WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swatch Ltd. v. www.lazydomains.com
Case No. D2002-0854
1. The Parties
The Complainant is Swatch Ltd., a private limited company incorporated under the laws of Switzerland, with its principal place of business in Switzerland.
The Respondent is www.lazydomains.com of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name And Registrar
The domain name which is the subject of this proceedings is <swatch.org>.
This domain name is registered with Enom Inc., 16771, NE 80th Street, Suite 100, Redmond, WA 98052, United States of America.
3. Procedural History
The main procedural background of this administrative proceeding is as follows:
(a) A complaint was submitted electronically by the Complainant to the World Intellectual Property Organization (hereafter "the WIPO")Arbitration and Mediation Center (hereafter "the Center") on September 12, 2002, and in hardcopy on September 13, 2002. Payment by Complainant of the requisite filing fees was made by credit card.
(b) On September 12, 2002, a request for Registrar verification was transmitted by the Center to the Registrar Enom, requesting it to:
- confirm that a copy of the complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "the Supplemental Rules"), Paragraph 4(a).
- confirm that the domain name at issue is registered with Enom.
- confirm that the person identified as the Respondent is the current registrant of the domain name.
- provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
- confirm that the Uniform Domain Name Dispute Resolution Policy (hereafter "the Policy") applies at the time of the registration of the domain name.
- indicate the current status of the domain name.
(c) By email dated September 12, 2002, the Registrar Enom responded as follows:
- Enom had not received a copy of the Complaint from the Complainant.
- Enom is the Registrar of the domain name <swatch.org>.
- "www.lazydomains" is the current registrant of the said domain name, and also provided the relevant details for the Administrative and Technical Contact.
- The Policy applies to the domain name.
- The domain name registration <swatch.org> will remain locked during the proceeding.
(d) Following a deficiency notification from the Center of September 13, 2002, an amended Complaint was submitted electronically to the Center on September 16, 2002, and in hardcopy on September 17, 2002.
(e) Having verified that the complaint satisfied the formal requirements of the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "the Rules"), the Center, on September 18, 2002, transmitted by e-mail, a notification of Complaint and Commencement of Administrative Proceedings to the Respondent.
The Complainant elected to have its complaint resolved by a single panel member.
(f) The Respondent was advised that a Response to the Complaint was required within 20 calendar days from the date of commencement of the administrative proceeding, that is till October 8, 2002. Respondent was also advised that any Response should be communicated, in accordance with the Rules, Paragraph 5(b) and Supplemental Rules Paragraph 3, by four sets of hard copy and by e-mail.
Contrary to these requirements, the Respondent replied to the Center only by an email dated October 8, 2002..
On October 8, 2002, the Center acknowledged receipt of the Response and requested the postal address of the Respondent and of any authorized representative to act for the Respondent according to Rules, Paragraph 5(b)(ii) before October 10, 2002. No further response has been received.
(g) On October 10, 2002, the Center invited the undersigned to serve as Panelist in the case subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence.
On October 10, 2002, the undersigned transmitted by fax the executed Statement and Declaration to the Center.
On October 11, 2002, the Center notified the Complainant and the Respondent of the appointment of the Panel and sent the relevant documents, received by mail on October 14, 2002. According to Paragraph 15 of the Rule, in the absence of exceptional circumstances, the Panel was required to forward its decision to the Center by October 25, 2002.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found necessary to request further information from either of the parties.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Complainant has provided a copy of the registration of the following mark:
International Trademark SWATCH, N° 614932 of January 31, 1994. Said International registration is owned by Swatch AG (Swatch S.A.), (Swatch Ltd.), 94 rue Jacob Stämpfli, CH-2500 Bienne, Suisse. The trademark is protected in many countries and is applied to many goods and services of classes 1 to 42.
There was no evidence that registration of this trademark had been sought in the UK where Respondent seems to have its place of business. Besides, the link between Swatch AG, owner of the trademark and Swatch Ltd the Complainant has not been explained.
According to the WHOIS information supplied by the Complainant, Respondent registered the <swatch.org> domain name on May 31, 2002. The Respondent is not a licensee of the Complainant, nor is he authorized otherwise to use the Complainant’s mark.
After registering the domain name, the Respondent placed the domain name on a list of domain for sale "at bargain price" among other domain names, and the first domain name displayed was <swatch.org>. A copy of the web page was downloaded by the Complainant on September 12, 2002. The offer for the domain name <swatch.org> showed an asking price of US$ 1.500.
The service Agreement in effect between Respondent and Enom subjects Respondent to the Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Policy requires that the domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider regarding allegations of abusive domain name registration. Respondent has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
(a) The Complainant contends that :
- the domain name <swatch.org> is identical to the trademark SWATCH, N° IR 614.932.
- Respondent has no rights or legitimate interests in said domain name.
- the domain name <swatch.org> has been registered and is being used in bad faith because it was registered primarily for the purpose of selling, renting or transferring the domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of the out-of-pocket costs directly related to the domain name.
(b) The Respondent contested the allegations of the Complainant. The Respondent explains that Lazydomains was a project with, in particular, the objectives to buy and sell popular domain names, to offer these domain names at affordable prices, to provide preferential discount for non-commercial, non-profit organizations and charities and to be transparent The Respondent explains that it is the first Complaint received by Lazydomains.com. The Respondent informs that the Complainant did not approach Lazydomains.com in order to try to find an amicable settlement. The Respondent is of the opinion that the sole objective of the Complainant is to damage the reputation of Lazydomains.com. Lazydomains refers to some presumed special business links between the WIPO and the Swatch Group and believes that the Complainant is using the Policy in bad faith. Besides, the Respondent states that the domain name <swatch.org> was registered over four months ago and wonders why the Swatch Group decided after six years that it would like <swatch.org>, a TLD extension generally more applicable for non profit organization use.
Respondent states that the pricing and placement is not unique to the disputed domain name <swatch.org>. It is automatically calculated using a formula based on the TLD extension and the number of similar TLDs that are available. Furthermore, Lazydomains is of the opinion that the word swatch is a generic meaning 'A sample strip cut from a piece of material'.
Lazydomains.com thinks that it has a legitimate interest in respect of the domain name in so far as it being an item for sale and that the domain name has been registered in good faith as an item for reselling.
Lazydomains.com contests that the domain name has been registered and used in bad faith: the offer to buy the domain name is open to any user of the Internet .
Lazydomains.com has attached a copy of its Trademark dispute policy.
6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under Paragraph 4(a) of the Policy, is to establish three elements to merit a finding that a Respondent has engaged in abusive domain name registration and to obtain relief. The three elements to be proved by the Complainant to warrant relief are :
(a) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
(c) The domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Center took all steps necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. In connection with the notification of deficiency in light of the requirements of Paragraph 5(b) of the Rules of October 8, 2002, and despite a reminder on October 9, 2002, the Respondent did not provide its postal address and did not detail any representative authorized to act for the Respondent in the administrative proceeding. The deadline of October 10, 2002, to remedy this deficiency has not been met by the Respondent. The Center has informed the Panel that no communication in response was made.
The Panel will consequently have to consider the case on the basis of the factual circumstances contained in the Complaint and other available documents to the extent relevant.
The Panel examined the three elements as follows :
Identity or Confusing Similarity
The Complainant has to prove that the domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights. The domain name <swatch.org> is confusingly similar to the Complainant’s IR trademark SWATCH. In fact, the domain name differs from the trademark only in that the extension ".org" is added. The addition of the notion ".org" is not sufficient to remove the likelihood of confusion between the mark and the domain name.
The Panel is of the opinion therefore that there exists in fact a confusing similarity between the domain name and the Complainant’s registered trademark.
Rights or Legitimate Interests
The Complainant has to prove that the Respondent has no rights or legitimate interests in the domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its SWATCH mark or to apply for any domain name incorporating the mark. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
Registration and Use in Bad Faith
Complainant has to prove that the domain name has not only been registered in bad faith, but has also been used in bad faith. Paragraph 4(b) of the Policy mentions a number of circumstances which, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, the registration of a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of out-of-pocket costs directly related to the domain name. There is no evidence of any direct approach to Complainant by the Respondent, however the Respondent offers for sale, among other domain names, the domain name <swatch.org> for an amount of US$ 1500 which is clearly in excess of out-of-pocket costs regarding said domain name (World Wrestling Federation Entertainment Inc. v Michael Bosman, WIPO Case No. D1999-0001 (January 14, 2000): the Respondent offered to sell the domain name to the Complainant "for valuable consideration in excess of out-of-pocket expenses" : Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO Case No. D2000-0051 (March 24, 2000): the domain name was offered for sale on the Internet for US$ 24,000 and used to link to a website which advertises numerous Internet domain names for sale).
On balance, taking into account the material present in this case, the Panel concludes that all the circumstances in the case are sufficient to establish that the domain name has in fact been registered and is being used in bad faith, according to Paragraph 4(a)(iii) and 4(b)(i) of the Policy.
The Panel concludes that the domain name <swatch.org> is confusingly similar to Complainant’s trademark SWATCH, that Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.
Pursuant to Paragraph 4(i) of the Policy and in accordance with the request by Complainant, the Administrative Panel requires that the domain name <swatch.org> be transferred to Complainant.
Date: October 23, 2002