WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tissot SA v. Domain Admin, Whois Privacy Corp.
Case No. D2016-2581
1. The Parties
The Complainant is Tissot SA of Le Locle, Switzerland, represented by Noer OOO, the Russian Federation.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <tissotswatch.com> is registered with TLD Registrar Solutions Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2016, 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 December 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2017.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on January 23, 2017. 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 the well-known manufacturer of wristwatches marketed in more than 160 countries around the world. The Complainant is part of Swatch Group, among the largest manufacturers of finished watches in the world.
The Complainant is the owner of, among others, the following trademark registrations:
- International trademark registration No. 1,256,550 for TISSOT registered on January 29, 2015 to cover, i.a., goods in class 14;
- International trademark registration No. 532,550 for TISSOT registered on December 14, 1988 to cover ,i.a., goods in class 14.
The Complainant owns a domain name including the TISSOT mark, i.e.: <tissotwatches.com>.
The disputed domain name was registered on June 10, 2015. The disputed domain name resolves to an online store for allegedly counterfeit watches.
5. Parties' Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the TISSOT mark since the disputed domain name fully incorporates the trademark. According to the Complainant, the addition of the letter "s" after the trademark and the word "watch" is insufficient to avoid a finding of confusing similarity under the first element of the UDRP. The Complainant also submits that even if the disputed domain name <tissotswatch.com> is not read as consisting of "tissots" and "watch" but rather of "tissot" and of the word "swatch", this would not change anything to the fact that the disputed domain name is confusingly similar to the TISSOT mark, due to the fact that the SWATCH mark is owned by Complainant's sister company Swatch Ltd.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, there is no evidence for the Respondent's use, or demonstrable preparations to use, of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that the Respondent sells counterfeit TISSOT watches which cannot be deemed to be a bona fide offering of goods. Moreover, the Complainant claims that it has at no time authorized the registration of the disputed domain name containing its trademarks and / or the use of its trademarks on the corresponding website by the Respondent.
Thirdly, the Complainant submits that the disputed domain name has been registered and is being used in bad faith by the Respondent. In particular, the Complainant contends that with the registration of the disputed domain name, the Respondent intentionally attracts, for commercial gain, Internet users to the Respondent's website as this domain creates a likelihood of confusion with the Complainant's trademarks named above as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site, paragraph 4(b)(iv) of the Policy. This is because the disputed domain name was registered by the Respondent long after the TISSOT marks were registered and became world-famous. Furthermore, the Complainant asserts that the disputed domain name <tissotswatch.com> is almost identical to the domain name under which the official website of the Complainant is located (<tissotwatches.com>, registered in 2002), evidencing the intent of the Respondent to create confusion between the Respondent's website and the Complainant's trademarks. According to the Complainant, the Respondent has registered and is using the website under the disputed domain name for sales of counterfeit TISSOT watches which is an evidence of bad faith registration and use of the disputed domain name.
The Complainant also presents arguments and evidence supporting its allegations that the watches offered at the Respondent's website under the disputed domain name are counterfeit and not original:
- on the Respondent's website there is no indication of the models of TISSOT watches which are offered for sale, but only a single price for two apparently different models and several pictures of watches which appear to be the original TISSOT models;
- the price of the watches sold by the Respondent is more than 10 times lower than the price of any of the original TISSOT watches of comparable models;
- the statement on the Respondent's website that the watches are allegedly sold with a discount and that this discount is valid only for the next 45 minutes is a deception since after the expiration of the 45 minutes period the timing is resumed;
- a test purchase made by the Complainant using the Respondent's website confirmed that the watches sold by the Respondent are counterfeit.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <tissotswatch.com> contains the TISSOT mark in its entirety with addition of the letter "s" after the mark and the word "watch".
The letter "s" is generally understood just as a sign of a plural form of an object does not serve to render the domain name dissimilar to the Complainant's mark as it is too insignificant to have any real effect in the perception of the mark. The word "watch" is a generic element and a product offered for sale under the TISSOT mark, therefore, it does not prevent the disputed domain name from being confusingly similar with the Complainant's mark as well.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the TISSOT mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the TISSOT mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent have not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, in particular, the use of the disputed domain name to create a website offering counterfeit goods cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant's unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain names.
Firstly, the disputed domain name was registered on June 10, 2015 and it incorporates the TISSOT mark, which was registered years before and is commonly known worldwide. In the Panel's opinion, the notoriety of use of the TISSOT mark and the similarity of the disputed domain name with the mark itself and the domain name owned by the Complainant indicates that the Respondent knew or should have known about the Complainant's rights when registering the disputed domain name.
Secondly, the Respondent has also used the disputed domain name in bad faith which is evidenced by the fact that the website that it resolves to serves as an online store for counterfeit watches (see e.g. Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058). The documents submitted by the Complainant satisfies the Panel that the watches sold via <tissotswatch.com> are not original.
As the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, the Panel finds the bad faith pursuant to paragraph 4(b)(iv) of the Policy that the third element of paragraph 4(a) to be fulfilled.
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, <tissotswatch.com> be transferred to the Complainant.
Date: January 31, 2017