Swatch Ltd. v. www.lazydomains.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Swatch Ltd. v. www.lazydomains.com

Case No. D2002-0854

1. The Parties

The Complainant is Swatch Ltd., a private limited company

incorporated under the laws of Switzerland, with its principal

place of business in Switzerland.

The Respondent is www.lazydomains.com of the United Kingdom of Great Britain

and Northern Ireland.

2. The Domain Name And Registrar

The domain name which is the subject of this proceedings is <swatch.org>.

This domain name is registered with Enom Inc., 16771, NE 80th Street,

Suite 100, Redmond, WA 98052, United States of America.

3. Procedural History

The main procedural background of this administrative proceeding is as follows:

(a) A complaint was submitted electronically by the Complainant to the World

Intellectual Property Organization (hereafter "the WIPO")Arbitration

and Mediation Center (hereafter "the Center") on September 12, 2002, and in

hardcopy on September 13, 2002. Payment by Complainant of the requisite filing

fees was made by credit card.

(b) On September 12, 2002, a request for Registrar verification was transmitted

by the Center to the Registrar Enom, requesting it to:

- confirm that a copy of the complaint had been sent to it by the Complainant

as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (hereafter "the Supplemental Rules"), Paragraph 4(a).

- confirm that the domain name at issue is registered with Enom.

- confirm that the person identified as the Respondent is the current registrant

of the domain name.

- provide full contact details, i.e., postal address(es), telephone number(s),

facsimile number(s), email address(es), available in the Registrar’s WHOIS database

for the registrant of the disputed domain name, the technical contact, the administrative

contact and the billing contact for the domain name.

- confirm that the Uniform Domain Name Dispute Resolution Policy (hereafter

"the Policy") applies at the time of the registration of the domain

name.

- indicate the current status of the domain name.

(c) By email dated September 12, 2002, the Registrar Enom responded as follows:

- Enom had not received a copy of the Complaint from the Complainant.

- Enom is the Registrar of the domain name <swatch.org>.

- "www.lazydomains" is the current registrant of the said domain

name, and also provided the relevant details for the Administrative and Technical

Contact.

- The Policy applies to the domain name.

- The domain name registration <swatch.org> will remain locked during

the proceeding.

(d) Following a deficiency notification from the Center of September 13, 2002,

an amended Complaint was submitted electronically to the Center on September 16, 2002,

and in hardcopy on September 17, 2002.

(e) Having verified that the complaint satisfied the formal requirements of

the Policy and the Rules for Uniform Domain Name Dispute Resolution Policy (hereafter

"the Rules"), the Center, on September

18, 2002, transmitted by e-mail,

a notification of Complaint and Commencement of Administrative Proceedings to

the Respondent.

The Complainant elected to have its complaint resolved by a single panel member.

(f) The Respondent was advised that a Response to the Complaint was required

within 20 calendar days from the date of commencement of the administrative

proceeding, that is till October 8, 2002. Respondent was also advised that any

Response should be communicated, in accordance with the Rules, Paragraph 5(b)

and Supplemental Rules Paragraph 3, by four sets of hard copy and by e-mail.

Contrary to these requirements, the Respondent replied to the Center only by

an email dated October 8, 2002..

On October 8, 2002, the Center acknowledged receipt of the Response and requested

the postal address of the Respondent and of any authorized representative to

act for the Respondent according to Rules, Paragraph 5(b)(ii) before October

10, 2002. No further response has been received.

(g) On October 10, 2002, the Center invited the undersigned to serve as Panelist

in the case subject to receipt of an executed Statement of Acceptance and Declaration

of Impartiality and Independence.

On October 10, 2002, the undersigned transmitted by fax the executed Statement

and Declaration to the Center.

On October 11, 2002, the Center notified the Complainant and the Respondent

of the appointment of the Panel and sent the relevant documents, received by

mail on October 14, 2002. According to Paragraph 15 of the Rule, in

the absence of exceptional circumstances, the Panel was required to forward

its decision to the Center by October 25, 2002.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found necessary to request further information from either of the parties.

The language of the administrative proceeding is English, being the language

of the registration agreement.

4. Factual Background

Complainant has provided a copy of the registration of the following mark:

International Trademark SWATCH, N° 614932 of January 31, 1994. Said International

registration is owned by Swatch AG (Swatch S.A.), (Swatch Ltd.), 94 rue Jacob

Stämpfli, CH-2500 Bienne, Suisse. The trademark is protected in many countries

and is applied to many goods and services of classes 1 to 42.

There was no evidence that registration of this trademark had been sought in

the UK where Respondent seems to have its place of

business. Besides, the link between Swatch AG, owner of the trademark and Swatch

Ltd the Complainant has not been explained.

According to the WHOIS information supplied by the Complainant, Respondent

registered the <swatch.org> domain name on May 31, 2002. The Respondent

is not a licensee of the Complainant, nor is he authorized otherwise to use

the Complainant’s mark.

After registering the domain name, the Respondent placed the domain name on

a list of domain for sale "at bargain price" among other domain names,

and the first domain name displayed was <swatch.org>. A copy of the web

page was downloaded by the Complainant on September 12, 2002. The offer for

the domain name <swatch.org> showed an asking price of US$ 1.500.

The service Agreement in effect between Respondent and Enom subjects Respondent

to the Policy, as adopted by ICANN on August 26, 1999, and with implementing

documents approved by ICANN on October 24, 1999. The Policy requires

that the domain name registrants submit to a mandatory administrative proceeding

conducted by an approved dispute resolution service provider regarding allegations

of abusive domain name registration. Respondent has not contested that it is

properly before this Administrative Panel.

5. Parties’ Contentions

(a) The Complainant contends that :

- the domain name <swatch.org> is identical to the trademark SWATCH,

N° IR 614.932.

- Respondent has no rights or legitimate interests in said domain name.

- the domain name <swatch.org> has been registered and is being used

in bad faith because it was registered primarily for the purpose of selling,

renting or transferring the domain name registration to the Complainant who

is the owner of the trademark or to a competitor of the Complainant, for valuable

consideration in excess of the out-of-pocket costs directly related to the domain

name.

(b) The Respondent contested the allegations of the Complainant. The Respondent

explains that Lazydomains was a project with, in particular, the objectives

to buy and sell popular domain names, to offer these domain names at affordable

prices, to provide preferential discount for non-commercial, non-profit organizations

and charities and to be transparent The Respondent explains that it is the first

Complaint received by Lazydomains.com. The Respondent informs that the Complainant

did not approach Lazydomains.com in order to try to find an amicable settlement.

The Respondent is of the opinion that the sole objective of the Complainant

is to damage the reputation of Lazydomains.com. Lazydomains refers to some presumed

special business links between the WIPO and the Swatch Group and believes that

the Complainant is using the Policy in bad faith. Besides, the Respondent states

that the domain name <swatch.org> was registered over four months ago

and wonders why the Swatch Group decided after six years that it would like

<swatch.org>, a TLD extension generally more applicable for non profit

organization use.

Respondent states that the pricing and placement is not unique to the disputed

domain name <swatch.org>. It is automatically calculated using a formula

based on the TLD extension and the number of similar TLDs that are available.

Furthermore, Lazydomains is of the opinion that the word swatch is a generic

meaning 'A sample strip cut from a piece of material'.

Lazydomains.com thinks that it has a legitimate interest in respect of the

domain name in so far as it being an item for sale and that the domain name

has been registered in good faith as an item for reselling.

Lazydomains.com contests that the domain name has been registered and used

in bad faith: the offer to buy the domain name is open to any user of the Internet .

Lazydomains.com has attached a copy of its Trademark dispute policy.

6. Discussion And Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under Paragraph 4(a) of the Policy, is to establish

three elements to merit a finding that a Respondent has engaged in abusive domain

name registration and to obtain relief. The three elements to be proved by the

Complainant to warrant relief are :

(a) The domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights.

(b) The Respondent has no rights or legitimate interests in respect of the

domain name.

(c) The domain name has been registered and is being used in bad faith.

The Panel is satisfied that the Center took all steps necessary to notify the

Respondent of the filing of the Complaint and initiation of these proceedings.

In connection with the notification of deficiency in light of the requirements

of Paragraph 5(b) of the Rules of October 8, 2002, and despite a reminder

on October 9, 2002, the Respondent did not provide its postal address and

did not detail any representative authorized to act for the Respondent in the

administrative proceeding. The deadline of October 10, 2002, to remedy

this deficiency has not been met by the Respondent. The Center has informed

the Panel that no communication in response was made.

The

Panel will consequently have to consider the case on the basis of the factual

circumstances contained in the Complaint and other available documents to the

extent relevant.

The Panel examined the three elements as follows :

Identity or Confusing Similarity

The Complainant has to prove that the domain name is identical or confusingly

similar to a trademark or a service mark in which Complainant has rights. The

domain name <swatch.org> is confusingly similar to the Complainant’s IR

trademark SWATCH. In fact, the domain name differs from the trademark only in

that the extension ".org" is added. The addition of the notion ".org"

is not sufficient to remove the likelihood of confusion between the mark and

the domain name.

The Panel is of the opinion therefore that there exists in fact a confusing

similarity between the domain name and the Complainant’s registered trademark.

Rights or Legitimate Interests

The Complainant has to prove that the Respondent has no rights or legitimate

interests in the domain name. The Complainant has not licensed or otherwise

permitted the Respondent to use its SWATCH mark or to apply for any domain name

incorporating the mark. Therefore, the Panel finds that the Respondent has no

rights or legitimate interests in respect of the domain name.

Registration and Use in Bad Faith

Complainant has to prove that the domain name has not only been registered

in bad faith, but has also been used in bad faith. Paragraph 4(b) of the Policy

mentions a number of circumstances which, in particular but without limitation,

shall be evidence of the registration and use of a domain name in bad faith.

In particular, the registration of a domain name primarily for the purpose of

selling, renting, or otherwise transferring the domain name registration to

the Complainant or to a competitor of the Complainant, for valuable consideration

in excess of out-of-pocket costs directly related to the domain name. There

is no evidence of any direct approach to Complainant by the Respondent, however

the Respondent offers for sale, among other domain names, the domain name <swatch.org>

for an amount of US$ 1500 which is clearly in excess of out-of-pocket costs

regarding said domain name (World Wrestling Federation Entertainment Inc.

v Michael Bosman, WIPO Case No. D1999-0001

(January 14, 2000): the Respondent offered to sell the domain name to the

Complainant "for valuable consideration in excess of out-of-pocket expenses" :

Randstad General Partner (U.S.), LLC v. Domains For Sale For You, WIPO

Case No. D2000-0051 (March 24, 2000): the domain name was offered for sale

on the Internet for US$ 24,000 and used to link to a website which advertises

numerous Internet domain names for sale).

On balance, taking into account the material present in this case, the Panel

concludes that all the circumstances in the case are sufficient to establish

that the domain name has in fact been registered and is being used in bad faith,

according to Paragraph 4(a)(iii) and 4(b)(i) of the Policy.

Conclusion

The Panel concludes that the domain name <swatch.org> is confusingly

similar to Complainant’s trademark SWATCH, that Respondent has no rights or

legitimate interests in respect of the domain name and that the domain name

has been registered and is being used in bad faith.

7. Decision

Pursuant to Paragraph 4(i) of the Policy and in accordance with the request

by Complainant, the Administrative Panel requires that the domain name <swatch.org>

be transferred to Complainant.

Nathalie Dreyfus

Sole Panelist

Date: October 23, 2002

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