WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tissot SA v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues
Case No. D2021-1823
1. The Parties
Complainant is Tissot SA, Switzerland, represented by The Swatch Group Ltd., Switzerland.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Panama.
2. The Domain Name and Registrar
The disputed domain name <tisssotwatches.com> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 17, 2021.
The Center verified that the Complaint, together with the amended 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 Respondent of the Complaint, and the proceedings commenced on June 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 9, 2021.
The Center appointed Colin T. O'Brien as the sole panelist in this matter on July 16, 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
Complainant’s TISSOT mark was first used in 1853 in Switzerland. Complainant is a designer, manufacturer, seller, and retailer of wristwatches. Complainant’s website “www.tissotwatches.com” is used to promote the brand and its products and services on the internet. Complainant’s trademark TISSOT is present in more than 160 countries worldwide through more than 14,000 points of sale and nearly 200 mono‑brand stores.
As per the Complaint, “Tissot has been named Official Timekeeper and Partner of many disciplines, including cycling with the Tour de France and the UCI World Cycling Championships; the basketball with the NBA, FIBA and CBA; motorsports with MotoGP and the FIM World Superbike Championship and rugby with the RBS 6 Nations Championship, Top14; the European Rugby Champions and Challenge Cups. TISSOT is also the Official Timekeeper of the World Championships of fencing; ice hockey and the AFL.”
Complainant is the owner of numerous registered trademarks around the world for the TISSOT mark, including European Union trademark number 225698 registered on November 12, 1998, United States trademark number 1639684 registered on April 2, 1991, and International trademark number 729106 registered on February 23, 2000, designated in 62 countries.
The Domain Name <tisssotwatches.com> was registered on May 21, 2021. At the time of the filing of the Complaint, it resolved to a website with pay-per-click advertisements containing the term “watches” and/or referring to competitors of Complainant.
5. Parties’ Contentions
Apart from its use of the “.com” Top Level Domain (“TLD”) and “watches”, Respondent’s <tisssotwatches.com> Domain Name is nearly identical, on its face, to Complainant’s registered TISSOT Mark; the Domain Name incorporates the entirety of the well-known trademark TISSOT with an additional “s” and with the suffix “watches”. The addition of the generic term “watches” does not prevent the confusion between the Domain Name and the Complainant's TISSOT Mark.
Respondent’s <tisssotwatches.com> Domain Name is identical to Complainant’s domain name <tissotwatches.com>, with the only difference being a hard-to-spot letter “s” added. Respondent’s doubling of the letter “s” does not significantly affect the appearance or pronunciation of Complainant’s TISSOT mark. Respondent’s conduct is commonly referred to as “typosquatting” and results into confusing similarity.
There are no signs that Respondent has been commonly known by the Domain Name and Respondent is not in any way related to Complainant or its business activities nor has Complainant granted a license or authorized Respondent to use its trademarks or apply for registration of the Domain Name.
Respondent has made no effort to suppress pay-per-click advertisements related to Complainant’s trademark, such as adding negative keywords, which would mitigate against an inference of targeting Complainant thereby making the use of a parking page permissible under certain circumstances. Respondent is presenting watch-related advertisements, i.e. advertisements falling into the product category of Complainant’s business, on its parking page.
By using the Domain Name <tisssotwatches.com>, i.e. a combination of Complainant’s TISSOT mark and a description of Complainant’s main product category, watches, Respondent is not using its parking page in combination with a domain name comprising of actual dictionary word(s) or a phrase and in order to host links genuinely related to the relevant dictionary meaning of the word(s) or phrase.
The Domain Name resolves to a parking page containing pay-per-click advertisements. By using a monetized parking page, Respondent is siphoning off Complainant’s TISSOT Marks’ accumulated goodwill for financial profit.
It is not possible to imagine any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate. To the contrary, allowing Respondent using a domain consisting of a common misspelling of Complainant’s trademark would put Complainant at an unacceptable risk of being affected by such illegal activities. Lastly, Respondent is a known serial cybersquatter as indicated by countless UDRP panel decisions against Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated it owns registered trademark rights in the TISSOT mark. The Domain Name incorporates a misspelling of the TISSOT mark, namely the addition of an extra letter “s”. The additions of the letter “s” and the term “watches” do not prevent a finding of confusing similarity between the mark and the Domain Name. See sections 1.8 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”).
Accordingly, the Domain Name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Name and has not at any time been commonly known by the Domain Name. The fact that Respondent registered the Domain Name, which is a misspelling of Complainant’s famous TISSOT mark combined with the term “watches” that is descriptive of the Complainant’s goods, indicates that Respondent likely sought to use the Domain Name, and the implied affiliation caused thereby, to make money through pay-per-click advertising or possibly to use the Domain Name as a tool in a future phishing attack on unsuspecting internet users. See section 2.5.1 of the WIPO Overview 3.0.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any rights or legitimate interests in the Domain Name; rather, the evidence suggests that the Domain Name was registered by Respondent to make an undue profit based on Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei, WIPO Case No. D2013-1556.
In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Name was registered many years after Complainant first registered and used its famous TISSOT mark. Considering the evidence on the record provided by Complainant with respect to the extent of use of its TISSOT mark, the typosquatting of the Complainant’s mark in the Domain Name, the addition of the descriptive term “watches”, combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Domain Name was registered, Respondent undoubtedly knew of Complainant’s TISSOT mark, and knew that it had no rights or legitimate interests in the Domain Name.
There is prima facie no benign reason for Respondent to have registered and used the Domain Name to direct Internet user to a pay-per-click landing website with links to other third party websites that compete with Complainant. Furthermore, Respondent has been the named respondent in a number of previous UDRP cases that involve infringement of other famous trademarks which indicate a pattern of bad faith conduct. (See e.g. Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-0018.) The actions of Respondent clearly land under the heading of cybersquatting.
Accordingly, the Panel finds that the Domain Name has been registered and is being used 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 Domain Name <tisssotwatches.com> be transferred to Complainant.
Colin T. O'Brien
Date: July 28, 2021