Swatch AG v. Delta Ltd. / Silven Dayan
Claim Number: FA1108001404051
Complainant is Swatch AG (“Complainant”), represented by Jess M. Collen of Collen IP, Intellectual Property Law, P.C., New York, USA. Respondent is Delta Ltd. (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <swatch-online.com> and <vintageswatch.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Nelson A. Diaz (ret.),as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2011; the National Arbitration Forum received payment on August 22, 2011.
On August 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <swatch-online.com> and <vintageswatch.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@swatch-online.com, postmaster@vintageswatch.com. Also on August 26, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 16, 2011.
On September 20, 2011 a Supplemental Submission, and on September 21, 2011, Additional Submission from Complainant was received and does comply with Supplemental Rule 7. The Respondent filed and Additional Submitssion on September 25, 2011 and an Additional Submission to the Complaint on September 26, 2011 and Ammend to Respondents Response and Additional Submission on Septemeber 26, 2011 while not complying with Supplemental Rule 7, was still considered in this opinion and decision.
On September 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the entities listed in the WHOIS information for the disputed domain names, although different in name, are controlled by the same individual, Respondent. Complainant states that the Panel needs to look no further than the WHOIS information to see the connection between the two Respondents. The WHOIS information for the <swatch-online.com> domain name identifies the registrant as “Silven Dayan.” The WHOIS information for the <vintageswatch.com> domain name identifies the registrant as “Delta Ltd,” but the administrative and technical contact for this domain name is identified as “Josephine Dayan,” with the e-mail address “jospehine@silvendayan.com.” Complainant argues that the e-mail contact for that domain name clearly indicates that the <vintageswatch.com> domain name is actually controlled by the registrant of the <swatch-online.com> domain name, Silven Dayan. Complainant asserts that both the <silvendayan.com> domain name and the <vintageswatch.com> domain name redirect to the <swatch-online.com> domain name, which suggests common control of the two disputed domain names. Furthermore, Complainant states that the <swatch-online.com> domain name contains a meta-tag that includes information linking it to the <vintageswatch.com> domain name. The meta-tag includes this information indicating that the two disputed domain names are intimately connected: “Copyright 2011, Delta LTD. Co & Silven Dayan.”
B. Respondent
Respondent rejects Complainant’s allegation that the registrant of the <vintageswatch.com> domain name is an alias of the registrant of the <swatch-online.com> domain name. Respondent argues that Respondent, Silven Dayan, and Respondent’s, Delta Ltd.’s, partner, Josephine Dayan, are different people, who only have a business relationship. Respondent alleges that Respondent, Silven Dayan, the registrant of the <swatch-online.com> domain name, is the partner of “Dayan Tekstil Ltd.,” whereas Josephine Dayan is the partner of Respondent, Delta Ltd. Respondent provides company registration information for both Dayan Ltd. and Delta Ltd., showing that Silven Dayan is an individual shareholder of Dayan Ltd. and Josephine Dayan is an individual shareholder of Delta Ltd.. Respondent also responds to Complainant’s allegation that the <vintageswatch.com> domain name redirects to the website <swatch-online.com> domain name by stating that there is an agreement between Respondent, Silven Dayan, and Respondent, Delta Ltd., where both parties decided to isolate eBay sales over the domain name <vintageswatch.com>. As a result of this agreement, Respondent contends that Respondent, Delta Ltd., redirected the <vintageswatch.com> domain name to the <swatch-online.com> domain name until the website was built. Respondent asserts, however, that the website at the <vintageswatch.com> domain name has not been activated since that time and still is not an active website. Respondent argues that Complainant’s assertion that the <vintageswatch.com> domain name is listed as the web URL for eBay in the “About Swatch Online” section of the <swatch-online.com> domain name is not evidence of common control. Respondent asserts that Respondent, Delta Ltd., registered and intended to sell vintage SWATCH watches on eBay through the <vintageswatch.com> domain name by linking the products to eBay site to get a store referral credit. Respondent argues again that Respondent, Silven Dayan, listed the <vintageswatch.com> domain name as the “web URL for eBay” at the <swatch-online.com> domain name due to the agreement mentioned above relating to isolating eBay sales. Respondent asserts that this agreement is also the reason for the source code metatag that Complainant refers to as evidence of common control. Respondent denies that the e-mail address listed for Josephine Dayan in the WHOIS information for the <vintageswatch.com> domain name indicates common control. Respondent argues instead that the e-mail addresses used by Silven Dayan and Josephine Dayan are different and that Respondent, Silven Dayan, provided an e-mail address with its own domain <silvendayan.com> to Respondent, Delta Ltd., due to the business relationship between the two. In response to Complainant’s allegation that the <silvendayan.com> domain name also redirects to the <swatch-online.com> domain name, Respondent states that Respondent, Silvan Dayan, created the <silvendayan.com> domain name inspired by its own name and began to sell vintage SWATCH watches at the domain name in September 2001. Respondent asserts that Respondent, Silven Dayan, also registered the <swatch-online.com> domain name in July 2005 and began to redirect the five-year old <silvendayan.com> domain name to the <swatch-online.com> domain name to continue to serve the visitors to the <silvendayan.com> domain name. Respondent argues that this connection between the <silvendayan.com> and <swatch-online.com> domain names provide no evidence that Respondent has common control over both the <vintageswatch.com> and <swatch-online.com> domain names. Respondent concludes by emphasizing that the registrants of the two disputed domain names are different and unrelated and that the disputed domain names held by unrelated registrants are not subject to further consideration under the UDRP in accordance with the Forum’s Supplemental Rule 4(e)(ii).
The Respondent has violated the Domain Name Dispute Resolution Policy’s of Identical or Confusingly Similar Policy ¶ 4(a)(i), Rights and Legitimate Interests, Policy ¶ 4(a)(ii), and Registration and Use in Bad Faith Policy ¶ 4(a)(iii) .
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Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus choose to proceed with the instant proceedings in relation to the <swatch-online.com> and <vintageswatch.com> domain names.
Complainant claims that it has established its rights in the SWATCH mark by registering that mark with trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,356,512 registered August 27, 1985) and the Office for the Harmonization of the Internal Market (“OHIM”) (e.g., Reg. No. 226,019 registered October 2, 1998). Complainant submits verifying documents from both authorities, which appear to indicate that Complainant is the owner of the registrations and that the mark is duly registered in both jurisdictions. Therefore, the Panel finds that Complainant has established its rights in the SWATCH mark under Policy ¶ 4(a)(i) by registering it with governmental trademark authorities. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb). Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also claims that Respondent’s <swatch-online.com> and <vintageswatch.com> domain names are confusingly similar to its SWATCH mark. According to Complainant, both domain names include the entire mark while adding the generic top-level domain “.com.” Complainant states that the disputed domain names separately include either the descriptive term “vintage” and the generic term “online,” and the <swatch-online.com> domain name also inserts a hyphen. The Panel may find that these changes insufficiently differentiate the disputed domain names from Complainant’s SWATCH mark, thereby making them confusingly similar under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end).
While Respondent contends that the <swatch-online.com> and <vintageswatch.com> domain names are comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel may find that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel is finds a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain names. At no point has Respondent claimed to be commonly known by or associated with the disputed domain name. Complainant contends that Respondent has no relationship, affiliation, connection, endorsement, or association with Complainant and has never received any authorization, permission or license to use Complainant’s SWATCH mark. Complainant states that the WHOIS information for the disputed domain names supports its argument by identifying the registrants as “Delta Ltd.” and “Silven Dayan.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. According to Complainant, the disputed domain names resolve to a website offering SWATCH brand watches for sale. Respondent does not dispute this claim and actually confirms it in the Response. Complainant claims that Respondent is not authorized to sell SWATCH goods online or as a general distributor. Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Vapor Blast Mfg. Co. v. R & S Techs., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent, an unauthorized reseller of the complainant’s products, did not have rights or legitimate interests in a domain name that was confusingly similar to the complainant’s mark); see also Polycom, Inc. v. Telcom & Data Inc, FA 1245498 (Nat. Arb. Forum Mar. 16, 2009) (“The Panel finds that Respondent’s unauthorized sale of Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”).
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Complainant further alleges that Respondent does not have rights and legitimate interests in the disputed domain name because it is using the famous SWATCH mark to sell Complainant’s goods without distinguishing Respondent from the legitimate owner and user of the SWATCH mark. Complainant refers to the Oki Data case, which state that a reseller of branded goods must “disclose the relationship or lack of affiliation with the trademark owner.” See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Complainant contends that Respondent does not satisfy this requirement as the resolving website from both disputed domain names contains no disclaimer of affiliation with Complainant, which Complainant asserts is further evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s disputed domain names are disrupting its business. According to Complainant, the disputed domain names resolve to a website offering SWATCH brand watches for sale. Internet users seeking out Complainant’s <store.swatch.com>, <swatch.com>, or <swatchonline.com> domain names may arrive at Respondent’s website and purchase a watch from Respondent, which Respondent is not authorized to sell according to Complainant, instead of a watch that Complainant legitimately sells from one of the listed websites. Therefore, the Panel finds that Respondent is disrupting Complainant’s business as a competitor, which suggests that the disputed domain names were registered and are being used in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent is gaining commercially from the operation of the disputed domain names. Complainant claims, and Respondent confirms in its Response, that the disputed domain names resolve to a site offering Complainant’s goods for sale. In addition, Complainant argues that the display of its stylized mark on the resolving website and the lack of any disclaimer of affiliation with Complainant creates the misleading impression that Respondent is somehow sponsored or authorized by Complainant. Complainant alleges that Respondent’s actions indicate its intention to trade on Complainant’s goodwill and attract Complainant’s intending customers for Respondent’s own profit. Given Complainant’s claims and Respondent’s own admissions, the Panel finds that Respondent is gaining commercially from the misleading use of the disputed domain names, thus revealing bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Complainant asserts that Respondent had actual notice of its rights in the SWATCH mark due to the mark’s fame and the circumstances surrounding Respondent’s use of the disputed domain names. Complainant states that Respondent’s use of the SWATCH mark to sell SWATCH brand watches indicates that Respondent knows that the mark holds value and that the website will be more successful if the SWATCH mark is used. The Panel finds that Respondent had actual notice of Complainant’s rights in the SWATCH mark due to the fame of the mark and the manner in which Respondent effected its use. The Panel also finds that Respondent’s actual notice of Complainant’s rights in the mark supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swatch-online.com> and <vintageswatch.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret), Panelist
Dated: September 29, 2011
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