The Complainants are The Swatch Group AG (“First Complainant”) and Swatch AG (“Second Complainant”), Switzerland, internally represented.
The Respondent is Junior God, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 the Respondent of the Complaint, and the proceedings commenced on October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on November 9, 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 Complainants are designers, manufacturers, sellers and retailers of wristwatches.
The First Complainant is the parent and holding company of the Second Complainant and other 18 wristwatch brands and is a publicly traded company. The SWATCH brand was first used in 1982 and is now also promoted on the Internet on the “www.swatch.com” and “www.swatchgroup.com” websites.
The Second Complainant is the owner, amongst several others, of the following trademark registrations (Annexes D and E to the Complaint):
- International Trademark Registration No. 1187122 for the word mark SWATCH GROUP, registered on September 18, 2013, in classes 35, 36, 37, 38, 39, 41, 42, 43 and 45; and
- International Trademark Registration No. 506123 for the word & device mark SWATCH, registered on September 9, 1986 and successively renewed, in class 14.
The disputed domain name
The Complainants assert to be owners of the distinctive and well-known SWATCH and SWATCH GROUP trademarks. The SWATCH trademark is in use since as early as 1982 and has become one of the most famous wristwatch trademarks in the world, as already recognized in former UDRP cases (Swatch AG v. Boomin Jeong,WIPO Case No. D2018-2627; Swatch Ltd. v. Uli Kumli, Social-Media. Club,WIPO Case No. D2016-2338).
In the Complainants’ view, the disputed domain name incorporates their well-known SWATCH and SWATCH GROUP trademarks and trade names entirely, creating consumer confusion, being the inversion of the letters “ou” to “uo” in the disputed domain name likely to cause confusion and to deceive as to the affiliation, connection or association of the Respondent with the Complainants.
According to the Complainants, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has not been commonly known by the disputed domain name;
(ii) the Respondent is not in any way related to the Complainants or their business activities nor have the Complainants granted a license or authorized the Respondent to use their trademarks or apply for registration of the disputed domain name; and
(iii) the Respondent is not making any noncommercial or fair us of the disputed domain name.
The Complainants contend that the disputed domain name was registered and used in bad faith given the Respondent’s evident knowledge of the Complainants’ famous trademarks, which is entirely reproduced in the disputed domain name. A further indication of the Respondent’s bad faith is the lack of reply to the cease and desist letter sent to the Respondent prior to this procedure (Annex F to the Complaint).
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainants:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(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.
The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly SimilarThe Complainants have established rights in the SWATCH and SWATCH GROUP trademarks, duly registered.
The Panel finds that the disputed domain name reproduces the Complainants’ mark in its entirety, being the inversion of the letters “o” and “u” in the disputed domain name insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels involves a “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” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”, sections 1.7 and 1.8).
The first element of the Policy has therefore been established.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark 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 trademark or service mark at issue.
The Respondent has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainants to first make a prima facie case against the Respondent.
In that sense, the Complainants indeed indicate that the Respondent is not in any way related to the Complainants or their business activities nor have the Complainants granted a license or authorized the Respondent to use their trademarks or apply for registration of the disputed domain name.
Also, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or to a webpage relating to the disputed domain, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of a trademark relating to the disputed domain name 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 trademark 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 location, by creating a likelihood of confusion with the complainants’ 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 Panel notes that the disputed domain name is currently inactive. Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom 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. While UDRP 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”.
In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. In addition to that, and as decided in past cases under the Policy, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
Further, the lack of reply to the cease-and-desist letter sent by the Complainants prior to this procedure and the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain name, communication not being delivered to the Respondent by courier, corroborate the Panel’s finding of the Respondent’s acting in bad faith.
For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name.
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 name,
Wilson Pinheiro Jabur
Sole Panelist
Date: November 22, 2021