The Complainants are Blancpain SA, Montres Breguet SA, Omega SA, Compagnie Des Montres Longines Francillon S.A., Rado Uhren AG, Mido AG, Tissot SA, SWATCH AG, Switzerland, represented by The Swatch Group Ltd., Switzerland.
The Respondents are 徐新明 (Xin Ming Xu), 董珍如 (Zhen Ru Dong), 张杰 (zhang jie), 吴斌靓 (wu bin jing) and 上海亨时达钟表有限公司 (shang hai heng shi da zhong biao you xian gong si), China.
2. The Domain Names and RegistrarsThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2021. On August 5, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 6, 2021 and August 9, 2021, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 10, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on August 12, 2021.
On August 10, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on August 12, 2021. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese, and the proceedings commenced on August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2021.
The Center appointed Sok Ling MOI as the sole panelist in this matter on October 6, 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 BackgroundThe dispute involves eight Complainants, all subsidiary companies of The Swatch Group Ltd which are world leading manufacturers, sellers, and retailers of wristwatches.
Founded in 1735, Blancpain is known as the world’s oldest watch brand. Breguet’s history started as early as 1775, when Abraham-Louis Breguet opened his workshop in Paris making its way through the ages among illustrious figures such as Marie-Antoinette, Napoleon Bonaparte, Tsar Alexander 1st, and Winston Churchill. Founded in 1848 as Omega SA, since 1965 the OMEGA Speedmaster has been worn on each of NASA's piloted missions including all six moon landings and many of history’s greatest explorations beyond Earth. Compagnie des Montres Longines Francillon S.A., was founded in 1832 by August Agassiz in Saint-Imier, Switzerland and as early as 1867 commenced using the name “Longines”. Rado is a globally recognised Swiss watch brand, created in 1917 and selling watches under the Rado brand name as early as the 1950s. Founded in Switzerland in 1918, Mido has for a more than a century been a global benchmark in Swiss-made mechanical watches. TISSOT SA was founded in 1853 in Switzerland and has grown through more than 160 years of existence to the largest traditional Swiss brand watch based on volume and among the world’s most well-known watch brands. Complainant SWATCH AG has since as early as 1983 used its marks in connection with wristwatches.
The Complainants are known worldwide and operate a global network of boutiques, including in the United States of America, East-Asian countries such as China, and Japan. The Complainants are present in the Chinese market with countless boutiques and are also active on various Chinese social media venues, including WeiBo, WeChat and Youku. The Complainant’s respective websites are used to promote the brand and its products and services on the Internet.
The Complainant owns trade mark registrations for the BLANCPAIN (International registration no. 190558, registered on February 8, 1976), BREGUET (International registration no. 230825, registered on April 16, 1960), OMEGA (International registration no. 132141, registered on August 11, 1947), LONGINES (United States of America registration no. 65109, registered on September 10, 1907), RADO (International registration no. 154838, registered on July 10, 1951), MIDO (United States of America registration no. 154838, registered on March 8, 1927), TISSOT (China registration no. 159951, registered on July 15, 1982), and SWATCH (United States of America registration no. 159951, registered on August 27, 1985) marks in many various jurisdictions, including China.
All but two of the disputed domain names were registered in late 2018 (the majority on the same date); one was registered in 2019 and one in 2020.
The disputed domain names each resolves to a website with identical or similar content and of identical or similar design which reproduced the relevant Complainant mark and logo and purport to offer “official” watch repair service operated by the Complainant. A majority of the disputed domain names resolve/resolved to webpages containing one of two phone numbers. A number of the websites show the identical business “Bei’an” registration number.
5. Parties’ Contentions A. ComplainantThe Complainant claims that the disputed domain names are confusingly similar to its respective trade mark. The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondents to use such mark, the Respondents’ use of the disputed domain names to publish websites purportedly offering customer support and repair services for the Complainant’s watches was for the purpose of trading on the Complainant’s goodwill for financial gain. The Complainant claims that the Respondents lack rights or legitimate interests in the disputed domain names.
The Complainant contends that the disputed domain names are used to create confusion and mislead Internet users into believing that the Respondents’ websites are authorised by the Complainant. The Complainant claims that the Respondents have registered and are using the disputed domain names in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain names to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings6.1 Procedural Issues
A. Consolidation of Multiple ComplainantsThe Complaint was filed by eight co-Complainants against five Respondents involving 16 disputed domain names. The Complainants have submitted a request to have their complaints consolidated. Under paragraph 10(a) of the Rules, the panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the Parties are treated fairly and the proceeding is conducted expeditiously.
In assessing whether a complaint filed by multiple complainants may be brought against one or more respondents, the appointed panel should consider 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.
Keeping this in mind, the Panel notes that all eight Complainants form part of the same corporate group, being subsidiary companies of The Swatch Group Ltd, the world’s leading designer, manufacturer, seller, and retailer of wristwatches. Each of these complainants is the registered owner of a trade mark, namely:
(i) Blancpain SA owns the trade mark BLANCPAIN;
(ii) Montres Breguet SA owns the trade mark BREGUET;
(iii) Omega AG owns the trade mark OMEGA;
(iv) Compagnie Des Montres Longines Francillon S.A. owns the trade mark LONGINES;
(v) Rado Uhren AG owns the trade mark RADO;
(vi) Mido AG owns the trade mark MIDO;
(vii) Tissot SA owns the trade mark TISSOT;
(viii) SWATCH AG owns the trade mark SWATCH.
As all the Complainants are subsidiary companies of The Swatch Group Ltd., a common legal interest is present.
Additionally and crucially, as noted in greater detail below, the Respondents appear to have engaged in conduct targeting trademarks held by the related Complainants’ companies. As such, the Complainants’ companies have a specific common grievance against the Respondents.
The Panel is not aware of any circumstances that would create prejudice to the Respondents – noting in particular no Response has been filed on the substantive merits or otherwise – by allowing the Complaint filed by multiple Complainants to proceed.
Therefore, the Panel considers that it is fair and equitable under the circumstances of the case to permit the consolidation, and to allow the Complainants to proceed jointly with their Complaint. (The Complainants will jointly be referred to as “the Complainant” as appropriate.)
B. Consolidation of Multiple RespondentsThe Complainant has submitted a request to have the Complaint filed against multiple disputed domain names. According to paragraph 3(c) of the Rules, a complaint may relate to more than one domain name provided the domain names are registered by the same domain-name holder.
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Where a complaint is filed against multiple respondents, UDRP panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview 3.0, section 4.11.2. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281.
Although neither the Policy nor the Rules explicitly provides for the consolidation of multiple respondents, the issue has been considered by various prior UDRP panels. See section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In order to file a single complaint against multiple respondents, the complaint must typically meet the following criteria:
(i) the domain names or the websites to which they resolve are subject to common control; and
(ii) the consolidation would be fair and equitable to all parties.
In this regard, the Complainant cited the following reasons, inter alia, to support its allegation that the 16 disputed domain names are owned by the same individual or entity operating under different aliases, or at least subject to common control:
(1) All disputed domain names share identical features and the same infringing pattern:
a. The disputed domain names
b. All websites resolve/resolved into websites with identical or similar content and of identical or similar design, namely advertising for “official” watch services centers, purportedly operated by the Complainant;
c. A majority of the disputed domain names resolve/resolved to webpages containing either the phone number 400-855-xxxx or 400-995-xxxx;
d. The website linked to the disputed domain names
e. All disputed domain names have been registered at only two Registrars, Alibaba Cloud Computing (Beijing) Co., Ltd. and Chengdu West Dimension Digital Technology Co., Ltd.;
f. The WhoIs database shows only two different entries for all 16 disputed domain names, namely entity/individual from “CN, Shan Dong” and an entity/individual from “CN, shang hai”;
g. The majority of disputed domain names were registered on identical dates at the same Registrar; and
h. Many of the disputed domain names resolve to a few IP addresses.
(2) The disputed domain names
(3) The disputed domain names
None of the Respondents has come forward with any assertions or evidence that would otherwise support a finding that the disputed domain names are not subject to common control. In light of the above, and in the interests of procedural efficiency, the Panel considers it appropriate to accept the Complainant’s request for consolidation of the Complaint against the multiple Respondents.
The Panel concludes that the Respondents must act collaboratively and, thus, accepts that all disputed domain names are under common control. The Panel is also convinced that in the present case a consolidation of the Respondents is procedurally efficient, fair, and reasonable to all Parties.
C. Language of the ProceedingPursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondents regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondents did not respond on the issue of the language of the proceeding.
Although the Respondents appears to be native Chinese individuals, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondents have sufficient knowledge of English. In particular, the Panel notes that the disputed domain names are registered in Latin characters rather than Chinese script, most incorporate the term “watch”, the footer of the websites includes a range of specific English terms such as “assessment” or “cleaning”.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting documents as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.
6.2 Substantive IssuesParagraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant and Respondents, the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in the respective marks by virtue of its use and registration of the same in many jurisdictions around the world.
Each of the disputed domain names incorporates the Complainant’s mark in its entirety and in most cases with the addition of the word “watch” and/or the letter “a” or “b” or “c” or “wx” or a hyphen or terms such as “repair” or “star”. Such additional term does not avoid the confusing similarity between the disputed domain names and the Complainant’s respective trade mark.
The Complainant’s mark in each case is clearly recognisable within each of the disputed domain names. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not impact the analysis of whether the disputed domain names are identical or confusingly similar to the Complainant’s trade mark in this case.
Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s relevant trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the 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 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.
See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd,WIPO Case No. D2013-0974.
The Complainant has confirmed that the Respondents are not in any way affiliated with the Complainant or otherwise authorized or licensed to use its trade marks or to seek registration of any domain name incorporating the same. There is also no evidence suggesting that the Respondents are commonly known by the disputed domain names or have acquired any trade mark rights in the term corresponding to the disputed domain names.
According to the evidence submitted by the Complainant, the Respondents were using the disputed domain names to publish nearly identical websites that appeared to pass themselves off as the Complainant’s websites. The said websites reproduced the Complainant’s mark and logo, claiming to be the “Customer Service Center” purportedly offering watch repair service for the respective watches. This suggests that the Respondents are using the disputed domain names to mislead Internet visitors by creating an affiliation with the Complainant where there is none.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondents lack rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondents to come forward with evidence of their rights or legitimate interests in the disputed domain names. Since the Respondents have failed to respond, the Panel determines that the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondents lack rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant has used its various trade marks for many decades (and in some cases centuries), and enjoys a strong worldwide reputation and a significant online presence. There is no doubt that the Respondents were aware of the Complainant’s trade mark when they registered the disputed domain names given that they have reproduced the Complainant’s mark and logo, and were offering customer service support and watch repair service for the Complainant’s watch products through their websites. The Respondents are seeking to create an impression that the Respondent’s websites are the Complainant’s official websites.
The Panel is satisfied that the Respondents’ purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to their own websites for financial gain. The reproduction of the Complainant’s trade marks on the Respondents’ websites without also displaying a clear disclaimer of a lack of relationship between the Respondents and the Complainant (which could not likely overcome the fact of the infringing composition of the disputed domain names), is indicative of bad faith.
The Panel therefore determines that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondents’ websites. As such, the Panel is satisfied that the Respondents are using the disputed domain names for mala fide purposes and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
The Respondents have not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondents do not have rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondents have registered and are using the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names
Sok Ling MOI
Sole Panelist
Date: January 10, 2021