WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SWATCH AG v. Stefano Manfroi

Case No. D2003-0802

 

1. The Parties

The Complainant is SWATCH AG, of Biel-Bienne, Switzerland, represented by André Hernandez, Switzerland.

The Respondent is Stefano Manfroi, of Terni, Italy.

 

2. The Domain Names and Registrars

The disputed domain names <swatchnews.com> and <swatchresearch.com> are registered with Tucows, Inc.

The disputed domain names <swatchdiscovery.com>, <swatchdiscovery.net> and <swatchdiscovery.org> are registered with Innerwise, Inc. d/b/a ItsYourDomain.com.

The disputed domain names <swatchnews.net>, <swatchnews.org>, <swatchresearch.net> and <swatchresearch.org> are registered with @com Technology LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2003. On October 10, 2003, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com and Tucows, Inc a request for registrar verification in connection with the domain names at issue. On October 20, 2003, the Center transmitted by email to @Com Technology LLC a request for registrar verification in connection with the domain names at issue.

On October 10, 2003 Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact as regard the domain names <swatchnews.com> and <swatchresearch.com>. On October 10, 2003 InnerWise Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact as regard the domain names <swatchdiscovery.com>, <swatchdiscovery.net> and <swatchdiscovery.org>. On October 31, 2003, @com Technology LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact as regard the domain name <swatchnews.net>, <swatchnews.org>, <swatchresearch.net> and <swatchresearch.org>.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced November 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2003. On November 12, 2003, the Respondent transmitted by e-mail a request for extension of the Response due date. The Center granted an extension until November 28, 2003. The Response was filed with the Center November 26, 2003.

The Center appointed Anders Janson, Madeleine De Cock Buning and Michael Hwang S. C as panelists in this matter on December 17, 2003. The Panel finds that it was properly constituted. Each member of 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Complainant, SWATCH AG, is a limited private company organized and existing under the laws of Switzerland, with its principal place of business in Biel-Bienne, Switzerland. SWATCH AG is affiliated to The Swatch Group Ltd.

SWATCH AG is a well-known watch manufacturer based in Switzerland. The Complainant has marketed the watches extensively throughout the world and in 1996, more than 200 million watches of the brand "SWATCH" had been sold worldwide. The Complainant has, inter alia, marketed its products through its official website "www.swatch.com".

SWATCH AG asserts it has more than 600 trademark registrations worldwide, mainly in class 14 (jewelry, precious stones, horological and chronometric instruments), but also in classes 3, 6, 8, 9, 11, 12, 16, 18, 21, 24, 25, 26, 30, 34 and 38. SWATCH AG has provided evidence in support of an international registration (registration No. 614 932 with World International Property Organization, registered January 31, 1994) of the device mark "SWATCH". The Panel does not find reason to refuse the assertion made by the Complainant and thus regards the assertion of a vast number of trademark registrations as fact.

The Respondent is an individual with a stated address in Italy, who does not have any affiliation with the Complainant. The Respondentís e-mail address gives only one result when searched for by Google.com.

The disputed domain name <swatchnews.com> was registered with Tucows Inc. on December 6, 2002. The disputed domain names <swatchnews.net> and <swatchnews.org> were registered with @com Technology, LLC on April 16, 2003. The disputed domain name <swatchresearch.com> was registered with Tucows Inc. on December 10, 2002. The disputed domain name <swatchresearch.net> was registered with @com Technology, LLC on April 16, 2003. The disputed domain name <swatchresearch.org> was registered with @com Technology, LLC on April 16, 2003. The disputed domain names <swatchdiscovery.com>, <swatchdiscovery.net> and <swatchdiscovery.org> were registered with InnerWise Inc. d/b/a ItsYourDomain.com on April 21, 2003. The Panel finds that the disputed domain names all refer to the website of "Swatchnews Research Center Association".

The Complainant asserts that several cease and desist letters have been sent to the Respondent. The first was sent on December 9, 2002, another was sent on April 7, 2003. The last cease and desist letter was sent on September 19, 2003. The Complainant further asserts that the Respondent has sent more than 50 e-mails to several persons of the Swatch Group. The Panel notices that the contents of the e-mails concern the disputed domain names and the cease and desist letters sent by the Complainant as well as attached information from other websites in Italian and articles from, among other websites, CNN regarding the Holocaust and gold from concentration camps.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that SWATCH AG is a well-known watch manufacturer that enjoys extensive and widespread goodwill and repute in its trademarks worldwide. The Complainant claims that the domain names <swatchnews.com >, <swatchnews.org>, <swatchnews.net>, <swatchresearch.com>, <swatchresearch.org>, <swatchresearch.net>, <swatchdiscovery.com>, <swatchdiscovery.org> and <swatchdiscovery.net> are identical or confusingly similar to the "SWATCH" trademark. The Complainant contends that the distinctive term of all the domain names is "Swatch", given the complete descriptiveness of the added words "news", "research" and "discovery". The Complainant further contends that because the trademark "SWATCH" is such a strong mark, the abovementioned words that are added to "Swatch" adds little or nothing. The Complainant therefore submits that if the disputed domain names are not identical to the "SWATCH" trademark, they are at least confusingly similar to the "SWATCH" trademark.

It is further stated that the Respondent has not been and is not commonly known by the disputed domain names or the trademark "SWATCH". The Respondent does not own the trademark "SWATCH". Therefore, the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent cannot argue that he is well known under his e-mail address, due to the fact that there is only one result when searched by Google.com, a Community Mailing List. The Complainant further contends that the Respondent has sent more than 50 unsolicited e-mails to persons affiliated with the Swatch Group, which does not allow the Respondent to assert he was using the domain names in connection with a bona fide offering of goods and services.

The Complainant contends that the disputed domain names are neither legal names of the Respondent, nor has the Respondent been commonly known by the disputed domain names. Further, the Respondent has no right to the disputed domain names or any use of the famous "SWATCH" trademark.

The Complainant contends that the Respondent is trying to tarnish the trademark "SWATCH". The Respondent is in a similar fashion trying to tarnish the trademark "MOTOROLA", which is unaffiliated to the Swatch Group, by owning and using the domain names <motorolanews.com> and <motorolaresearch.com> , which are linked to a website called "Motorola News". The website contains information on electromagnetic fields in connection to mobile phones. The Complainant has provided printouts of the now mentioned websites and WHOIS-registers, which specifies the Respondent as owner of the websites.

The Complainant contends that the Respondent has registered and has used the domain names in bad faith. The Respondent has registered 9 domain names directly related to the brand "SWATCH" and must have had knowledge of the trademark when doing so. The use of the domain names is causing damage to the legitimate interest of the trademark. The information on the website to which the disputed domain names link, i.e. information on electro-magnetic fields ("EMF"), can be published without infringing the "SWATCH" trademark. The Respondent owns other domain names which could be used for this purpose, such as <emf-research.com>, <emfresearch.com> and emfresearch.org> which all link to the same website as the disputed domain names. The Complainant further contends that 8 of the 9 disputed domain names have been registered after the first cease and desist letter from the Complainant on December 9, 2002. The Complainant contends the fact that a) the Respondent owns other domain names containing the mark "MOTOROLA" in a similar manner; and b) the Respondentís engagement in a pattern of such conduct, to be evidence of bad faith.

Furthermore, the Respondent has intended to threaten or disturb the Complainant, which is evident by the e-mails which have continually been sent to persons affiliated with the Swatch Group. The Complainant contends that the Respondent has been seeking an economic offer from the Complainant, thus registering the disputed domain names primarily in order to sell them to the Complainant in violation of Paragraph 4(b) (i) of the Policy.

The Complainant finally contends that, for the abovementioned reasons, the domain names <swatchnews.com >, <swatchnews.org>, <swatchnews.net>, <swatchresearch.com>, <swatchresearch.org>, <swatchresearch.net>, <swatchdiscovery.com>, <swatchdiscovery.org> and <swatchdiscovery.net> should be transferred to the Complainant.

B. Respondent

The Respondent acknowledges that the he was aware that "Swatch AG" was and still is the owner of the device mark "SWATCH"registered with WIPO, under the registration number 614932. The Respondent contests that the Complainant does not own the word mark "swatch", or the word marks "swatchnews", "swatchdiscovery" and "swatchresearch".

The Respondent asserts that the word "swatch" is a generic term, commonly used in the English language, meaning "a sample of cloth or other material" or "a specimen or distinguishing sample of anything".

The Respondent contends that the device mark "SWATCH" cannot be confusingly similar to or identical with the disputed domain names due to the different nature of the special form of writing which results in a "logo mark" and the domain names. The device mark is a design and the domain names are comprised of generic common English words.

The Respondent asserts that a common generic term in principle cannot be registered as a trademark. A registration of a device mark does not give the owner the rights to the generic term, with which the device mark is created. The Respondent further asserts that the Complainant has failed to register the word mark "SWATCH" with the United States Patent and Trademark Office, as well with the Spanish Trademark Registry. The Respondent contends that the Complainant has not demonstrated any evidence of any registrations of a trademark of the generic term "swatch".

The Respondent further asserts that the generic term "swatch" is commonly used which is evident by an Internet search, the result of which is provided by the Respondent. The Respondent also contends there are more than 1660 domain names containing the word "swatch". The Respondent further contends that there were 191 registered domain names beginning with the word "swatch" by February, 2003.

The Respondent further contends the Complainant has voluntarily manipulated an e-mail, sent by the Respondent on February 6, 2003, and attached to the Complaint as evidence, by deleting a list of 191 domain names starting with the word "swatch". By deleting the list of domain names, the Respondent contends that the Complainant has acted in bad faith in order to withhold the information to the Panel. Such actions have been regarded as reverse domain name hijacking in a previous WIPO Case (Studienkreis GfM v. STUDIENKREIS Bildungsmanagement GmbH, WIPO Case No. D2002-0153). The Panel notices that the Complainant has removed text from the enclosed copy of the e-mail, though indicating the deletion with the commonly used "[Ö.]".

The Respondent further contends that even though a number of the 191 domain names starting with "swatch" are owned by the Swatch Group, several of them are owned by others with no apparent affiliation with the Swatch Group. The Respondent further asserts that the Complainant, even though having full knowledge of these domain name registrations, has not during the period from February 6 to November 2003 filed any actions against these owners. The Complainant has only taken action against the Respondent, who claims to have full rights and legitimate interests in the domain names, and also claims to be using the domain names in good faith.

Furthermore, the Respondent contends that the addition of the words "news", "research" and "discovery" are significant which the Complainant is aware of which is evident by the fact that the Swatch Group registered the domain names <swatch-news.com>, <swatch-research.com> on April 8, 2003.

The Respondent also contends that the Complainantís contention before the Panel to transfer the domain names to the Complainant will have the effect that all confidential and private e-mail messages addressed to "Swatchnews Research Center" will be available to the Complainant. This is in itself an act of bad faith on the part of the Complainant. The loss of the domain names would have a substantial negative affect on the Respondent and the Respondentís work, and the relationships which have been developed through the website to which the disputed domain names link.

The Respondent further contends that the Complainant has registered a number of domain names, such as, inter alia, <swatch-news.net> and <swatch-research-org>, with the Swatch Group as registrant. The domain names had as administrative and billing contact André Hernandez (stating his personal e-mail address) who represents the Complainant in this matter, which information was later changed to "The Swatch Group, Legal Department". The Respondent contends this to be an act of bad faith on the part of Mr. Hernandez, and the Swatch Group.

The Respondent contends that the Complainantís assertion that there exists no relationship between the Respondent and the Complainant is false. The Respondent has sent numerous e-mails to the Complainant, and has received answers from the PR / Press Manager and a scientist affiliated with the Swatch Group. The Panel notes that the e-mails provided in copy shows the majority to be confirmations of e-mails received. The answers from the scientist concern findings regarding electromagnetic fields, apparently due to direct questions from the Respondent.

The Respondent asserts that the Complainant is aware of the Respondentís affiliation with the non-profit organization "Swatchnews Research Center", and that the Respondent is the President and legal representative of said association.

The Respondent further contends that he is commonly known by the domain name, due to the Swatchnews Research Associations contacts with, inter alia, universities, research centers, Laboratories and hospitals. The Respondent has provided the Panel with a form signed by the Respondent pertaining to a university, "Università e della Ricersa" and a certification showing Swatchnews Research Center to have "successfully submitted the Registration and Feedback Form" to Allstar Network (affiliated with NASA).

The Respondent also contends that a search of an e-mail address such as the address available on the Whois records, does not show the contents and quantity of correspondence to this e-mail address. The Respondent states that the Respondent has other e-mail addresses, of which one is the Respondentís official e-mail address.

The Respondent further contends that the disputed domain names never have been used for commercial purposes and without intent to gain commercially or for the purpose of misleading by diverting customers or to tarnish the Complainantís mark. The content of the website, to which the disputed domain names are linked, is not commercial and the purpose of the website is not to compete with the Complainant. The Respondent contends the domain names are used in good faith.

The Respondent contends the Complainant is trying to tarnish the Respondent in these proceedings. The Complainantís contention regarding the domain names <emfresearch.com>, <emfresearch.org> and <emf-research.com> is false as the domain names only link to the website "www.swatchnews.com", thus not linking to their own websites.

The Respondent contends that he has not attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship or affiliation of the website. The Respondent has not registered the domain names for the purpose of disrupting the Complainantís business. The website to which the disputed domain names link is not commercial.

The Respondent, as it must be understood, claims that the Complainantís contention that the Respondent has intended or intends to offer the disputed domain names is false. The Respondent had no commercial interest in this respect and any meeting between the parties would concern the Respondentís research to comply with laws and norms. The Respondent feels persecuted by the Complainantís actions.

The Respondent finally contends that the Complainant is guilty of an attempt of Reversed Domain Hijacking in order to deprive the Respondent of his registered domain names.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "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".

In accordance with paragraph 4(a) of the Policy, the complaint must prove that:

(i) the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Respondent has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names in question; and

(iii) the domain names have been registered and are being used in bad faith

A. Identical or Confusingly Similar

Firstly, the Respondent has argued that the Complainant does not own the wordmark "SWATCH", only the device mark "SWATCH". The Complainant has provided evidence of a WIPO registration for the device mark "SWATCH" and has contended that the Complainant has made more than 600 trademark registrations around the world. The Respondent has not contested this.

The Panel notices that even though the term "swatch" has a meaning from the linguistic point of view in the English language, the term is likely to be meaningless in most other languages. It is therefore probable that some of the 600 registrations worldwide by the Complainant are of the word mark "swatch". However, the Complainant has failed to produce evidence of any such registrations. Nevertheless, there is no doubt in the Panels opinion that the trademark "SWATCH" is a very famous trademark throughout the world. The trademark "SWATCH" has acquired extensive distinctiveness and therefore a wide scope of protection.

The second question to be answered is if the relevant part of the disputed domain names at issue, "swatch", is identical with or confusingly similar to the trademark, which is, as established above, a very famous trademark. The Respondent has contended that a device mark cannot be identical or confusingly similar to a domain name.

It is obvious that a device mark cannot be identical with a domain name, as a device mark per definition is a design, such as a stylized version of word or an object. However, since a domain name in no way can include a design element, any Internet user must find a website by searching the name they know, rather than the design element, (see inter alia Park Place Entertainment Corporation v. Mike Gorman, WIPO Case No. D2000-0699). The device mark "SWATCH" is known as the word "Swatch" and any Internet user would suppose that a website pertaining to the trademark would contain the word "swatch", just like any Internet user would suppose that the device mark "COCA-COLA" should be linked to the word "coca-cola" when used to search the Internet.

Finally, do the addition of the words "news", "discovery" and "research" to the word "swatch" have any effect as regards the similarity between the trademark and the disputed domain names?

Because the trademark "SWATCH" is of such high stature, it is evident that the term is the distinctive feature of the disputed domain names. The addition of the words "news", "discovery" and research" do not constitute distinguishing elements in the domain names. The Panel finds, as previously established in numerous WIPO decisions, inter alia, PepsiCo, Inc. v. Diabetes Home Care, Inc., WIPO Case No. D2001-0174 and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184, that the addition of common nouns to a famous trademark does not change the overall impression of association with Complainant. The additions of the gTLDs (.com, .net and .org) are of no legal importance in this respect.

To conclude, the Panel finds it established that the trademark "SWATCH" is very famous, throughout the world. The trademark has acquired extensive distinctiveness and therefore a wide scope of protection. Even though the Complainant has failed to produce evidence of ownership of trademark registrations of the word mark "SWATCH", the Complainant has proven ownership of the device mark "SWATCH". The Panel further accepts the Complainantís assertion of more than 600 trademark registrations and moreover finds it likely that the Complainant in fact owns trademark registrations pertaining to the word mark "Swatch". However, the existence of any such registrations is not of crucial importance in this matter. The Panel finds that a famous device mark such as "SWATCH", which is a stylized writing of a pronounceable word, is identical to the distinctive word of the disputed domain names. Considering the addition of the words "news", "research" and "discovery" to the distinctive feature in the disputed domains name, the Panel finds the disputed domain names confusingly similar to the trademark in question.

Accordingly, this Panel concludes that the Complainant has satisfied the requirements of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent does not have any rights or legitimate interest in respect of the domain name.

The Panel finds it established that the Respondent is not affiliated, or in any other way has a relationship with, the Complainant. The Respondentís contentions that he has a relationship with the Swatch Group are based on the presented evidence of e-mail correspondence between himself and several persons employed or affiliated with the Swatch Group. These e-mails are apparently unsolicited. The fact that he has received answers to questions he obviously has posed (the Respondentís e-mails were omitted from the correspondence) is not evidence of a relationship between the Parties. In this respect, the Panel finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain names.

Further, the Respondent claims to have rights and legitimate interest in the disputed domain names as set out in paragraph 4(a)(ii) and as demonstrated in paragraph 4(c) of the Policy.

Firstly, the Respondent argues that he uses the domain names for a bona fide offering of goods and services (paragraph 4(c)(i) of the Policy). The Panel notices that the domain name <swatchnews.com> was registered on December 6, 2002. The Complainant sent its first cease and desist letter on December 9, 2003. The Respondent registered the other eight disputed domain names thereafter, i.e. after any notice to the Respondent of the dispute (see paragraph 4(c)(i)).

The Panel therefore concludes that, for the findings as regard the abovementioned paragraph, the only relevant disputed domain name is <swatchnews.com>.

The Complainant does not contest that the Respondent is conducting research of the electro magnetic fields pertaining to wrist-watches and that the result of this research is presented on the website to which all the disputed domain names resolves.

It should be emphasized that the result of the Respondentís research is not of relevance for the Panelís decision in this matter. The question is if the Respondent is making a bona fide offering through his website.

The Panel has concluded that the domain names are confusingly similar to the Complainantís mark. The Panel finds it established that the Respondent has selected the word "Swatch" to be a distinctive part of the domain names domain names because it is a famous trademark, and not due to the wordís meaning in the English language. The Panel notices that the Respondent publishes his research, which solely seems to concern research of watches of the brand "SWATCH" (commonly "Swatches"), on the website to which the disputed domain names resolve. The Panel also notices that the Respondent has placed a small disclaimer on the website, according to which the Respondent denies any affiliation with the Swatch Group. However, for all the foregoing reasons, the Panel concludes that the Respondent intentionally has chosen to publish the information on a website which Internet users searching for information on Swatches may, at first sight, misinterpret as affiliated or supported by to the Complainant.

In Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, also cited in, inter alia, World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499, the Panelists established that "use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods and services. To conclude otherwise would mean that a Respondent could rely on international infringement to demonstrate legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." The Panel concludes that the Respondent intentionally trades on the fame of the Complainantís very famous trademark. Thus, the offering of services, in this case information to potential customers, cannot be considered "bona fide".

Secondly, the Respondent argues that he is commonly known by the name "Swatchnews Research Associations" or by the domain names, such as in e-mail addresses (Paragraph 4(c)(ii) of the Policy). Initially, the Panel finds it established that the Respondent has not acquired any trademark rights to any of the domain names. The Respondent contends that he is commonly known by "Swatchnews Research Associations" through his contacts with, inter alia, universities, research centers, laboratories and hospitals. The evidence in support of his contentions consists of a form, which the Respondent apparently has signed on behalf of "Swatchnews Research Association", which names a university in the letterhead, and a "certification" from "Allstar" (apparently affiliated with NASA) which as far as the Panel can understand only means the Respondent has filled out a form on the Internet on behalf of "Swatchnews Research Association". This is not sufficient evidence in support of the Respondentís contentions in this regard. Furthermore, the only indication that the Association is in any way a registered corporate entity, are the "articles of association" which have been signed by the Respondent but otherwise do not seem to be officially registered in any way. That is not evidence of any rights to the domain names.

In conclusion, the Panel finds it established that the Respondent is not commonly known by the domain name.

Finally, the Respondent claims he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at use Paragraph 4(c)(iii). One of the inherent characteristics of the Internet is that anyone may publish information, which may be interesting for other people. There is no doubt that scientific research in many ways have benefited from the opportunity to share results through the Internet. In this respect, the Panel finds that the Respondent therefore makes a legitimate noncommercial use of the domain names. However, the Panel must also conclude whether this use is "without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue" (see Paragraph 4(c)(iii)). When reviewing the content of the website, as presented by both parties, there is no evidence of the Respondentís intention of gaining financially of the disputed domain names. Nevertheless, the information on the Respondentís research, which is published on the website to which the disputed domain names are resolved, whether valid or not, must be considered to be information which tarnishes the Complainantís mark. Any potential customer who whishes to find information on, or purchase a Swatch, is likely to end up on the Respondentís website and as a result may be affected by the information contained therein in a way which proves negative for the Complainant. It is the Panelís opinion that any Internet user who wishes to find information on electromagnetic fields are unlikely to search for such information on any domain containing the trademark ""SWATCH". Therefore, the Panel concludes that the Respondent intends to tarnish the "SWATCH" brand.

The Complainant has therefore succeeded in establishing the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of establishing whether paragraph 4(a)(iii) of the Policy is applicable, the Panel must establish whether the domain name has been registered and is being used in bad faith.

For the purposes of paragraph 4(a)(iii), it is stated in Paragraph 4(b) of the Policy, that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on its website.

The Complainant has alleged that the Respondent intends to gain commercially by offering to sell the domain names to the Complainant. When the Panel reviews the e-mails submitted by the Complainant and the Respondent, the Panel notices that the following statements have been made by the Respondent:

On January 14, 2003 at 21:07, the Respondent wrote;

"To: Mrs Beatrice Howald & Swatchgroup Legal Department

[Ö...] About your request to transfer my domain swatchnews.com to Swatchgroup Iím not interested because my work is not resell Internet domains.

Iím a Researcher and I can resell only what I produce and if Swatchgroup should like to buy "all the rights" of my research we can speak aboutÖ!!!

Best regards Stefano Manfroi"

On April 9, 2003, 1:06 PM, the Respondent wrote;

"Mr. Hernandez, please you try to being more realisticÖif you continue with your line you donít have exit way with me and you know this

Instead if you want to be more practical, you can come in Italy in my city where we could sit around a table in good Italian restaurant and speaking about our interests and naturally you will be my guest

Best regards Stefano Manfroi"

On the same day, at 15:23 the Respondent wrote;

"Mr. Hernandez, in this possible Italian meeting you can talk with my Italian lawyer too and we will find an agreement about my Research and about my Domains. Instead if you not want meet me this mean that you want only disturb me and all this for my Research about the Magnetic Emission of Swatch watches.

Best Regards Stefan Manfroi"

The Panel finds that these e-mails shows that the Respondent intended to sell the domain names as a "package deal" which would include the Respondentís research.

Furthermore, the Complainant argues that the Respondent has intended to threaten or disturb the Complainant, which is evident by the e-mails, which repeatedly and apparently unsolicited have been sent to persons affiliated with the Swatch Group. The Panel finds that these e-mails, considering the intention of selling both the research and the domain names as package deal, are evidence of bad faith.

As stated above, the Panel has found that the Respondent intends to tarnish the "SWATCH" brand by publishing his research, whether valid or not, on a website which any Internet user wishing to seek information on Swatches is likely to visit when surfing the Internet. The Complainant contends that the fact that the Respondent owns other domain names containing the mark "MOTOROLA" which is being used in a similar manner is evidence of bad faith and that the Respondent has engaged in a pattern of such conduct. The Respondent has not contested the claims, though claiming the domain names in question are used in good faith. In the Panelís opinion, this is evidence of a pattern of conduct constituting bad faith.

The Respondent has admitted to having full knowledge that the Swatch Group owned the device mark "SWATCH" at the time of his registrations.

Considering all of the above, the Panel therefore finds it established that the Respondent has registered and used the disputed domain names in bad faith.

The Complainant has therefore succeeded in establishing the third element in paragraph 4(a) of the policy.

Reverse Domain Name Hijacking

The Respondent has argued that the Complainant has been using the policy in bad faith to attempt to deprive a registered domain-name holder of a domain name (Reverse Domain Name Hijacking). Because the Panel rules in favor of the Complainant, there can be no reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <swatchnews.com>, <swatchnews.net>, <swatchnews.org>, <swatchresearch.com>, < swatchresearch.net>, <swatchresearch.org>, <swatchdiscovery.com>, <swatchdiscovery.net> and <swatchdiscovery.org> be transferred to the Complainant.

 


 

Anders Janson
Presiding Panelist

Madeleine De Cock Buning
Panelist

Michael Hwang S.C
Panelist

Date: January 20, 2004