WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fondation de la Haute Horlogerie (FHH) v. Artur Cholewski

Case No. D2020-3486

1. The Parties

The Complainant is Fondation de la Haute Horlogerie (FHH), Switzerland, represented by SILKA AB, Sweden.

The Respondent is Artur Cholewski, Poland, self-represented.

2. The Domain Name and Registrar

The disputed domain name <watchesandwondersgeneva.com> is registered with NetArt Sp. z o.o. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2020, 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 sent an email communication to the Complainant on December 23, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Registrar also disclosed that the registration agreement for the disputed domain name was in Polish.

Pursuant to paragraph 11 of Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Center sent an email communication to the Parties in English and Polish on December 23, 2020, disclosing that the registration agreement for the disputed domain name was Polish. The Complainant was invited to submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or submit the Complaint translated into Polish; or submit a request for English to be the language of the administrative proceedings. The Respondent was similarly invited to submit any comments on the Complainant’s submission regarding the language of the proceeding.

On December 26, 2020, the Complainant submitted an amendment to the Complaint and arguments as to why the proceeding should be conducted in English. On December 28, 2020, the Respondent submitted to the Center its objection to the Complainant’s request for English to be the language of the proceedings.
The Center verified that the Complaint, together with the amendment to 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 in English and Polish, and the proceedings commenced on December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. On January 19, 2021, the Respondent contacted the Center in Polish requesting an extension to the deadline for filing the Response. On January 20, 2021, the Center notified the Parties in English and Polish that the Response due date was extended until January 29, 2021. The Response was filed in Polish with the Center on January 29, 2021.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 5, 2021. 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

Fondation de la Haute Horlogerie (FHH), the Complainant in the present proceedings, is an independent organization created in 2005. It is based in Geneva, Switzerland. The Foundation’s mission is to safeguard and promote fine watchmaking all over the world. The Foundation organizes the annual Watches & Wonders fair in Geneva, which is a trade show of the international watch industry. Its physical 2020 edition was cancelled due to the COVID-19 pandemic.

The Complainant’s official website is “www.watchesandwonders.com” and “www.hautehorlogerie.org”.

The Complainant is the owner of, among others, the following trademark registrations:

- WATCHES AND WONDERS (Swiss jurisdiction; trademark No. 747722 registered on June 2, 2020);
- WATCHES AND WONDERS GENEVA (Swiss jurisdiction; trademark application No. 16572/2020 filed on November 11, 2020);
- WATCHES AND WONDERS (United States of America jurisdiction; trademark No. 5829503 registered on August 6, 2019);
- WATCHES AND WONDERS (European Union Intellectual Property Office (EUIPO) jurisdiction covering Poland; trademark No. 008546566 registered on March 8, 2010);
- WW WATCHES & WONDERS (International Trademark covering Poland; trademark No. 1500757 registered on October 25, 2019).

On October 16, 2019, news media announced that there would be a name change of the Complainant’s event from Watches & Wonders to Watches & Wonders Geneva. On the same date, that is October 16, 2019, the disputed domain name <watchesandwondersgeneva.com> (the “Domain Name”) was registered by the Respondent. The Domain Name has not been actively used since its time of registration. The Complainant has provided screen captures showing that the Domain Name resolved to a Registrar parking page at the time of filing the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to the Complainant.

First, the Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

According to the Complainant, the Domain Name incorporates the Complainant’s trademark in its entirety. The addition of the geographical identifier “Geneva” in the Domain Name is insufficient to distinguish the Domain Name from the Complainant’s trademark. On the contrary, it further exaggerates the confusing similarity since “Geneva” forms part of the new name used by the Complainant. Moreover, the addition of the generic Top-Level Domain (gTLD) “.com” does not add any distinctiveness to the Domain Name.

Second, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name, nor is the Respondent commonly known by the Domain Name. The Respondent is also neither sponsored by, nor affiliated with, the Complainant in any way. The Complainant highlights that it has not given the Respondent permission to use its trademark in any manner. The Complainant has also not licensed, authorized, or permitted the Respondent to register the Domain Name incorporating the Complainant’s trademark.

The Complainant contends that the Respondent cannot show that prior to notice of the dispute, he used, or made demonstrable preparations to use, the Domain Name or a name corresponding to them in connection with a bona fide offering of good or service. According to the Complainant, in light of the Complainant’s recent rebranding, customers may perceive the Domain Name as connected to the Complainant. Thus, the Respondent takes advantage of the recent re-brand to confuse Internet users. The Complainant also notes that the Respondent seems to be in the watch business, which supports a finding that he was familiar with the announcement of the name change to Watches and Wonders Geneva.

Third, the Complainant submits that the Domain Name was registered and is being used in bad faith. The Complainant alleges that in order to avoid legal proceedings, the Complainant contacted the Respondent to buy the Domain Name and offered EUR 600 for the Domain Name. The Respondent did not accept the offer and requested EUR 60,000 for the Domain Name.

In the absence of evidence from the Respondent that the similarity of the Domain Name is coincidental it must be concluded that the Respondent knew of the Complainant’s rights in the trademark when it registered the Domain Name. The Respondent bears no relationship to the Complainant’s trademark. The Domain Name has no other meaning except for referring to the Complainant's name and trademark. Consequently, the Complainant submits that the Respondent should be considered to have registered the Domain Name in bad faith.

B. Respondent

The Respondent contends that he purchased the Domain Name as a private individual. The purpose of registering the Domain Name was to run a blog to promote watchmaking knowledge and inform the Respondent’s readers about events accompanying the Watches & Wonders event. Due to the Covid-19 pandemic, the Watches & Wonders 2020 event was cancelled. In addition, the Respondent was not able to raise funds to open a business and run a professional portal regarding watches.

The Respondent further alleges that he registered the Domain Name in October 2019 and has never offered the Domain Name for sale.

The Respondent confirms that on September 15, 2020, he was contacted by the Complainant with an offer to purchase the Domain Name. He did not respond to the email, as he has not considered selling the Domain Name. From September to December 2020, the Respondent received few further messages from the Complainant with respect to the purchase of the Domain Name.

Given the amount of the messages from the Complainant, the Respondent states that he “felt stalked” by the Complainant. In order to close the matter, the Respondent offered to sell the Domain Name to the Complainant for EUR 60,000.
The Respondent further notes that he registered the Domain Name in October 2019, while the application to register the WATCHES AND WONDERS GENEVA trademark was filed with the Swiss Patent Office on November 11, 2020, and the application to register the WATCHES AND WONDERS trademark was filed with the Swiss Patent Office on June 2, 2020. The Respondent notes that the application to register the trademark was not filed for registration in Europe but in the Swiss Patent Office, while the Domain Name was registered in Poland within the European Union.

In the Respondent’s view, his actions do not limit the Watches and Wonders Geneva event.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the Domain Name is Polish. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that the pre-filing communication between the Complainant and the Respondent had been conducted in English. Also, the Respondent chose the Domain Name in English and registered the Domain Name with the generic Top-Level Domain (“gTLD”) “.com” for an international audience.

The Respondent requested Polish to be language of the proceedings. The Respondent alleged that he is a consumer, and he does not conduct commercial activity. Given that his native language is Polish, the Respondent was not sure whether he understood correctly the content of the Complaint.

The Panel notes that the Center decided to (i) accept the Complaint as filed in English; (ii) accept a Response in either English or Polish; (iii) appoint a Panel familiar with both languages.

The Panel confirms that is familiar with both Polish and English. The Panel was thus able to fully assess the evidence in the case, including the submissions of both parties. The Panel further notes that English is a common language all around the world. The Respondent conducted the communication previous to these proceedings in English. Moreover, the composition of the Domain Name using three English words (and notably the English version of “Geneva” in lieu of the perhaps more local French “Genève”) in addition to the gTLD “.com”, which is a part of the Domain Name, indicates that the Respondent addresses its domain to English speaking audience.

Taking all the circumstances into account, the Panel finds that it is appropriate to exercise its discretion and render this decision in English as per paragraph 11(a) of the Rules.

6.2. Merits of the Case

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which 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 in bad faith.

The requested remedy may only be granted if the above criteria are met.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.

The Complainant holds several valid WATCHES AND WONDERS trademark registrations. In particular, the Complainant holds WATCHES AND WONDERS trademark registered under EUIPO jurisdiction covering Poland on March 8, 2010. In connection with the name change of the Complainant’s event from Watches & Wonders to Watches & Wonders Geneva, on November 11, 2020, the Complainant filed the application to register the WATCHES AND WONDERS GENEVA trademark under Swiss jurisdiction. The Respondent registered the Domain Name when the media news announced the above-referred name change on October 16, 2019.

The Domain Name incorporates the Complainant’s WATCHES AND WONDERS trademark in its entirety. As numerous panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

This Panel accepts that the addition of geographic term “Geneva” does not serve to distinguish the Domain Name from the Complainant's trademark. Panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similar under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. In the present case, the addition of the geographical identifier actually adds to the confusion in the light of the recent re-branding of the Complainant’s event name, though this will be discussed in more detail under the third element.

Moreover, the addition of the gTLD “.com” can be disregarded when assessing confusing similarity, noting that the addition of a gTLD is a technical requirement of registration. See Sanofi v. Bradley Perkey, greenhood, WIPO Case No. D2020-3011, and Facebook, Inc. v. Batyi Bela, Whois privacy services, provided by DomainProtect, WIPO Case No. D2020-2683.

Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

As noted above, there are the Complainant’s trademark registrations for WATCHES AND WONDERS, which predate the Respondent’s registration of the Domain Name.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark WATCHES AND WONDERS in connection with the Domain Name, which is confusingly similar to the Complainant’s registered trademark.
The Respondent has not submitted any evidence that he has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute. The Respondent has also not proved that he intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The mere indication that the purpose of registering the Domain Name was to run a blog to promote watchmaking knowledge and inform the Respondent’s readers about the coming Watches & Wonders event is not sufficient to establish that the Respondent made preparations to use the Domain Name in connection with a bona fide offering of goods or services prior to the dispute or he intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Although given the opportunity, the Respondent has also not submitted any evidence indicating that he is the owner of any trademark rights similar to the Domain Name or that the Respondent is or has been commonly known by the Domain Name.

Further, pursuant to section 2.5.1 of the WIPO Overview 3.0, panels have held that where a domain name consists of a trademark plus an additional term, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.

Given the above, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The Panel finds that the evidence in the record demonstrates that the Respondent chose the Domain Name deliberately for the purpose of attempting to create an association with the Complainant. The Respondent’s business presence in the watchmaking industry indicates that he was or should have been aware of the Complainant’s trademark. The Complainant’s rights in trademark predate the registration of the Domain Name. The Domain Name was registered immediately after press releases about the Complainant’s business rebranding to use the Watches and Wonders Geneva name; this is not a coincidence. As mentioned under the analysis in the first element, the composition of the Domain Name, adding the geographical term “Geneva” to the Complainant’s trademark, further supports a finding of registration in bad faith noting that the additional term relates directly to a place where the Complainant has developed its business – and notably reflects its recent rebranding. In light of this change, customers may perceive the Domain Name as connected to the Complainant. This further supports the assertion that the Respondent aimed at confusing Internet users.

Furthermore, the passive holding of the Domain Name also supports a finding of bad faith. When assessing non-use, panels look at the totality of the circumstances, weighing factors such as the distinctiveness of the Complainant’s trademark and the failure of the Respondent to provide evidence of actual or contemplated good-faith use. As previously mentioned, the Domain Name consists of the Complainant’s trademark in its entirety with the geographical term “Geneva”, which is where the Complainant is located – and which reflects its recent rebrand as mentioned in the press, and the Respondent has failed to provide any substantive evidence supporting its claims regarding registration of the Domain Name for purposes of a blog. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and section 3.3 of the WIPO Overview 3.0.

Further, there is evidence in the record showing that the Respondent has offered (even if at a high price to turn the Complainant away) the Domain Name for sale to the Complainant for EUR 60,000, which is in excess of out-of-pocket expenses. While legitimate speculation in domain names does not necessarily constitute bad faith use, the nature of the Domain Name in this instance and its offer for sale does not support any claim to a good faith registration.

Given the above, the Panel finds that the Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

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 <watchesandwondersgeneva.com> be transferred to the Complainant.

Piotr Nowaczyk
Sole Panelist
Date: February 12, 2021