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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fondation de la Haute Horlogerie (FHH) v. On behalf of watchesandwondersmiami.com OWNER, c/o whoisproxy.com / Artur Cholewski

Case No. D2021-1220

1. The Parties

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

The Respondent is On behalf of watchesandwondersmiami.com OWNER, c/o whoisproxy.com, United Stated of America / Artur Cholewski, Poland.

2. The Domain Name and Registrar

The disputed domain name <watchesandwondersmiami.com> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2021. On April 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 23, 2021.

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, and the proceedings commenced on April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021, after a four calendar days extension at the request of the Respondent. The Respondent did not submit any response. The Center sent the Commencement of Panel Appointment Process default on May 25, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on May 31, 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

The Complainant is an independent organization created in 2005 in Switzerland to promote fine watchmaking in Switzerland and worldwide. One of the most important purposes of the Complainant is safeguarding and promoting the fine watchmaking all over the world. The Complainant also informs, trains, and organizes events for both the profession and the public in general. The Complainant organizes “Watches & Wonders” which is a trade show of the international watch and jewelry industry, mainly dedicated to fine watchmaking.

The Complainant is the exclusive owner of a number of registered trademarks consisting of or including the words “Watches & Wonders” (most of the times with the ampersand, but in some cases with “and” replacing the ampersand), including the European Union trademark registration No. 008546566 for WATCHES & WONDERS registered on March 8, 2010, and the Swiss trademark registration No. 747722 for WATCHES AND WONDERS registered on June 2, 2020. The Panel will refer to the Complainant’s trademarks indistinctively as WATCHES & WONDERS or WATCHES AND WONDERS. The Complainant owns the domain name <watchesandwonders.com> that it uses as an official website.

The disputed domain name was registered on December 3, 2020 and does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the registered trademark WATCHES AND WONDERS of the Complainant, as the mentioned trademark is incorporated in its entirety in the disputed domain name, and it is only followed by the geographical term “Miami”. The Complainant alleges that far from providing a differentiation from the Complainant’s trademark, the disputed domain name seems to impersonate the Complainant when referring to Miami, city where the most important official event in the United States was held and organized by the Complainant.

About the second element, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not found that the Respondent is commonly known by the disputed domain name and there is no evidence that the Respondent has a history of using or preparing to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainant argues that the intention of the Respondent when registering the disputed domain name was to prevent the Complainant from exercising its legitimate rights over the well-known trademark WATCHES AND WONDERS in which the Complainant has prior rights. The Complainant confirms there is no business or legal relationship between the Complainant and the Respondent.

With regard to the third element, the Complainant argues that the disputed domain name was registered and used in bad faith. Firstly, the fact that the Complainant’s trademark registrations predate the registration of the disputed domain name and that the Complainant’s trademark WATCHES AND WONDERS enjoy an extensive reputation among the watchmaking sector, and also given the active presence of the Complainant in the market and social media shows that it seems to be unlikely that the Respondent was not aware of the unlawful registration of the disputed domain name. Moreover, the geographical identifier “Miami” has not been used randomly, but with the aim of leading the Internet user believe that the disputed domain name is the official website of the Miami Watches and Wonders official trade show. The Complainant concludes that the disputed domain name has been registered with the aim of taking advantage of the reputation of the Complainant’s well-known trademark WATCHES AND WONDERS and is used in bad faith under the passive holding doctrine.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the WATCHES & WONDERS, and WATCHES AND WONDERS trademarks.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. Here the disputed domain name wholly incorporates the Complainant’s trademark (except that the ampersand in the WATCHES & WONDERS trademark was replaced with “and” as in the trademark WATCHES AND WONDERS), followed by the word “miami” and the “.com” generic Top-Level Domain (“gTLD”). These changes do not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a generic gTLD, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0 .

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark WATCHES & WONDERS, and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “watches & wonders” (or its equivalent “watches and wonders”).

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

The Respondent has failed to come forward with any explanation to show that it has rights or legitimate interests in the disputed domain name. By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

According to the unrebutted assertions of the Complainant, its WATCHES & WONDERS trademarks were widely used in commerce well before the registration of the disputed domain name in December 2020. The disputed domain name is confusingly similar with the Complainant’s trademark. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. Moreover, the addition of the word “Miami” in the disputed domain name further indicates that the Respondent was aware of the Complainant and its trademarks at the registration date, as it is apparent from the case file that one of the most important official events of the Complainant was organized in Miami. The Respondent provided no explanations for why he registered the disputed domain name.

As regards the use of the disputed domain name, the fact that the website at which the disputed domain name resolves is inactive does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” (section 3.3 of the WIPO Overview 3.0).

The Panel takes into account, in particular the fact that the Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name, having failed to respond to the Complaint, the Respondent’s use of a privacy service, the relative distinctiveness of the Complainant’s trademark and that fact that there is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. The Panel also notes that the Respondent Artur Cholewski has been named as Respondent in a previous proceeding under the Policy with the same Complainant and concerning the same trademark (Fondation de la Haute Horlogerie (FHH) v. Artur Cholewski, WIPO Case No. D2020-3486). It is reasonable to infer from this that the Respondent has engaged in a pattern of cybersquatting, since “as few as two instances of abusive domain name registration” constitutes a pattern. Section 3.1.2 of the WIPO Overview 3.0.

The Panel concludes that the disputed domain name was registered and used in bad faith.

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 <watchesandwondersmiami.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: June 14, 2021

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