear to be using the disputed domain name in connection with any bona fide offering of goods or services, nor is he making a legitimate noncommercial or fair use of the disputed domain name. At the time the Complaint was filed, the disputed domain name failed to resolve to any active website, and previously resolved to a parked page containing sponsored advertising links relating to wristwatches, the same type of products sold under Complainants’ SWATCH mark. Accordingly, based on the evidence on record, Respondent is not making any bona fide commercial or legitimate noncommercial or fair use of the disputed domain name. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name. Complainants provided evidence regarding their longstanding and widespread use of the well-known SWATCH mark which long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of Complainants and their rights in the SWATCH mark when he registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Based on the evidence on record, Respondent was previously using the disputed domain name to direct Internet users to a parked page containing sponsored advertising listings relating to wristwatches, the same goods offered by Complainants under the SWATCH mark. Such use of the disputed domain name is clearly designed to misleadingly divert consumers to Respondent’s website located at the disputed domain name for Respondent’s own commercial gain. See Policy, paragraph 4(b)(iv). Even if Respondent had not resumed active use of the disputed domain name and it continued to resolve to a blank page following a takedown notice to the web host, as indicated by Complainant and supported in the record, such use of the disputed domain name would still constitute use in bad faith. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. The passive holding doctrine applies in this case given the distinctiveness of Complainants’ mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain name, Respondent’s concealment of his identity through a proxy service, and the implausibility of any conceivable good faith basis to which the disputed domain could be put by Respondent. The Panel finds it more likely that Respondent selected the disputed domain name with the intention of taking advantage of Complainants’ reputation by registering a domain name containing Complainants’ mark with the intent to ultimately use the domain name for an illegitimate purpose, such as to attract Internet users to the online location for Respondent’s commercial gain. See e.g., Koc Holding A.S. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / “Madonna.com”,WIPO Case No. D2000-0847). For these reasons, this Panel finds that Respondent registered and is using 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, Brian J. Winterfeldt 1 Given that there are multiple Complainants in this case, Complainants must identify to the Registrar, which individual Complainant is to receive the transfer of the disputed domain name.
Sole Panelist
Date: July 6, 2021
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