WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swatch AG v. Boomin Jeong

Case No. D2018-2627

1. The Parties

The Complainant is Swatch AG of Biel, Switzerland, represented by Steven M. Levy, United States of America (“United States”).

The Respondent is Boomin Jeong of Busan, Republic of Korea, self-represented.

2. The Domain Name and Registrar

The disputed domain name <swatchpay.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).

3. Procedural History

The Complaint and the Amended Complaint were filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2018. On November 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Complainant submitted an additional annex by email on November 21, 2018. On November 27, 2018, 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.

On November 28, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same day, the Respondent requested that Korean be the language of the proceeding. On November 29, 2018, the Complainant requested that English be the language of the proceeding.

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 the Respondent in English and Korean of the Complaint, and the proceedings commenced on December 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2018. The Response was filed with the Center on December 21, 2018.

The Center appointed Andrew J. Park as the sole panelist in this matter on January 11, 2019. 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, Swatch AG is a company incorporated in 1984 and based in Bern, Switzerland. It is a subsidiary of The Swatch Group AG and manufactures and distributes watches to markets worldwide serving customers through its retail and online stores. The Swatch Group is an international group active in the design, manufacture, and sale of finished watches, jewelry, watch movements, and components. The Complainant owns the distinctive and well-known SWATCH and SWATCH PAY trademarks and has been using these trademarks in connection with what has become one of the most famous industry leaders in wristwatches. The Complainant has hundreds of dedicated, branded retail stores throughout North America, Europe, the Middle East, Africa, Central and South America, Asia, and Australia, as well as a growing number of online shops available at “www.shop.swatch.com”. The Swatch Group also announced the July 27, 2017 launch of its SWATCH PAY service.

The Complainant owns many trademark registrations for SWATCH and SWATCH PAY.

The disputed domain name <swatchpay.com> was registered by the Respondent on April 22, 2018, and has not resolved to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <swatchpay.com> is identical and confusingly similar to the Complainant’s trademarks in which the Complainant has rights. The Respondent’s disputed domain name is identical, on its face, to the Complainant’s registered SWATCH PAY mark and nearly so with respect to its SWATCH mark. The mere addition of generic words to a well-known trademark does not avoid a finding of confusing similarity and also the addition of the “.com”, generic Top-Level Domain (“gTLD”) does nothing but alleviate confusion between the SWATCH or SWATCH PAY marks and the disputed domain name <swatchpay.com>.

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant insists that the Respondent’s actions are not a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name does not resolve to any substantive website content and only displays the message “Services for this domain have been discontinued,” thus indicating that it is being held passively by the Respondent with no real intention or ability to make a legitimate use of the disputed domain name. Also, the Respondent is not commonly known by the disputed domain name or either of the Complainant’s respective marks, nor does the Respondent operate a business or other organization under either of the marks and does not own any trademark or service mark rights in the terms that make up the disputed domain name.

3) the disputed domain name was registered and is being used in bad faith. The Respondent intentionally targeted the Complainant’s SWATCH and SWATCH PAY marks without consent from the Complainant. The Respondent was on actual notice of the Complainant’s rights in its globally famous marks as a result of the Complainant’s extensive use of the marks which long predate the date on which the Respondent registered the disputed domain name, and this means that the Respondent intentionally used the disputed domain name with the knowledge of, and in violation of the Complainant’s trademark rights.

The Complainant also argues that the Respondent has no active website affiliated with the disputed domain name and has merely passively held the disputed domain name. When the Complainant’s representative contacted the Respondent concerning the disputed domain name, the Respondent replied with the message “Thanks for your interest in this domain. Please let me know your price of purchasing this domain. If your price is a reasonable price, I will give you an answer.” However when the Complainant offered to purchase the disputed domain name for USD 300, the Respondent failed to engage in any further correspondence despite repeated attempts. This shows that the Respondent’s bad faith that it has an intention to sell the disputed domain name for a price in excess of the registration cost for a profit.

The Respondent is the owner of many other domain names which incorporate variations on other well-known trademarks, which shows that the Respondent is a serial cyber squatter and is engaged in a pattern of bad faith registrations of domain names that are confusingly similar to trademarks in which the Respondent has no rights.

Finally, the Complainant mentioned that the Respondent’s use has tarnished and diluted the Complainant’s marks and as a result of its using the disputed domain name in association with a non-resolving website, the Respondent has diminished the public’s capacity to associate the Complainant’s globally famous marks with the quality products and services offered by the Complainant.

B. Respondent

1) The Respondent first argues that the language of the proceeding should be Korean and requests the Complainant to submit the Complaint in Korean.

2) The disputed domain name <swatchpay.com> is a compound word of “natural language”. The word, “swatchpay” is the combination of common English words, namely the combination of the English letters “s”, the word “watch”, and the word “pay”.

3) The Respondent has never attempted to sell the disputed domain name to the Complainant and had never asked the Complainant to purchase the disputed domain name. The Complainant sent emails of intimidating and offensive content. In those emails, the Complainant threatened that the Respondent should sell the disputed domain name to the Complainant.

4) The Respondent registered the disputed domain name on April 22, 2018, which precedes the Complainant’s registration date of its trademarks.

Thus, the Respondent claims that it has clearly demonstrated that the disputed domain name was not registered in bad faith. Therefore, the Panel should dismiss the Complainant’s request.

6. Discussion and Findings

A. Language of Proceeding

The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, i.e., Korean.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean;

2) The Respondent corresponded with the Complainant in English concerning the sale of the disputed domain name, which supports that the Respondent understands the English language.

3) The Response has been submitted in Korean;

4) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English; (2) accept the Response in Korean; and (3) issue a decision in English.

B. Identical or Confusingly Similar

This element consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the marks, SWATCH and SWATCH PAY, and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and adding the word “pay” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. The addition of the gTLD extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182).

The Respondent’s assertion that the Complainant’s SWATCH and SWATCH PAY trademarks were not registered when the Respondent registered the disputed domain name is not valid since the Panel finds that the Complainant has registered the SWATCH and SWATCH PAY trademarks, and that they precede the registration of the disputed domain name by the Respondent.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i), and (ii), by using the disputed domain name for the purpose of selling or transferring the disputed domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, and by preventing the Complainant, the owner of the trademark or service mark, from reflecting the mark in a corresponding domain name. The Respondent created the disputed domain name which is confusingly similar to the Complainant’s trademark, SWATCH and SWATCH PAY with the knowledge of the Complainant’s famous trademarks and its business. In fact, Complainant’s commencement of its business and its first use of the SWATCH trademarks since at least 1985, far pre-date the registration date of the disputed domain name.

The Respondent raised a number of notably unpersuasive and/or immaterial claims that it did not register nor use the disputed domain name in bad faith. The Respondent, for example, in arguably its “best” effort to raise a legitimate claim of no bad faith registration, suggested that it did not know of the existence of the Complainant’s trademark at the time it registered the disputed domain name, and that this was established by the fact that it registered the disputed domain name prior to the Complainant’s registrations of its trademarks. The Panel, however, recognizes the fact that the Complainant’s trademark registrations of the SWATCH marks are significantly prior to the registration date of the Respondent’s disputed domain name in 2018, and comes shortly after the registration of the Complainant’s SWATCH PAY mark.

The Panel finds that the Complainant’s trademarks are well known and that they have been used since at least 1985. Further, the disputed domain name is identical or confusingly similar to the Complainant’s trademarks and the Panel confirms that there is no evidence whatsoever that the Respondent is currently using the disputed domain name with a bona fide purpose or that it is commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name. Thus, it is clear that the Respondent registered the disputed domain name with the knowledge of the Complainant’s famous trademarks and its business.

Accordingly, the evidence, including the emails between the Complainant and the Respondent, shows that the Respondent likely knew of and had sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks and prevented the Complainant from reflecting the mark in a corresponding domain name in order to resell the disputed domain name to the Complainant for commercial gain.

As the conduct described above falls squarely within paragraph 4(b)(i) and (ii) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <swatchpay.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: January 28, 2019