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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Swatch Group AG and Swatch AG v. Redacted for privacy, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo

Case No. D2021-2180

1. The Parties

Complainants are The Swatch Group AG, Switzerland, and Swatch AG, Switzerland (collectively, “Complainant”), internally represented.

Respondent is Redacted for privacy, Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <swatchgroup-service.biz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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 Complainant on July 8, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 12, 2021 (hereinafter, the “Complaint”).

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 July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 3, 2021.

The Center appointed M. Scott Donahey as the sole panelist in this matter on August 19, 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 is the sum of two complainants, consolidated into one, because of their close legal relationship: Complainant The Swatch Group AG is the parent company of the Complainant Swatch AG. Complainant, annex H-5. Because of this close legal relationship it is appropriate to consolidate the two under the name “Complainant”. See, e.g., Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., WIPO Case No. D2009-1243. Complainant is the owner of numerous trademarks relevant to this dispute, including the SWATCH mark, registered in the United States of America on August 27, 1985 (Registration No. 1356512), and internationally September 9, 1986 (Registration No. 506123). Complaint, Annex E. Indeed, Complainant is the owner of numerous trademarks in various jurisdictions for SWATCH and SWATCH GROUP. Id. Complainant has been using the trademarks since as early as 1983. Complaint, Annex E.

Complainant is a leading designer, manufacturer, seller, and retailer of wristwatches sold under the brand name SWATCH and 18 other brand names. Complainant has a website to which the domain name <swatchgroup.com> resolves. Complainant is publicly traded on various stock exchanges around the world. Complaint, Annex D-10. Complainant owns retail branded stores around the world, including in North America, Europe, the Middle East, Africa, Central America, South America, Asia, and Australia. Complainant sponsors major sporting events around the world and promotes its brands on social media platforms. Indeed, a collectors market has developed for its older products. Complaint, Annex D.

Complainant is also the holder of the domain name <swatchgroup-services.biz>.

Respondent registered the disputed domain name on October 14, 2020. Complaint, Annex B.

The disputed domain name resolves to a pay per click (“PPC”) page displaying watch-related advertisements. Complaint, Annex G.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name is confusingly similar to Complainant’s registered trademarks. Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant alleges that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

“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 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the respondent 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 domain name; and,

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name consists of Complainant’s registered trademarks SWATCH and SWATCH GROUP, a hyphen, and the English word “service,” registered in the Top-Level Domain (“TLD”) “.biz”. “Swatch” is a fanciful word created by Complainant and used in its trade name and trademarks. The addition of the word “service” does not prevent Complainant’s trademarks from being recognizable in the disputed domain name. The TLD, in this case “.biz”, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The Panel finds that the disputed domain name, <swatchgroup-service.biz> is confusingly similar to Complainant’s trademarks.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name resolves to a PPC page displaying watch-related advertisements. Given Complainant’s registered trademarks and the fact that Complainant is currently operating a website to which Complainant’s virtually identical domain name <swatchgroup-services.biz>, but for a final “s,” resolves, it is impossible to conceive of any legitimate use to which Respondent could put the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered and is being 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 <swatchgroup-service.biz> be transferred to Complainant.

M. Scott Donahey
Sole Panelist
Date: September 1, 2021

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