WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swatch Ltd. v. Uli Kumli, Social-Media. Club
Case No. D2016-2338
1. The Parties
The Complainant is Swatch Ltd. of Biel/Bienne, Switzerland, represented by FMP Fuhrer Marbach & Partners, Switzerland.
The Respondent is Uli Kumli, Social-Media. Club of Utzenstorf, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <swatch.click> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 November 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2016.
The Respondent submitted two communications on December 12, 2016.
On December 14, 2016, the Complainant submitted an objection to the Respondent’s submissions.
On December 19, 2016, the Respondent filed a further submission.
The Center appointed Peter Wild as the sole panelist in this matter on December 19, 2016. 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 well known Swiss watch business established in 1983 and a subsidiary of the Swiss watch group, The Swatch Group Ltd. The Complainant is the owner of the SWATCH trademark which it has been using for its products and services since 1983. The Complainant sells its products worldwide.
SWATCH is protected as trademark and has been registered on a world-wide scale, for example in Switzerland with the following trademark registrations: SWATCH (word) class 14, 2P-314759 registration on March 29, 1982.
Furthermore, the Complainant’s company name “Swatch” is registered in the Commercial Register of the Canton of Bern, Switzerland. The Complainant has also registered many domain names comprising the SWATCH trademark including <swatch.com> and many country code Top-Level Domains (“ccTLDs”) such as <swatch.ch>, <swatch.fr>, <swatch.de> or <swatch.us> as well as some containing new generic Top‑Level Domain (“gTLD”) extensions such as <swatch.watch>, <swatch.store> or <swatch.swiss>.
The Respondent registered the disputed domain name on January 19, 2015. On April 9, 2016 the disputed domain name directed the Internet user to a website which showed some of the Complainant’s products, in particular Swatch marketing material and videos showing the Complainant’s Delegate of the board.
The Complainant sent a warning letter to the Respondent on June 7, 2016. On June 27, 2016, the Respondent answered and rejected the requests.
A further exchange resulted in the Respondent informing the Complainant that it would be willing to transfer the disputed domain name against payment of CHF 20,000, after the Complainant had offered CHF 200 for the disputed domain name. The Complainant rejected and filed the present Complaint. The Respondent filed a submission on December 12, 2016 claiming that the disputed domain name was registered as the result of a project for “START WATCH & CLICK” and basically rejecting the allegations. The Complainant objected to the Respondent’s submissions on December 14, 2017. On December 19, 2016 the Respondent submitted a further email, with no case relevant information.
5. Parties’ Contentions
According to the Complainant, SWATCH is a famous trademark and well protected under trademark registrations. The disputed domain name is, according to the Complainant, identical in its distinctive element SWATCH and the gTLD element “.click” has no influence on the overall appearance.
The Complainant claims that the Respondent has no own legitimate right to the term “swatch” for the disputed domain name and has registered and is using the disputed domain name in bad faith, in fact offering the disputed domain name for sale at a price of CHF 20,000.
The Respondent did not reply to the Complainant’s contentions in time, but in a submission rejects the allegations without providing evidence but a claim that the Complainant never contacted it and never offered to “take over” the disputed domain name and that the disputed domain name stands for “START WATCH & CLICK”, a pending project for which the disputed domain name was to be used.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name shows the Complainant’s well-known trademark SWATCH as the dominant and distinctive element. The gTLD element, here “.click”, is typically disregarded under the confusing similarity test and does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Mark I Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2016-0617). Accordingly, the disputed domain name is identical to the Complainant’s trademark.
The Panel is therefore satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights nor legitimate interests in the disputed domain name. The Respondent is not known as “Swatch” and does not claim a registration for the element “Swatch”. The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests and the Respondent has not established the opposite. The Respondent claims that the disputed domain name refers to “START WATCH & CLICK”. This may be the case or not, but the Respondent has not provided any explanation or evidence of its intended use. Moreover, a mere registration of a domain name does not create a right or a legitimate interest in that domain name.
The Panel therefore comes to the conclusion that no rights or legitimate interests of the Respondent exist and the second condition of the Policy is met.
C. Registered and Used in Bad Faith
The Complainant’s SWATCH trademark is well known in its industry, and the Panel finds that the Respondent was likely aware of the Complainant and the Complainant’s mark when registering the disputed domain name. In addition, the fact that the Respondent was using product pictures referring to the Complainant shows that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s well-known trademark.
The fact that the Respondent requested CHF 20,000 for transfer of the disputed domain name is a further, strong indication of bad faith. It shows that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it for an amount which by far exceeds the out of pocket costs of the Respondent. (See Merck KGaA v. Sunmeet Jolly, WIPO Case No. D2004-0195)
In light of this, the Panel concludes that the third condition of the Policy is met and the Respondent has registered and used the disputed domain name in bad faith.
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 <swatch.click> be transferred to the Complainant.
Date: December 20, 2016