Swatch AG v. Hka c/o Dynadot Privacy
Claim Number: FA1408001574133
Complainant is Swatch AG (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Hka c/o Dynadot Privacy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swatch.buzz>, registered with Dynadot, LLC.
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 A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2014; the National Arbitration Forum received payment on August 13, 2014.
On August 11, 2014, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <swatch.buzz> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2014 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.buzz. Also, on August 13, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
1. Complainant has rights in the SWATCH mark under Policy ¶ 4(a)(i).
a. Complainant uses the SWATCH mark in connection with the manufacture of Swiss watches, jewelry, and other accessories and services.
b. Complainant is the owner of the SWATCH mark (e.g., Reg. No. 1,980,517 registered June 18, 1996) registered with the United States Patent and Trademark Office (“USPTO”).
c. Respondent’s <swatch.buzz> domain name is identical to Complainant’s SWATCH mark as Respondent merely adds the generic top-level domain (“gTLD”) “.buzz.”
2. Respondent has no rights or legitimate interests in the <swatch.buzz> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name resolves to a pay-per-click website that redirects Internet users to other third party websites.
3. Respondent registered and is using the <swatch.buzz> domain name in bad faith.
a. Respondent had actual notice of Complainant and Complainant’s rights in the SWATCH mark.
b. Some of the links displayed on Respondent’s resolving website compete with Complainant’s business.
c. Respondent uses the disputed domain name to intentionally attract Internet users to its website for commercial gain by confusing them as to Complainant’s connection with the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent created the <swatch.buzz> domain name on April 16, 2014.
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(e), 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 Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. 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.”).
Complainant argues that it has rights in the SWATCH mark which it uses in connection with the manufacture of Swiss watches, jewelry, and other accessories and services. Complainant provides the Panel with evidence of its ownership of multiple USPTO registrations for the SWATCH mark (e.g., Reg. No. 1,980,517, registered June 18, 1996). The Panel therefore finds that Complainant has rights in the SWATCH mark under Policy ¶ 4(a)(i). 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).
Complainant correctly notes that Respondent’s <swatch.buzz> domain name is identical to Complainant’s SWATCH mark as Respondent merely adds the gTLD “.buzz.” The Panel therefore concludes that Respondent’s <swatch.buzz> domain name is identical to Complainant’s SWATCH mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the <swatch.buzz> domain name under Policy ¶ 4(c)(ii). In so arguing, Complainant states that Respondent is not commonly known by the disputed domain name based on the WHOIS record listing “Hka c/o Dynadot Privacy” as registrant of the domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that the WHOIS record is illustrative of whether the respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <swatch.buzz> domain name under Policy ¶ 4(c)(ii).
Complainant next asserts that Respondent’s use of the <swatch.buzz> domain name is evidence of Respondent’s lack of rights and legitimate interests. Complainant states that the disputed domain name is a classic pay-per-click site that displays links that divert Internet users to other websites. Complainant contends that some of the websites are not associated with Complainant, and some are affiliated with Complainant’s competitors. The Panel notes that Complainant’s resolving website contains links including “Watch Winder Info,” “Watch Winder,” and “Watches Results. The Panel presumes that Respondent collects revenue from the links featured on the resolving website. Prior panels have concluded that this type of use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Similarly, this Panel finds for Complainant pursuant to Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that some of the links displayed on Respondent’s resolving website compete with Complainant’s business. Some of the links refer to watches, which are Complainant’s predominant product. Prior panels have frequently held that using a confusingly similar domain name to resolve to a website offering competing links, disrupts a complainant’s business by diverting Internet users away from Complainant’s business in bad faith under Policy ¶ 4(b)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore finds for Complainant under Policy ¶ 4(b)(iii).
Complainant further supports its allegations of bad faith using Policy ¶ 4(b)(iv). Complainant asserts that Respondent’s use of the disputed domain name attracts Internet users to the resolving website and confuses them as to Complainant’s affiliation with the disputed domain name. Complainant further claims that Respondent collects revenue from the various links displayed on the resolving website. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) the panel stated, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Similarly, this Panel finds that Respondent’s use of the disputed domain name to display links, some of which compete with Complainant, indicates bad faith use and registration under Policy ¶ 4(b)(iv) by creating revenue for Respondent.
Complainant alleges that Respondent had actual notice of Complainant and of Complainant’s rights in the SWATCH mark when Respondent registered the <swatch.buzz> domain name. Complainant asserts that the SWATCH mark has been used extensively and internationally, and that Complainant’s registrations predate that of Respondent’s domain name. The Panel finds that in light of the fame of Complainant's mark, and Respondent’s use of the exact mark in its domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Complainant has therefore also satisfied Policy ¶ 4(a)(iii).
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.buzz> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 18, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page