DECISION

 

TISSOT SA v. Daniela Weiss Daniela Weiss / Daniela Weiss

Claim Number: FA2501002137982

 

PARTIES

Complainant is TISSOT SA ("Complainant"), represented by Sebastian Regez of THE SWATCH GROUP AG, Switzerland. Respondent is Daniela Weiss Daniela Weiss / Daniela Weiss ("Respondent"), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tissotusa.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 31, 2025; Forum received payment on January 31, 2025.

 

On February 4, 2025, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <tissotusa.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On February 7, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of February 27, 2025 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@tissotusa.us. Also on February 7, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On February 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response or any other submittals from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant distributes high-tech wristwatches throughout the world. It has rights in the TISSOT mark based upon its registration of that mark with the United States Patent and Trademark Office (USPTO) and other governmental trademark agencies. Respondent's <tissotusa.us> domain name is identical or confusingly similar to the TISSOT mark as it incorporates the entire mark, merely adding the "usa" abbreviation for the United States and the ".us" country-code top-level domain (ccTLD).

 

Respondent has no rights or legitimate interests in the domain name. It is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the domain name resolves to a website that mimics and impersonates Complainant and lures consumers into buying counterfeited products or paying for products that are not delivered, and Respondent has not been commonly known by the domain name. 

 

Respondent registered and uses the domain name in bad faith. It is using the domain name to pass off as Complainant and advertise Complainant's products at deeply discounted prices, indicating a scheme to sell counterfeit products or not deliver products purchased by consumers. lt also prevents Complainant from reflecting its mark in a corresponding domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the respondent has no rights or legitimate interests in respect of the domain name; and

(3)       the domain name has been registered or is being used in bad faith.

 

In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").  The WIPO Overview 3.0 is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. This Panelist accepts that consensus on this and other issues addressed later in this Decision.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The TISSOT mark was registered to Complainant with the USPTO (Reg. No. 1,639,684) on April 2, 1991 (USPTO registration certificate included in Complaint Exhibit E). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

Respondent's <tissotusa.us> domain name is identical or confusingly similar to the TISSOT mark. It fully incorporates the mark, merely adding the "usa" abbreviation for the United States and the ".us" ccTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."), Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA1503001611255, (Forum May 4, 2015) ("The addition of 'US' or 'USA' does not alter the underlying mark held by the complainant. . . . The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.").  The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

Further, the addition of descriptive terms that relate to a complainant can actually enhance confusion. That is the case with the domain name involved here. The "usa" abbreviation for the United States, coupled with the ".us" ccTLD, suggests that the resolving website would be  Complainant-sponsored site oriented toward the sale of Complainant's products in that country. Adding it to Complainant's mark in the domain name enhances the confusing similarity. Avaya, Inc., Ibid. ("Prior UDRP panels have found consistently that the addition of a geographic term of this sort, when added to a domain name that is otherwise identical to the mark at issue, creates a confusing similarity. The reason why this is so is that it gives the impression to the internet user that it relates to the activities of Complainant in the geographic region specified and that the domain name will lead to a website dealing with the same subject.").

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the TISSOT mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

(i)                      The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;

(ii)                      before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(iii)                      the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iv)                      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because (i) it is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the domain name resolves to a website that mimics and impersonates Complainant and lures consumers into buying counterfeited products or paying for products that are not delivered, and (ii) Respondent has not been commonly known by the domain name. These allegations are addressed as follows:

 

Complainant neither addressed nor offered evidence bearing upon the Policy ¶ 4(c)(i) factor, concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name. In order to establish a prima facie case of no rights or legitimate interests a complainant must offer some evidence on each of the four circumstances listed in Policy ¶ 4(c), Complainants in usDRP cases can search the data bases of one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while Complainant should have offered evidence bearing specifically upon this element, the evidence that is available sufficiently establishes that Respondent is not the owner or beneficiary of a trade or service mark identical to the domain name. Complainant has registered its TISSOT mark with the USPTO, the European Intellectual Property Office (EUIPO), and Internationally pursuant to the Madrid Protocol, (USPTO, EUIPO, and WIPO registration certificates included in Complaint Exhibit E). In light of these registrations, it is inconceivable the USPTO or any other governmental trademark agency would register a trademark identical to the domain name or any other mark identical or similar to the domain name in the name of any person other than Complainant or an affiliate, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the domain name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the domain name.

 

Complaint Exhibit G contains screenshots of pages on the website resolving from the domain name. They all display the TISSOT mark and distinctive logo of Complainant and offer the same models of watches advertised on Complainant's website at <tissotwatches.com/fr-ch> (screenshots submitted as Complaint Exhibit D-1). Many of the photos of Complainant's products appearing on Respondent's website are very similar if not identical to those appearing on Complainant's website.  Id.  A box at the top of the first page of Respondent's website contains the "Authorized Retailer" notation. Respondent's website unquestionably represents itself and passes off as Complainant's or as that of an "authorized retailer" of Complainant's products and purports to offer Complainant's products for sale. Passing off as a complainant or authorized representative of a complainant and offering to sell Complainant's products does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(ii), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iv). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) ("The usage of Complainant's NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material  is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name."), Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."). ¹  

 

The WHOIS information provided to Forum by the registrar lists the named Respondent as the registrant of the domain name. Neither of these names bears any resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(iii).

 

Complainant alleges in connection with the Policy ¶ 4(a)(iii) bad faith element of its case that Complainant has not licensed or authorized Respondent to use its mark. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

 

Registration or Use in Bad Faith

Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:

 

(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 which is the owner of the trademark or service mark or to a competitor of that 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; 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 the 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 the respondent's web site or location or of a product of service on the respondent 's web site or location.

 

The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as Complainant and offering to sell products advertised as those of Complainant, Respondent is using the confusingly similar domain name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its web site. The evidence does not disclose whether Respondent is actually selling the products advertised on its website or fraudulently representing that it does, collecting money from the customer and then not delivering the goods. The discounts offered on the page of Respondent's website submitted as Complaint Exhibit G-2 are very substantial, in the range of 75% to 82%. It is highly unlikely that Respondent could long remain in business if the watches advertised on its website are genuine or if it actually delivers products ordered and paid for by customers. Regardless of which scenario is present here, Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

As discussed above, Respondent is using the domain name to pass off as Complainant. Policy ¶ 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing off as a complainant, in and of itself, is evidence of bad faith. Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith where "Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant's own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.").

 

Respondent's registration of the domain name prevents Complainant from reflecting its mark in that domain. Policy ¶ 4(b)(ii) is written so as to require that in order for a respondent's conduct to fit within the circumstances therein stated, it must have registered the domain name for the purpose of accomplishing that objective. There is no evidence to support that proposition. Indeed, the evidence strongly suggests that Respondent's primary motive was not so much to prevent Complainant from registering and using this domain name as it was to trade upon Complainant's goodwill and reputation and profit commercially by creating confusion as to the source, sponsorship, affiliation or endorsement of its site, which is properly addressed under Policy ¶ 4(b)(iv). Respondent's conduct does not fall within the circumstances stated in Policy ¶ 4(b)(ii).

 

Finally, although not argued by Complainant, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the domain name in April 2024 (WHOIS printout submitted as Complaint Exhibit B shows creation date). Complainant began using its mark at least as early as the 1959 first use date shown on the USPTO registration certificate included in Complaint Exhibit E 1, and its TISSOT mark is well-known throughout Europe if not the world at large as the source identifier for Complainant's watches (articles and social media printouts included in Complaint Exhibit D).  More importantly, Respondent had to have had actual knowledge of Complainant in order to advertise Complainant's products using Complainant's name. There is no question that Respondent knew of Complainant and its mark when it registered the domain name. Given the non-exclusive nature of Policy ¶ 4(b), acquiring a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).  Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

For the reasons above set forth above, the Panel finds that Respondent registered and is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <tissotusa.us> domain name be TRANSFERRED from Respondent to Complainant

 

 

Charles A. Kuechenmeister, Panelist

March 3, 2025