Swatch ag V. Whois Whois Privacy Protection Service by onamae com, Whois Privacy Protection Service by onamae com / Yuji Sudo



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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

Swatch AG v. Whois Whois Privacy Protection Service by onamae.com, Whois Privacy Protection Service by onamae.com / Yuji Sudo

Case No. D2015-1694



1. The Parties

The Complainant is Swatch AG of Biel/Bienne, Switzerland, represented by FairWinds Partners, LLC, United States of America.


The Respondent is Whois Whois Privacy Protection Service by onamae.com, Whois Privacy Protection Service by onamae.com of Tokyo, Japan / Yuji Sudo of Tokyo, Japan.


2. The Domain Name and Registrar

The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount Domain.com and Onamae.com (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2015. On September 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2015, 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 Complainant filed an amended Complaint on September 25, 2015.


On September 28, 2015, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.
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 both English and Japanese, and the proceeding commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2015.
The Center appointed Haig Oghigian as the sole panelist in this matter on November 17, 2015. 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 Background

The Complainant is a Swiss company operating internationally and states that it is a leading designer, manufacturer, seller, and retailer of wristwatches. The Complainant states that it is the owner of the distinctive and well known SWATCH trademark and its corresponding logo (the “Marks”) and that at least as early as 1983, and long prior to the creation of the disputed domain name, the Complainant commenced use of the Marks. It is the holder of registered trademarks containing the Marks in multiple jurisdictions worldwide, including Japan.


The Respondent registered the disputed domain name on July 30, 2014.



5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical or confusingly similar to the Marks. Apart from its use of the Top-Level Domain (TLD), the disputed domain name is identical, on its face, to the Complainant’s registered Marks. The Complainant asserts that the use of the TLD “.tokyo” actually enhances confusion given the fact that the Complainant sells a significant amount of its product in Tokyo, Japan and the TLD is a generic term. Because of this, third parties may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the disputed domain name.


The Complainant further alleges that the Respondent’s actions are not a bona fide offering of goods or services under Policy, paragraph 4(c)(i), as where a domain name is identical or confusingly similar to a well known trademark yet resolves only to a registrar parking page or does not resolve to any website, UDRP panels have not hesitated to hold that no legitimate interest exists on the part of a respondent. The disputed domain name has resolved only to a registrar’s promotional page for many months thus indicating that it is being passively held by the Respondent with no real intention to make a legitimate use of it. The Complainant also contends that the Respondent is not commonly known by the disputed domain name and does not operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the Marks. Further, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain and the Respondent’s use of the disputed domain name does not make a generic use of the word “swatch”.
Lastly, the Complainant asserts that the Respondent intentionally used the Marks without consent from the Complainant and was put on actual notice of the Complainant’s rights in the Marks through the Complainant’s extensive use of the famous SWATCH Marks which predate the creation date of the dispute domain name. The Complainant states that it has operated a website at “www.Swatch.com” since 1996, many years before the Respondent registered the disputed domain name and that this shows that the Respondent intended to divert Internet traffic that was aimed for the Complainant’s legitimate site. The Complainant contends that, taken as a whole, these circumstances establish bad faith registration by the Respondent. Even after the Complainant sent a demand letter to the Respondent on February 9, 2015 and a follow-up letter on February 18, 2015 at the email address listed in the WhoIs record for the disputed domain name and to the Respondent’s registrar, the Respondent has remained silent and continues to use the disputed domain name. The Complainant contends that the Respondent has no legitimate website affiliated with the disputed domain name and has merely passively held the disputed domain name. The Complainant also points out that the Respondent’s true identity was only discovered when the Registrar removed the privacy protection for the WhoIs record relating to the disputed domain name after the filing of the Complaint in this matter and that such use of a privacy service is further evidence of the Respondent’s bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.




6. Discussion and Findings



A. Language of the Proceeding
While the Panel notes that the language of the Registration Agreement is Japanese, the Panel also notes that the Respondent did not object to English being the language of the proceeding and did not file a response. In view of these circumstances, noting the Complainant’s request, and in accordance with previous UDRP decisions, the Panel decides that English will be the language of the proceeding pursuant to paragraph 11 of the Rules.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant must prove that the domain name is identical or confusingly similar to a trademark in which the complainant has rights.
The disputed domain name contains the Mark in its entirety, and “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Further, the Panel agrees that the use of the TLD “.tokyo” actually enhances confusion. Because of this, third parties may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the disputed domain name.
For the above reasons, and in accordance with previous UDRP decisions, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the complainant must prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).

In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is clear on the given evidence that the disputed domain name was registered long after the Complainant registered and started to use the Marks. Further, there is no evidence that the Respondent has been or is commonly known by the disputed domain name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name or any trademark confusingly similar thereto, as a domain name or for any other purposes.


Moreover, the Panel finds that the previous use of the disputed domain name does not confer any rights or legitimate interests to the Respondent.
Therefore, in the absence of any Response to rebut the Complainant’s prima facie case, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the complainant must prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate bad faith registration and use of the domain name. Such circumstances include:
- use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location (paragraph 4(b)(iv)).
In the Panel’s view, the Respondent must have had knowledge of the Complainant’s rights in its Marks when the Respondent registered the disputed domain name, since the Complainant’s Marks are unique and have been used for many years. With regard to the international reputation of the Marks the Panel is convinced that the Respondent knew of the mark, but still registered the disputed domain name. The choice of the disputed domain name was therefore intentional and not random. “Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith” (Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085). The Marks are well-known and the Respondent has no connection to the Complainant, is not authorized and does not have a legitimate purpose to use the Complainant’s trademarks as found under Section 6.B above.
Furthermore, the Panel finds that by fully incorporating the Complainant’s trademark into the disputed domain name, the Respondent could falsely create the impression that it is associated with the Complainant, which is not the case, and this represents “opportunistic bad faith” under the Policy. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix GroupCo., WIPO Case No. D2000-0163.
Regarding use in bad faith, the Panel agrees with previous UDRP panels which have held that the apparent lack of so-called active use of the disputed domain name does not as such prevent a finding of bad faith, especially where, as here, the concerned Mark is very well known.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) of the Policy.

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.

Haig Oghigian

Sole Panelist



Date: November 30, 2015



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