WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swatch Ltd. v. Peter Kaeppeli
Case No. D2002-0956
1. The Parties
Complainant is Swatch Ltd., represented by André Hernandez, Legal Dept., The Swatch Group Ltd., Biel-Bienne, Switzerland, hereinafter the "Complainant".
Respondent is Peter Kaeppeli, Manila 1700, the Philippines, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name in dispute is <swatch-group.com>.
The registrar for the disputed domain name is Network Solutions, Inc., 505 Huntmar Park Drive, Hernon, Virginia 20170, United States of America.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2002, and in hard copy on October 17, 2002. On October 16, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
(b) On October 16, 2002, the Center also transmitted a Request for Registrar Verification to the Registrar, with the Registrarís Response received by the Center October 17, 2002, confirming that the domain name at issue was registered through Network Solutions, Inc.
(c) Complainant submitted an amendment to the Complaint by E-mail on October 18, 2002, and hardcopy on October 21, 2002, in order to correct a Complaint Deficiency.
(d) On October 21, 2002, the Center had satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules"), and transmitted a Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent.
(e) No Response has been submitted by the Respondent within the deadline for the submission of Response. Accordingly, the Center issued a Notification of Respondent Default on November 12, 2002.
(f) In view of the Complainantís designation of a single panelist, the Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center formally appointed him as Sole Panelist on November 19, 2002, and transmitted the case file to the Administrative Panel the same day.
(g) The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its Decision based on the complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
After considering the Complainantís assertions, supported by the documents enclosed as annexes to the complaint, and undisputed by Respondent because of its default, the Administrative Panel finds the following:
Complainant is the owner of the company name ĎThe Swatch Groupí and the trade mark SWATCH, which is registered extensively as a trade mark throughout the world.
The Respondent has registered the domain name <swatch-group.com>.
5. Partiesí Contentions
The Complainant asserts that:
The domain name at issue is confusingly similar to Complainantís trade mark.
The disputed domain name is confusingly similar to Complainantís trade mark, and the company name of Swatch Ltd.ís parent company, The Swatch Group Ltd.
The Respondent has no legitimate interest in respect of the domain name at issue.
Neither Swatch Ltd., nor The Swatch Group Ltd. have ever authorized the respondent to register the domain name at issue. Complainant has sent two cease and desist letters to Respondent of October 7, 2002, and October 9, 2002, without receiving a response from Respondent. The web site corresponding to the domain name at issue is Ďunder constructioní, and does not give any indications of legitimate interest in the domain name.
The domain name was and is registered and used in bad faith.
Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Complainant who is the owner of the trademark, or to a competitor of Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
Respondentís bad faith is evidenced by the fact that he also is the holder of several other domain name registrations that in all probability is registered for the same bad faith purposes. These domain name registrations are:
The Complainant requests the Administrative Panel issue a decision that the contested domain name must be transferred to the Complainant.
The Respondent has not submitted a Response, and is thus in default. Nor has Respondent made any submissions whatsoever after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark
The Administrative Panel has considered the allegation by the Complainant as to the identity of the domain name at issue with the Complainantís trademarks. As a result of Respondentís default, these allegations have not been contested.
Complainantís trademark is to be considered a famous mark. The mark is integrated in its entirety into the contested domain name. SWATCH is the relevant and distinctive part of the domain name, and the addition of the generic term Ďgroupí, is not sufficient to prevent the confusing similarity between Complainantís trade mark and the contested domain name. Internet users will most likely believe that a website available under the domain name at issue, is at least sponsored by or affiliated to the owner of the trademark which forms a component of the domain name.
In previous proceedings under the UDRP, Panels have found that for purposes of assessing the confusing similarity between domain names and trade marks, top-level domain extensions, spaces, hyphens and punctuation are to be ignored, see WIPO Case Nos. D2000-0075, D2000-0119 and D2000-0206.
Thus, the Administrative Panel find that Respondentís domain name <swatch-group.com> is confusingly similar to Complainantís trade mark SWATCH.
6.2 Rights or legitimate interest in the domain name
The Administrative Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue.
Complainant maintains that it has in no way authorized the respondent to register the domain name at issue. As a result of default, these allegations have not been contested by the Respondent. In the present case, it would be difficult for Complainant to prove that an authorization to register and use the domain name at issue has not been granted, at the same time as Respondent easily could have done so, pursuant to Paragraph 4(c) of the Policy.
Where Respondent has failed to give any response, it is therefore considered sufficient for Complainant to make a prima facie showing of the fact that Respondent lacks rights or legitimate interest in the contested domain name.
On November 29, 2002, the Administrative Panel visited the "www.swatch-group.com" web site of the Respondent in order to investigate whether there could be found any evidence as to Respondents rights or the legitimacy of the interest of the Respondent in the contested domain name. The Administrative Panel found, that in correspondence with Complainantís assertions in its Complaint, the web site was Ďunder constructioní, and gave no evidence of any rights or legitimate interests in the domain name on the part of the Respondent.
There are thus no indications whatsoever that Complainant has granted Respondent any rights to use its trade mark, nor the right to register or use the domain name at issue, nor are there any indications present that Respondent has any other rights or legitimate interests in any trade mark corresponding to the domain name at issue.
In the circumstances, this Administrative Panel is thus satisfied that Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the contested domain name.
Hence, the Administrative Panel finds that the Respondent has no rights or legitimate interest in the contested domain name.
6.3 Registration and use in bad faith
Complainantís allegations with regard to the Respondentís registration and use of the domain name in bad faith has been considered by the Administrative Panel.
Respondent has not invoked any circumstances which could invalidate Complainantís allegations and evidence with regard to the Respondentís registration and use of the domain name in bad faith.
Complainantís trade mark is very well known throughout the world, and has thus in all probability been known to Respondent when registering the domain name at issue. The Administrative Panel finds Respondent highly unlikely to have registered the domain name at issue without being familiar with Complainantís trade mark.
As the web site corresponding to the domain name at issue is currently Ďunder constructioní, and as Respondent has in no way made contact with Complainant, nor the Center, it is not possible to single out any of the circumstances mentioned in Paragraph 4(b) of the Policy as evidence of bad faith conduct on the part of the Respondent. It is therefore necessary to make an overall evaluation of Respondentís conduct in order to decide whether he has registered, and is being used in bad faith.
The Complainant has documented that Respondent also is the holder of several other domain names corresponding to famous trade marks, in which Respondent, in the opinion of the Administrative Panel, most likely does not have any rights or legitimate interests. This indicates that Respondentís intention by registering the domain name at issue most likely is to be classified under one or more of the alternatives mentioned in Paragraph 4 (b) of the Policy.
Previous panel decisions (see e.g. WIPO Case No. D2000-0003) has found that the passive holding of a domain name by the Respondent amounts to the Respondent acting in bad faith. The fact that there at present is no actual content on the web page corresponding to the domain name at issue, is therefore not sufficient to prevent Respondent from having used the domain name in bad faith pursuant to Paragraph 4 (b) of the Policy.
The Administrative Panel therefore finds that the Respondent has registered and used the domain name at issue in bad faith.
The Administrative Panel has found that the domain name <swatch-group.com> is confusingly similar to the trademark of the Complainant, and that the Respondent has no rights to or legitimate interests in said domain name. The Administrative Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel therefore decides to request that the domain name <swatch-group.com> be transferred to the Complainant Swatch Ltd.
Peter G. Nitter
Dated: December 3, 2002