WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki
Case No. D2017-0388
1. The Parties
1.1 The Complainants are The Swatch Group AG of Biel/Bienne, Switzerland and Swatch AG of Biel/Bienne, Switzerland, represented by FairWinds Partners, LLC, United States of America ("United States").
1.2 The Respondent is Christopher Biedermann of Pretoria, South Africa / Marcin Rulnicki of Johannesburg, South Africa.
2. The Domain Names and Registrar
2.1 The disputed domain names <sawtchgroup.com> and <zwatchgroup.com> (the "Domain Names") are registered with Tucows Inc. (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2017. On February 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming the registrant details for the Domain Name and providing the contact details.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2017.
3.4 On March 8, 2017, the Center received an email from a bank in Pretoria, South Africa, that stated it had received written notice of the Complaint forwarded by the Center, but informing the Center that there was no "Christopher Biedermann" known at that address.
3.5 The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 27, 2017.
3.6 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 4, 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
4.1 The Complainants are companies forming part of the Swatch group of companies (the "Swatch Group"), based in Switzerland. They are well known designers, manufacturers, sellers, and retailers of wristwatches. The Swatch Group has engaged in these activities under the "Swatch" name since 1983 and currently has retail stores in North America, Europe, the Middle East, Africa, Central and South America, Asia, and Australia.
4.2 The Complainants are the owner of numerous registered trade marks around the world that comprise or incorporate the term "swatch". They include:
(i) International trade mark no. 1187122 in the name of The Swatch Group AG and registered on September 18, 2013 for the word mark SWATCH GROUP in classes 35, 36, 37, 38, 39, 41, 42, 43, and 45, and which has proceeded to grant in at least four territories;
(ii) European Union Trade Mark no. 226019 in the name of Swatch AG and registered on October 2,1998, for the word mark SWATCH in class 14; and
(iii) South African trade mark no. 1986/04168 in the name of Swatch AG and registered on June 23, 1986, for the word SWATCH in stylised text in class 14.
4.3 The Complainants are also engaged in online activities, with "Swatch" branded products being promoted and sold through a website operating from the <swatch.com> domain name, and with the provision of corporate information through a website operating from the <swatchgroup.com> domain name.
4.4 The <zwatchgroup.com> Domain Name was registered on December 12, 2016, in the name of "Christopher Biedermann". The <sawtchgroup.com> Domain Name was registered on January 16, 2017, in the name of "Marcin Rulnicki".
4.5 Each of the Domain Names has been used as part of an email address in "phishing" emails sent to employees of the Complainants. These emails have falsely claimed to have come from an individual in the senior management of the Swatch Group and sought urgent payment of monies.
4.6 A similarly styled placeholder webpage has also operated from each of the Domain Names.
5. Parties' Contentions
5.1 The Complaint addresses the procedural issue of whether the Complainants can bring a single combined complaint in relation to the Domain Names. The Complainants contend that they have a common grievance and common legal interest that would justify their bringing a complaint as joint complainants. Further, even though the Domain Names have different named registrants in the WhoIs database for the Domain Names, it is claimed that the Domain Names are in fact operated and controlled by the same person. In this respect the Complainants rely upon the following:
(i) the fraudulent emails all purported to come from the same person in the Complainants' group of companies;
(ii) the Domains Names were registered through the same registrar and used identical DNS settings;
(iii) the Domain Names were registered within one month from each other;
(iv) a similarly styled placeholder webpage operated from each of the Domain Names; and
(v) the WhoIs details for the Domain Names each gave addresses in South Africa for the purported registrant.
5.2 So far as the substantive requirements of the Policy are concerned, the Complainants contend that:
(i) the Domain Names are confusingly similar to the Complainants' marks, being misspellings of the Complainants' marks;
(ii) the use of the Domain Names for the purposes of fraudulent phishing emails demonstrates a lack of rights or legitimate interests by the registrant of the Domain Names;
(iii) the registration and use of the Domain Names for such purposes was in bad faith; citing a number of UDRP cases where the registration and use of similar domain names to further such fraudulent activity was held to be registration and use in bad faith.
5.3 In their Complaint, the Complainants seek transfer of the Domain Names to the Complainant Swatch AG.
5.4 The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainants to make out their case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainants must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate".
6.4 Before addressing these substantive questions under the Policy, the Panel confirms that it accepts the Complainants' contention that these proceedings can proceed with both The Swatch Group AG and Swatch AG as joint complainants and that, despite the different registration details recorded for each Domain Name, the Domain Names are more likely than not to be controlled by the same person and can all be considered together in a single set of proceedings.
6.5 Previous UDRP panels' decisions on the circumstances where multiple complainants may bring a single consolidated complaint and where a consolidated complaint can be brought against multiple respondents are summarised in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
"WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted."
6.6 The Complainants clearly have a common interest in this case in that they form part of the same group of companies and each independently own marks that incorporate the term "swatch".
6.7 The issue of multiple Respondents is perhaps not quite so straight forward. Although the content of the phishing emails is similar, the text used is not identical. Further, it is not entirely clear to the Panel whether the technical similarities relied upon by the Complainants in this case are anything other than consequences of the choice of the same registrar and/or hosting provider. Nevertheless, the similarities in email content, registrar choice and timing at the very least constitute a prima facie case that the registrants are either the same person or sufficiently connected with one another to justify both Domain Names being dealt with in the same proceedings. In the absence of evidence or argument to the contrary, the Panel is prepared to accept that this is so and to proceed accordingly.
A. Identical or Confusingly Similar
6.8 The Panel accepts that each of the Domain Names is confusingly similar to the Complainants' registered trade marks. Each of the Domain Names can only be sensible understood as a misspelling of the terms "swatch" or "swatch group", in which the Complainants have registered trade mark rights, together with the ".com" generic Top-Level Domain ("gTLD").
6.9 In the circumstances, the Complaint has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests and Bad Faith Registration and Use
6.10 It is normal for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.11 The Panel accepts that each of the Domain Names has been registered and used with the intention of furthering a fraudulent scheme whereby the registrant has sought to impersonate an individual in the senior management of the Complainants in order to try and trick employees of the Complainants to make certain payments.
6.12 This sort of activity (commonly referred to as "CEO fraud", although in this particular case it was not the CEO who was being impersonated), was recently described by the United Kingdom of Great Britain and Northern Ireland's National Fraud & Cyber Crime Reporting Centre as follows:
"CEO fraud will typically start with an email being sent from a fraudster to a member of staff in a company's finance department. The member of staff will be told by the fraudster who is purporting to be a company director or CEO that they need to quickly transfer money to a certain bank account for a specific reason. The member of staff will do as their boss has instructed, only to find that they have sent money to a fraudster's bank account.
The fraudster will normally redistribute this money into other mule accounts and then close down the bank account to make it untraceable."
6.13 It is an activity that has become increasingly common in the last couple of years, with fraudsters often using a domain name in an email address that only differs in minor respects from the actual domain name used by that company. The hope of the fraudster is that the recipient of that email will not notice these minor differences.
6.14 There is no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation. Further, the registration and use of a domain name for such a purposes involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308). Indeed, it is difficult to conceive of a more clear cut example of bad faith registration and use of a domain name, even if such activity does not obviously fall within the scope of any of the non-exhaustive list examples of circumstances indicating bad faith registration or use set out in paragraph 4(b) of the Policy.
6.15 In the circumstances, the Panel has no hesitation in finding that the Complainants have made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <sawtchgroup.com> and <zwatchgroup.com> be transferred to the Complainant, Swatch AG.
Matthew S. Harris
Date: April 12, 2017