ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Compagnie des Montres Longines, Francillon S.A. v. Beau Peska, Slade Shipping Inc. (Corporate Office) Case No. D2024-1800 1. The Parties The Complainant is Compagnie des Montres Longines, Francillon S.A., Switzerland, represented internally. The Respondent is Beau Peska, Slade Shipping Inc. (Corporate Office), United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2024. On April 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 May 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2024. The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 5, 2024. 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 Complainant, Compagnie des Montres Longines, Francillon S.A., was founded in 1832 by August Agassiz in Saint-Imier, Switzerland. As early as 1867, the Complainant commenced using the name “Longines” by opening its first factory, the Longines factory in Saint-Imier. In 1867, the Complainant was awarded for its 20A-movement at the Universal Exhibition in Paris, gaining considerable fame. The Complainant began using the designation “Longines” in advertisements as early as 1881. In 1979, the Complainant presented its “Feuille d’Or”-quartz watch with a thickness of under 2mm; at the time, the world’s thinnest watch Today, the Complainant is worldwide known and operates a global network of offline and online boutiques, including in the United States, East-Asian countries such as China and Japan. The Complainant’s parent company The Swatch Group Ltd (Exhibit H.1 and Exhibit H.2. of the Complaint) is the world’s largest watch company, which employs about 36,000 people in 50 countries and encompasses world-wide famous brands such as Harry Winston, Blancpain, Breguet, Glashütte Original, Omega, Rado, Hamilton, Mido, Tissot, Swatch, Certina and ETA. The Complainant owns numerous trademarks including the following: - International trademark LONGINES n°1341298, dated November 29, 2016, covering goods and services in class 9, 14, 35; - European Union trademark LONGINES n°000226233, dated October 2, 1998, covering goods in classes 9 and 14; - Swiss trademark LONGINES n°311597, dated October 14, 1981, covering goods in class 14; - United States trademark LONGINES n°65109, dated September 10, 1907, covering goods in class 27; - Japan trademark LONGINES n°238793, dated December 7, 1932, covering goods in class 14; - Chinese trademark LONGINES n°304851, dated December 20, 1987, covering goods in class 14. The disputed domain name was registered on April 10, 2024. The disputed domain name was used for sending phishing emails to the Complainant’s distributors with the aim to mislead recipients of its emails into providing confidential information to obtain travel services. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its LONGINES trademarks. The disputed domain name incorporates the entirety of the well-known trademark and trade name LONGINES, combined with the geographical terms “us”. The addition of such geographical terms is insufficient to dispel the confusing similarity under the first element. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. There are no signs that the Respondent has been commonly known by the Domain Names, and the Respondent is not in any way related to the Complainant(s) or its/their business activities nor has/have the Complainant(s) granted a license or authorized the Respondent to use its trademarks or apply for registration of the Domain Name.
page 3 The Complainant asserts that the disputed domain name was registered and is being used in bad faith. In the present dispute, the Respondent is using the disputed domain name to impersonate the Complainant and its purported subsidiary company located in the United States by sending phishing emails to the Complainant’s distributors with the aim to mislead recipients of its emails into providing confidential information which can be used to surreptitiously obtain travel services. The Respondent is aiming at the Complainant’s distributors with the sole aim of impersonating the Complainant and to subsequently fraudulently placing orders at the Complainant’s travel agency on behalf of and for account of the Complainant, thereby illegally diverting financial means to the perpetrator. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy directs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”. The UDRP provides, at paragraph 4(a), that each of three findings must be made in order for the Complainant to prevail: i. The Respondent’s disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and iii. The Respondent’s disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, “us” may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult task
page 4 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. There is also no evidence indicating that the Respondent has made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. Instead, the use of the disputed domain name appears to be primarily for the purpose of impersonating the Complainant by sending phishing emails to the Complainant’s distributors with the aim to mislead recipients of its emails into providing confidential information. Panels have held that the use of a domain name for illegal activity here, claimed phishing and impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that given the trademark’s extensive international registrations, notably in the United States, and the distinctiveness of the LONGINES trademark, the Panel concludes that the Respondent was likely aware of the Complainant’s trademark rights at the time of registration. Such awareness is indicative of bad faith registration as per established UDRP precedents. Furthermore, as demonstrated above, the use of the disputed domain name appears to be primarily for the purpose of impersonating the Complainant by sending phishing emails to the Complainant’s distributors with the aim to mislead recipients of its emails into providing confidential information. More, the Respondent’s failure to respond to the Complainant’s Complaint indicates bad faith. Panels have held that the use of a domain name for illegal activity here, phishing and impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Nathalie Dreyfus/ Nathalie Dreyfus Sole Panelist Date: June 18, 2024
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