The Swatch Group AG and Swatch AG v. Van Cole
Claim Number: FA1901001827758
Complainant is The Swatch Group AG and Swatch AG ("Complainant"),[i] represented by Steven M. Levy, Pennsylvania, USA. Respondent is Van Cole ("Respondent"), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swatchgrovp.com>, registered with NameCheap, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2019; the Forum received payment on January 30, 2019.
On January 30, 2019, NameCheap, Inc. confirmed by email to the Forum that the <swatchgrovp.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@swatchgrovp.com. Also on February 1, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 24, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading Swiss watchmaker that has marketed wristwatches and other products and services under the SWATCH and SWATCH GROUP marks since 1983. Complainant claims that its marks have become famous as a result of longstanding and widespread marketing and sales, giving rise to common law trademark rights. Complainant also owns many trademark registrations for SWATCH and SWATCH GROUP in the United States and other jurisdictions.
Respondent registered the disputed domain name <swatchgrovp.com> via a privacy registration service in January 2019. The domain name resolves to a web page consisting of a list of "related links" to other presumably unrelated websites. Complainant states that the domain name has also been used in connection with a fraudulent phishing scheme in an attempt to obtain funds from Complainant. Complainant provides a copy of an email message using the disputed domain name and purporting to be from Complainant's Chief Financial Officer, sent to an address within Complainant's company. The message sought payment for what Complainant states was a nonexistent transaction; Complainant describes the scheme as "whaling" or "spear phishing." Complainant further asserts that Respondent is "an active cybersquatter," listing several other domain names registered by Respondent that but for typographical errors correspond to well-known trademarks.
Complainant contends on the above grounds that the disputed domain name <swatchgrovp.com> is confusingly similar to its SWATCH and SWATCH GROUP marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. Webnet-Marketing, Inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
The disputed domain name <swatchgrovp.com> corresponds to Complainant's registered SWATCH GROUP trademark, omitting the space and substituting a letter "V" for the "U," and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Swatch Group AG / Swatch AG v. Packy Phim, D2018-0851 (WIPO June 6, 2018) (finding <swatchqroup.com> confusingly similar to SWATCH GROUP); Hager SE v. Oneandone Private Registration, 1&1 Internet Inc / Ashwin Rayaprolu, Kabarama, D2018-0473 (WIPO Apr. 25, 2018) (finding <hagergrovp.com> confusingly similar to HAGER). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to display unrelated pay-per-click links and in connection with a fraudulent phishing scheme. Such use does not give rise to rights or legitimate interests under the Policy. See Hager SE, supra (finding lack of rights or interests in nearly identical circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that mimicks Complainant's corporate name, including its famous SWATCH mark, and is using it to impersonate Complainant in connection with a fraudulent phishing scheme. Such conduct is indicative of bad faith registration and use under the Policy. See Hager SE, supra (finding bad faith in nearly identical circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swatchgrovp.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 25, 2019
[i] Swatch AG is a subsidiary of Swatch Group AG. The Panel considers this connection sufficient under the Forum's Supplemental Rule 1(e) to warrant treating them as a single entity for purposes of this proceeding. See Swatch AG / Swatch Group LTD v. Derek Odum / Derek A. Odum / Jeffrey Lambert / Jeffrey M. Lambert, FA 1450983 (Forum Aug. 15, 2012).
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