WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ETA SA Manufacture Horlogère Suisse and Swatch Ltd v. Dictum Factum, Ltd., Andrey Snagovsky

Case No. D2011-1518

1. The Parties

The Complainants are ETA SA Manufacture Horlogère Suisse and Swatch Ltd; both subsidiaries of the Swatch Group Biel, Switzerland, represented by Arntzen de Besche law firm, Norway.

The Respondent is Dictum Factum, Ltd, Andrey Snagovsky, Murmansk, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <flik-flak.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2011. On September 9, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 9, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar further informed the Center that the disputed domain name had expired on August 31, 2011 and would need to be renewed to prevent deletion per ICANN regulations by one of the parties to this dispute to ensure that the domain name <flik-flak.com> remained active so that the administrative procedure can continue as required under the Uniform Domain Name Dispute Resolution Policy (the “Policy or the “UDRP”). The Complainants contacted the Registrar and the disputed domain name was successfully renewed.

The Center verified that the Complaint satisfied the formal requirements of 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2011.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 4, 2011. 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 Complainants in this administrative proceeding are ETA SA Manufacture Horlogère Suisse and Swatch Ltd, both subsidiaries of the Swatch Group. The Complainants are companies of the Swatch Group, the world’s largest producer of wrist watches. Flik-Flak is the brand name of a line of children’s watches and a division of the Complainant Swatch Ltd. The Complainant, ETA SA Manufacture Horlogère Suisse has proved to be the registered owner of an International and a Community trademark for the name FLIK FLAK. The International trademark was registered on January 30, 1987.

The Respondent registered the disputed domain name <flik-flak.com> on August 31, 1999.

5. Parties’ Contentions

A. Complainants

The Complainants claim that:

1) The Complainants are subsidiaries of the Swatch group which is the world’s largest producer of wrist watches.

2) The disputed domain name <flik-flak.com> is identical to the registered trademark FLIK FLAK of the Complainants, with the exception of the hyphen (-). The hyphen is not sufficient to avoid confusion.

3) Due to the contents placed on the Respondent’s website “www.flik-flak.com” the time the Complaint was filed, it is clear that this identity was not a coincidence and that the Respondent deliberately refers to the trademark of the Complainants. This is shown by the following introductory statement placed on the Respondent’s website: “Welcome to flik-flak.com flik-flak.com offers links to sites on the internet for Flik Flak Swatch watches funny sun happy children!”.

4) The website at the disputed domain name <flik-flak.com> displays the picture of a clock and sponsored links to various websites, some of these related to the Complainants’ products, such as links to online sales of watches.

5) There is no reason to believe that the Respondent has any right or legitimate interest in the disputed domain name;

6) The Respondent is not using the domain name for any legitimate purpose. The website has no independent content beyond the above quoted reference to the Complainants’ trademark and certain sponsored links.

7) The disputed domain name is currently parked with Sedo “www.sedo.com”. The parking with Sedo means sponsored links are placed on the website by Sedo in order to generate income for the Respondent. This means that the website has no purpose beyond attracting people searching for the trademark of the Complainants on the Internet, and generating money if and when they click on the sponsored links.

8) The Complainants affirm that a few weeks before the filing of the Complaint, the disputed domain name was held by a Norwegian limited company named Sea xray AS (see Annex 4 to the Complaint). That Sea xray AS, after receiving a cease and desist letter from the Complainants’ law firm, transferred the domain name to the actual Respondent. The Complainants assume that the change of ownership is an attempt to escape liability for the trademark infringement. The Complainants infer the above from the fact that the owners and directors of the Norwegian company are two Russian individuals; that the current Russian address of the Respondent is the same address that was stated as the contact address for the “www.flik-flak.com” website as early as 2002; and from the fact that the website content has not changed after the ownership transfer.

9) The Complainants affirm that they had previous conflicts with the Respondent and Sea xray AS, which previously held the domain name <swatch.com.ru> and sold it to a third party that then tried to sell it to the Complainants for an exorbitant price.

The Complainants request that the Panel issue a decision that the disputed domain name <flik-flak.com> be transferred to either of the Complainants.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainants have established that they have rights in the trademark FLIK FLAK registered since January 30, 1987.

It appears that the only difference between the disputed domain name <flik-flak.com> and the Complainants’ trademark FLIK FLAK is given by the hyphen. This difference is minimal and clearly not sufficient to avoid confusing similarity.

Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

i) that before any notice to the respondent of the dispute, he or she used or made 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) that the respondent is commonly known by the disputed domain name, even if he or she has not acquired any trademark rights; or

iii) that the respondent intends to make a legitimate, non commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

Here, the Respondent has no connection or affiliation with the Complainants, which have not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainants’ trademark. The Respondent does not appear to be commonly known as “Flik-Flak” or by a similar name, and it has not alleged any facts to justify any rights and/or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. Finally, the Respondent has not replied to the Complaint, and has not proven nor alleged in any other way any right or legitimate interest in the disputed domain name.

Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith (Policy, paragraph 4(b)):

i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

Accordingly, for a complainant to succeed, the panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.

Considering the Complainants’ trademark, its use in the market, the content placed on the Respondent’s website “www.flik-flak.com” at the time the Complaint was filed, the introductory statement “Welcome to flik-flak.com flik-flak.com offers links to sites on the internet for Flik Flak Swatch watches funny sun happy children!” and the fact that there is no rebuttal by the Respondent of the Complainants’ claims, or any other indication in the case file contrary to them, the Panel accepts as true the Complainants’ claims. Therefore, it appears:

1) that the Respondent must have had actual knowledge of the Complainants’ trademark at the time of the registration of the disputed domain name;

2) that the alleged use of the disputed domain name, i.e., to redirect users to third parties’ websites, where pay-per-click advertisements are displayed is inference of bad faith use. In this sense see Grosbill S.A. v. Richard J., WIPO Case No. D2006-1254 finding that: “Even if it was not the intention of the Respondent to promote goods which directly compete with those of the Complainant, it is nevertheless clear that the disputed domain name was chosen to attract web traffic for the purposes of commercial gain by creating a likelihood of confusion with the Complainant’s mark”.

3) that there is no other apparent explanation for the registration of the disputed domain name other than the Respondent’s intent to profit by the goodwill of the Complainants’ trademarks.

Accordingly, the Panel finds on the basis of the evidence presented that the Complainants have satisfied paragraph 4(a)(iii) 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 domain name, <flik-flak.com> be transferred to ETA SA Manufacture Horlogère Suisse.

Fabrizio Bedarida
Sole Panelist
Dated: November 14, 2011