The Complainant is The Swatch Group Management Services AG, Switzerland, internally represented.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Patricia Thompson, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 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 the Complainant on August 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 24, 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 the Respondent of the Complaint, and the proceedings commenced on September 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on October 8, 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 Complainant is a wholly-owned subsidiary of The Swatch Group Limited, which is a manufacturer, seller, and retailer of watches. For ease of reference, save where the context otherwise requires, references to “the Complainant” below include The Swatch Group Limited.
The Complainant owns and operates many well-known watch brands, including include SWATCH, TISSOT, OMEGA, and LONGINES. Nicolas George Hayek, who died in 2010 (“Mr. Hayek”), was the Chief Executive Officer (“CEO”) of The Watch Group Limited from 1986 until his son, known as Nick Hayek Jr, took over this position in 2003. Mr. Hayek is widely credited with a number of important marketing and other innovations in the Swiss watchmaking industry and, under his direction, the “Swatch”, a lightweight, inexpensive watch with coloured bands and novelty faces, was introduced. Several hundred million Swatch watches have since been sold.
The Complainant owns a number of trade marks related to Mr. Hayek. These include;
- International trade mark, registration number 880669, for HAYEK, in class 14, registered on March 14, 2006;
- International trade mark registration number, 610759, for NICOLAS HAYEK SWISS, in class 14, registered on November 4, 1993.
The disputed domain name was registered on July 22, 2021. It presently resolves to an blog page headed “Nicolashayek.me”, followed by the words “Hello world!” and then “Welcome to WordPress. This is your first post. Edit or delete it, then start writing!”. There are no blog entries.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. Disregarding the country code Top-Level Domain (“ccTLD”), “.me”, the disputed domain name is identical to the name of Mr. Hayek and very close to that of the current CEO of Complainant, Nick Hayek Jr. The disputed domain name incorporates the entirety of the Complainant’s trade mark, HAYEK and contains most of the Complainant’s NICOLAS HAYEK SWISS trade mark.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There are no signs that the Respondent has been commonly known by the disputed domain name and the Respondent is not in any way related to the Complainant or its business activities. The Complainant has not granted a licence or authorized the Respondent to use its trade marks or to apply for registration of the disputed domain name. Nor is the Respondent making a noncommercial or fair use of it.
The disputed domain name resolves to a placeholder website with no sign that a website or other online presence which would comprise a fair use of the disputed domain name is in the process of being established. It is impossible to contemplate any use by the Respondent of a domain name identical to the name of the former CEO of the Complainant which would not be illegitimate, such as passing off, phishing, or an infringement of the Complainant’s trade mark rights. The Respondent was contacted by the Complainant, via the Registrar, prior to the commencement of these proceedings but did not provide any evidence or arguments demonstrating that it had rights or legitimate interests in the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. Previous UDRP panels have found that the hijacking of an individual’s name (protected as a trademark) for personal use is an unacceptable abuse of the domain registering system; see Kylie Jenner, Kylie Jenner, Inc. and Whalerock Celebrity Subscription LLC v. Thevan Thirumalla, TVM Names and Kendall Jenner, Kendall Jenner, Inc. and Whalerock Celebrity Subscription LLC v. Jorly James, Cooknames, WIPO Case No. D2015-1189 andWIPO Case No. D2015-1190. Moreover, bad faith can also be found where a domain name has been registered in order to prevent the owner of a trademark or service mark from reflecting its mark in a corresponding domain name, as has happened here. Additionally, the use of a domain name for illegal activity can never confer rights or legitimate interests on a Respondent. The Respondent’s registration of the disputed domain name is suspicious and there is nothing which would prevent the Respondent from later replacing the placeholder webpage and using the disputed domain name for illegal activities. Indeed, the Complainant claims it is only a matter of time before the disputed domain name is used for nefarious purposes.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsDealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has 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.
A. Identical or Confusingly SimilarThe Top-Level Domain (“TLD”), that is “.me” in the case of the disputed domain name, is typically disregarded when assessing identity or confusing similarity under the first element.
The Complainant does, however, have a number of registered trade marks which comprise or include the word HAYEK, including a mark for NICOLAS HAYEK SWISS, full details of which have been set out above. The only difference between this mark and the disputed domain name is that the SWISS component of the Complainant’s mark is absent from the disputed domain name. The omission of this geographical term does not prevent it from being considered confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Furthermore, the Complainant claims unregistered trade mark rights in the term “NICOLAS HAYEK”, which it does not have registered trade mark rights in. In this regard, the Panel notes section 1.5.2 of the WIPO Overview 3.0 and the necessity of providing evidence that a personal name is being used as a trademark-like identifier in trade or commerce, in order to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case. However, noting the Complainant’s above-referenced registered trade mark rights in HAYEK and NICOLAS HAYEK SWISS the Panel need not come to a determination on such claimed unregistered trade mark rights.
The dominant components of the Complainant’s mark NICOLAS HAYEK SWISS are the words “nicolas hayek”. These comprise the entirety of the disputed domain name and, self-evidently, are recognizable within it. Furthermore, the Complainant’s mark HAYEK is wholly incorporated and recognizable within the disputed domain name. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Here, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The empty blog page to which the disputed domain name resolves is similar in character to a “coming soon” webpage; neither constitutes any genuine use of a domain name, nor comprises a bona fide offering of goods and services. In this respect, see LeadsMarket.com LLC v. Privacy Protect, LLC (PrivacyProtect.org) / Oscar Dominguez,WIPO Case No. D2019-1363.
The second circumstance is also inapplicable; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is equally inapplicable; non-use of the disputed domain name does not amount to either a fair or a legitimate noncommercial use of it.
Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent; see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithThe Complainant has produced the results of a search on Google for “Nicolas Hayek” which establishes, first, that the most well-known bearer of the name “Nicolas Hayek” is the former CEO of the Complainant and, second, that Mr. Hayek is closely associated with the growth and reputation of the Complainant. Moreover, whilst the Complainant does not have a registered trade mark for “NICOLAS HAYEK”, it has trade marks for HAYEK and NICOLAS HAYEK SWISS, both of which have an obvious resonance with Mr. Hayek. The Complainant has also promoted and sustained the reputation of Mr. Hayek, and its association with him, through its “Nicolas G. Hayek Center” building in Tokyo and the establishment of “Nicolas G. Hayek” watchmaking schools in various locations. By maintaining its connection with the well-regarded Mr. Hayek in this manner (albeit consistently using the name “Nicolas G. Hayek” rather than “Nicolas Hayek”) the Complainant is indirectly deriving a degree of commercial benefit from his name and reputation.
Against this background, the Panel concludes that the Respondent registered the disputed domain in order to take advantage of the Complainant’s rights in NICOLAS HAYEK SWISS and HAYEK and, more broadly, in the reputation it has maintained arising from its close historical, commercial connection with Mr. Hayek. Whilst the Complainant has not, in fact, provided any evidence of use, to date, of these marks in the course of trade, the marks are subsisting and remain capable of commercial exploitation.
The Panel concludes that registration of the disputed domain name in these circumstances is in bad faith. However, in addition to the factors outlined above, the Panel takes into account the fact that the Respondent has chosen not to challenge any of the assertions in the Complaint, either as to the rights the Complainant has acquired or as to the Respondent’s motivation for registering the disputed domain name.
The Respondent’s non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. In this respect, see section 3.3 of the WIPO Overview 3.0, which explains 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”. The factors that are typically considered when 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 concealment of its identity or its use of false contact details; and (iv) the implausibility of any good faith use to which the domain name may be put. See also Johnson & Johnson v. Daniel Wistbacka, WIPO Case No. D2017-0709.
Applying these factors to the current circumstances; (i) the Complainant’s HAYEK and NICOLAS HAYEK SWISS marks are clearly referable to Mr. Nicolas Hayek, who is very well-known; (ii) the Respondent has not replied to the Complaint, nor provided any evidence of actual or contemplated good faith use of the disputed domain name; (iii) the details of the underlying registrant have been protected from the public WhoIs record by a privacy service; and (iv) it is, in fact, possible to conceive of a good faith use to which the disputed domain name could be put, such as use by another Nicolas Hayek for the purposes of a noncommercial website unrelated to the Complainant. However, there is nothing in the circumstances of the Respondent’s registration of the disputed domain name which points to this having been its intention, not least when the name of the underlying Respondent is Patricia Thompson. Accordingly, any good faith use by the Respondent is inherently implausible.
In the circumstances, the Respondent’s passive holding of the disputed domain name amounts to bad faith use of it and the Panel therefore finds that the Respondent has registered and is using the disputed domain name in bad faith.
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
Antony Gold
Sole Panelist
Date: October 22, 2021