ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Swatch Group AG, Swatch AG v. Domain Administrator Case No. D2022-2425 1. The Parties The Complainants are The Swatch Group AG and Swatch AG, Switzerland, represented internally. The Respondent is Domain Administrator, Nigeria. 2. The Domain Name and Registrar The disputed domain name is registered with Sav.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 4, 2022. On July 5, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2022, 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 Complainants on July 6, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on July 19, 2022. 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 July 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2022. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 15, 2022. The Center appointed Erica Aoki as the sole panelist in this matter on August 19, 2022. 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. page 2 4. Factual Background The Complainants are The Swatch Group AG (the parent company), and Swatch AG. Given the legal relationship between the Complainants, consolidation of this Complaint is appropriate (e.g. Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc. WIPO Case No. D2009-1243) and consolidation has already been granted in similar cases for The Swatch Group AG and Swatch AG: (see e.g. The Swatch Group AG and Swatch AG v. Redacted for privacy, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo WIPO Case No. D2021-2180; The Swatch Group AG, Swatch AG v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Rick James WIPO Case No. D2021-1310; The Swatch Group AG, Swatch AG v. John Wison WIPO Case No. D2019-3182; The Swatch Group AG and Swatch AG v. Deena Newman WIPO Case No. D2019-2791; The Swatch Group AG / Swatch AG v. packy phim WIPO Case No. D2018-0851). So, consolidation of the Complainants is granted according to Paragraph 10(e) of the Rules. The Complainants own several trademarks SWATCH and SWATCH GROUP that have been used since 1983 and make extensive use of them. The trademarks SWATCH and SWATCH GROUP are considered well known trademarks (e.g. Swatch AG v. Boomin Jeong, WIPO Case No. D2018-2627; Swatch Ltd. v. Uli Kumli, Social-Media. Club, WIPO Case No. D2016-2338). The earliest trademark registration submitted in evidence is United States Trademark SWATCH Registration No. 1356512 registered on August 27, 1985. The International Trademark SWATCH GROUP with Registration No. 11187122 registered on September 18, 2013. The Complainants are leading designers, manufacturers, sellers, and retailers of wristwatches. The disputed domain name was registered on June 27, 2022 and has linked its website to a monetized parking page containing references to "watches". 5. Parties' Contentions A. Complainant The Complainants are the owners of the distinctive and well known SWATCH and SWATCH GROUP trademarks since 1983. Complainants use the trademarks in connection with wristwatches and are considered as one of the most famous industry leaders. The Complainants also produce apparel, sunglasses, and other items and have continually used the trademarks in commerce. The Complainants' website "www.swatch.com" is used to promote the SWATCH brand and products and services on the Internet. The "www.swatchgroup.com" website is used to inform viewers about the Complainants. The Complainants also have fully owned, branded retail stores throughout North America, Europe, the Middle East, Africa, Central and South America, Asia, and Australia, as well as a growing number of ecommerce shops available for the brand SWATCH. Further, major sporting events around the world are sponsored by the Complainants. The Complainants' marks are so famous that a collector's market has been developed for its older products and many fans have posted images and stories on the Internet to demonstrate their affinity for the brand. The Complainants contend that the disputed domain name is confusingly similar as it contains the trademark SWATCH and SWATCH GROUP in its entirety, and is merely omitting the letter "r", with a minor permutation of the Complainants' trademark "SWATCH GROUP" in an attempt to mislead Internet users using the visual similarity between Complainants' Swatch Group AG's official website. page 3 Further, the Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith as the disputed domain name is likely to cause confusion, mistake and to deceive as to the affiliation, connection, or association of the Respondent with the Complainants. B. Respondent The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings The Complainants are required to establish the requirements specified under paragraph 4(a) of the Policy: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the facts in the present proceeding, this Panel finds that the disputed domain name identically adopts the Complainants' SWATCH and SWATCH GROUP trademarks in which the Complainants' have rights under Policy, paragraph 4(a)(i). The Complainants have established rights in the SWATCH and SWATCH GROUP trademarks through registration and use. The Panel further finds that there is no doubt that the disputed domain name is confusingly similar to the Complainants' registered trademark, as the disputed domain name includes the Complainants' mark entirely, with only suppression of the letter "r", with a minor permutation of the Complainants' trademark "SWATCH GROUP", which does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). The Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name. There is no evidence on record that the Respondent is or was commonly known by the disputed domain name as an individual, business, or other organization. See section 2.3 of the WIPO Overview 3.0. There is no evidence on record that 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 Complainants trademark. Paragraph 4(c) of the Policy indicates that a registrant may have a right or legitimate interest in a domain name if it uses the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. In this regard, the Respondent is in no way connected with the Complainants and has not received any authorization to use any of the Complainants' trademarks. Rather the Panel notes that the Respondent has linked its website to a monetized parking page containing references to "watches", the designation of Complainant's main product category. This clearly shows that the Respondent has targeted the Complainants to siphon off the Complainants' SWATCH and SWATCH GROUP marks' accumulated page 4 goodwill for profit. The Panel therefore finds that the Complainant has established an unrebutted prima facie case, i.e. that the Respondent has no rights or legitimate interests in the disputed domain name, under Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainants' contend that the Respondent has registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy. The Complainants' trademarks were registered long before the registration of the disputed domain name and it is evident from the Respondent's use of the disputed domain name that the Respondent knew of the Complainants' SWATCH and SWATCH GROUP trademarks when registering the disputed domain name. The Panel finds that it is most likely that the Respondent was aware of the Complainants' rights in the SWATCH and SWATCH GROUP trademarks at the time the disputed domain name was registered, indicating that such registration was made in bad faith. Based on the evidence presented, the Panel also finds that the Respondent's use of the disputed domain name constitutes bad faith under Policy, paragraph 4(b)(iv). Accordingly, and as also supported by the Panel's findings above under the second element of the Policy, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith under Policy, paragraph 4(a)(iii). 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 be transferred to the Complainant. /Erica Aoki/ Erica Aoki Sole Panelist Date: September 2, 2022
Full & Egal Universal Law Academy