Glashütter Uhrenbetrieb GmbH v E-MARKETPLACE PTY Ltd / Domain

Case

WIPO Case No. DAE2025-0009

22-09-2025

No judgment structure available for this case.

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

BLANCPAIN SA, Compagnie des Montres Longines, Francillon S.A.,
Glashütter Uhrenbetrieb GmbH v. E-MARKETPLACE PTY LTD / Domain
Admin

Case No. DAE2025-0009

1. The Parties

The Complainants are BLANCPAIN SA, Switzerland (“First Complainant”), Glashütter Uhrenbetrieb GmbH, Germany (“Second Complainant”), and Compagnie des Montres Longines, Francillon S.A., Switzerland (“Third Complainant”), represented by The Swatch Group AG, Switzerland.

The Respondent is E-MARKETPLACE PTY LTD / Domain Admin, Australia.

2. The Domain Names and Registrar

The disputed domain names <blancpain.ae>, <glashuette-original.ae> and <longines.ae> are registered with

AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2025. On August 6, 2025, the Center transmitted by email to AE Domain Administration (“.aeDA”) a request for registrant verification in connection with the disputed domain names. On August 11, 2025,.aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verif ied that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 11, 2025. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2025. The Respondent did not submit any Response. Accordingly, the Center notif ied the Respondent’s default on September 5, 2025.

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The Center appointed Mladen Vukmir as the sole panelist in this matter on September 8, 2025. The Panel f inds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The First Complainant is a Swiss company, founded in 1735, and one of the world’s oldest watch brands. It is present in markets all over the world operating a global network of boutiques. The First Complainant is the owner of several BLANCPAIN trademark registrations worldwide, including BLANCPAIN (word) International trademark registration number 190558 registered on February 8, 1956, for goods in class 14 of International Classif ication (“IC”). The First Complainant operates the website created under the domain name

<blancpain.com> where the First Complainant’s brand, products and services are being promoted.

The Second Complainant is a German watch-maker company that was founded in 1845. It is known and present in the world-wide market, including in the United Arab Emirates, with numerous boutiques. The Second Complainant operates the domain name <glashuette-original.com> to promote its brand and

products. The Second Complainant is the owner of several GLASHÜTTE ORIGINAL trademark registrations
worldwide, including GLASHÜTTE ORIGINAL (f igurative) International trademark registration number
894182 registered on June 28, 2006, for goods in class 14 of IC.

The Third Complainant is a Swiss company, founded in 1832. In 1867, the Third Complainant commenced using name “Longines” by operating its first factory. The Third Complainant began using the designation “Longines” in advertisements as early as 1881. It is the owner of numerous LONGINES trademark

registrations worldwide, including LONGINES trademark registered in United Arab Emirates on September 19, 1993, under the registration number 2099 for goods in class 9 of IC. The Third Complainant operates the domain names <longines.com> and <longineswatches.com> to promote its brand and products.

In this Decision, the First Complainant, the Second Complainant, and the Third Complainant will be referred to as “the Complainant”.

The disputed domain name <blancpain.ae> was registered on December 6, 2024, <glashuette-original.ae> was registered on April 25, 2025, and <longines.ae> was registered on November 20, 2024. On November 20, 2024, and April 25, 2025, the Respondent has sent unsolicited emails to numerous Complainant’s

employees offering for sale the disputed domain names <glashuette-original.ae> and <longines.ae>. The disputed domain names do not resolve to an active or content-bearing website, but redirect to a sales website displaying the message: “This domain is registered but may still be available.”

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

i) The First, the Second and the Third Complainant are sister companies, and they are subsidiaries of The Swatch Group Ltd which is publicly traded on various stock exchange, and is the holding company of numerous worldwide famous brands (Omega, Harry Winston, Breguet, Tissot, Radom Hamilton, and

Swatch). The Swatch Group Ltd is one of the world’s largest watch companies and employs about 36,000 people in 50 countries.

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Due to the Complainant’s extensive use of its BLANCPAIN, GLASHÜTTE ORIGINAL, and LONGINES trademarks, said trademarks have become famous.

ii) the disputed domain names are confusingly similar to the Complainant’s trademarks. The disputed
domain names solely consist of the Complainant’s trademarks, whereby the disputed domain name

<glashuette-original.ae> includes a hyphen which is insufficient to dispel a f inding of confusing similarity.

iii) the Respondent has no rights or legitimate interests in respect of the disputed domain names. There are granted a license or authorized the Respondent to use its trademarks or apply for registration of the disputed domain names. It is not possible to conceive any legitimate usage of such specif ic and confusingly similar domain names that are exact matches to the Complainant’s worldwide renowned trademarks and trade names other than an illegal usage. The Respondent is not making any noncommercial or fair use of the disputed domain names.

no signs that the Respondent has been commonly known by the disputed domain names, and the

iv) the disputed domain names have been registered and used in bad faith. The Respondent is not making any active use of the disputed domain names. It has merely linked the disputed domain names to websites where the respective domain names are offered for sale. The Respondent has approached the Complainant with an of fer for sale of the disputed domain names including the sending of unsolicited emails personally addressed simultaneously to numerous Complainant’s employees. By registering the disputed domain names, the Respondent is depriving the Complainant f rom the chance to ref lect their trademarks in .ae domain name space. The Respondent has registered the disputed domain names long af ter the

Complainant has acquired trademark registrations worldwide, including in the United Arab Emirates.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Having in mind similarities between the Policy and Rules on the one side, and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and associated rules on the other side, the Panel considers some UDRP precedents as well as the applicable sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), relevant to the present proceeding and will refer to them where appropriate.

6.1. Procedural Issue

A. Consolidation of Multiple Complainants

The Complaint was filed by three Complainants involving three disputed domain names against the same
Respondent. The Complainants have submitted a request to have their complaints consolidated.

Under the Policy, affiliated companies have standing to file a complaint. In assessing whether a complaint f iled by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally ef f icient to permit the consolidation. WIPO Overview 3.0., Section 4.11.1.

In this case, the Complainants are related corporate entities - sister companies, and subsidiaries of The Swatch Group Ltd, one of the world’s leading designer, manufacturer, seller, and retailer of wristwatches. Each of three Complainants is the registered owner of the trademark on which this Complaint is based. Considering that all the Complainants are subsidiaries of The Swatch Group Ltd., this Panel believes that

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they have a common legal interest sufficient to justify consolidation. The Complainants have a common grievance of factually almost identical abusive domain name registration and use against the Respondent. In this Panel’s view, all the Complainants are the target of common conduct by the Respondent, and have common grievances regarding the use of their respective trademarks in the disputed domain names by the Respondent.

This Panel f inds that the First, the Second and the Third Complainant, jointly comprising the Complainant, have a specific common grievance, and it is equitable and procedurally ef f icient to allow consolidation in circumstances of this case. The Panel is not aware of any circumstances that would create prejudice to the Respondent by allowing the Complaint f iled by multiple Complainants to proceed, nor the Respondent objected to the request for consolidation. Therefore, the Panel considers that it is fair and equitable under the circumstances of the case to permit the consolidation, and to allow the Complainants to proceed jointly with their Complaint.

6.2. Substantive Issues

In accordance with paragraph 6(a) of the Policy, the Complainant must prove that each of the three following elements is satisf ied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant

has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview
3.0, section 1.2.1.

The disputed domain name <blancpain.ae> incorporates the Complainant’s BLANCPAIN trademark in its entirety. Accordingly, the disputed domain name <blancpain.ae> is identical to the trademark for the purpose of the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The disputed domain name <longines.ae> contains LONGINES trademarks without any modif ication or alteration. Therefore, the disputed domain name <longines.ae> is identical to the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The disputed domain name <glashuette-original.ae> consists of the Complainant’s GLASHÜTTE ORIGINAL trademark, where character “Ü” is replaced with characters “ue”, and hyphen is added between terms “glashütte” and “original”. Character “Ü”, umlaut, a distinctive feature of German orthography can be written as “ue”. The addition of a hyphen does not prevent the confusing similarity. This minor change does not distinguish the disputed domain name <glashuette-original.ae> from the trademark GLASHÜTTE ORIGINAL, and is in fact considered to constitute typo-squatting. WIPO Overview 3.0, section 1.9. Accordingly, the disputed domain name <glashuette-original.ae> is confusingly similar to the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The addition of the country code Top-Level Domain (“ccTLD”) “.ae” in the disputed domain names is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy. WIPO Overview 3.0, section 1.11.1.

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The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 6(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain names.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied with the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Respondent is not authorized to use the Complainant’s BLANCPAIN, LONGINES, and GLASHÜTTE ORIGINAL trademarks, and there is no indication that the Respondent is commonly known by the disputed domain names. There is no apparent relation, from the record, between the Respondent and the Complaint, nor does it arise that the Complainant granted a license or authorized the Respondent to use its

BLANCPAIN, LONGINES, and GLASHÜTTE ORIGINAL trademarks, or to apply for registration any domain name incorporating the same trademarks. There is no evidence that the Respondent has been using the disputed domain names in connection with bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain names, but the disputed domain names redirect to websites where they are being of fered for sale.

The facts and circumstances of the case do not support a f inding of rights or legitimate interests by the

Respondent, and the Panel f inds the second element of the Policy has been established.

C. Registered or is Being Used in Bad Faith

The Panel notes that, for the purposes of paragraph 6(a)(iii) of the Policy, paragraph 6(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith.

Paragraph 6(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered or used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the Respondent registered the disputed domain names years af ter the Complainant had obtained trademark protection for BLANCPAIN, LONGINES, and GLASHÜTTE ORIGINAL trademarks and established substantial goodwill and reputation in these trademarks. The disputed domain names redirect to websites displaying the message: “This domain is registered but may still be available”. On two occasions the Respondent has sent email messages to the Complainant’s employees of fering them to purchase the disputed domain names <glashuette-original.ae> and <longines.ae>, stating that these are the ccTLD for the United Arab Emirates, the most popular Internet extension in use in that nation and that may aid the Complainant to purchase the disputed domain names to redirect them to “ and “

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The Panel f inds the Complainant’s BLANCPAIN, LONGINES, and GLASHÜTTE ORIGINAL trademarks to be distinctive and well-known. The Complainant’s trademarks have no apparent meaning or signif icance beyond their association with the Complainant. The disputed domain names are identical to the

Complainant’s BLANCPAIN and LONGINES trademarks, and confusingly similar to the Complainant’s GLASHÜTTE ORIGINAL trademark. Having in mind the circumstances and evidence presented, the Panel concludes that the Respondent registered the disputed domain names targeting the Complainant and its well known trademarks. Incorporation of a well-known trademark in a domain name having no plausible
explanation for doing so is in itself an indication of bad faith. WIPO Overview 3.0, section 3.1.4.

In this Panel’s view, by registering the disputed domain names that contain the Complainant’s trademarks, the Respondent is attempting to take advantage of the Complainant’s reputation, and famous trademarks, and hence the Panel concludes that the disputed domain names have been registered and are being used in bad faith.

Moreover, the Complainant operates the domain names <blancpain.com>, <longines.com>, and
<glashuette-original.com> that serve as the official websites of the Complainant, and that are identical to the
disputed domain names.

Taken together, these facts support a finding that the Respondent both registered and is using the disputed domains name in bad faith.

The Panel f inds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <blancpain.ae>, <glashuette-original.ae>, <longines.ae> be transferred to the Complainant.

/Mladen Vukmir/
Mladen Vukmir
Panelist
Date: September 22, 2025

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