Swatch AG v Spaic Kristina, Kristina Spaic

WIPO Case No. D2025-1415

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Swatch AG v. Spaic Kristina, Kristina Spaic

Case No. D2025-1415

1. The Parties

The Complainant is Swatch AG, Switzerland, internally represented.

The Respondent is Spaic Kristina, Kristina Spaic, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <swatch-philippines.com> is registered with CNOBIN Information Technology

Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2025. On
April 7, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 9, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (individual/entity of unknown nature; owner of Disputed
Domains) and contact information in the Complaint. The Center sent an email communication to the
Complainant on April 10, 2025, providing the registrant and contact information disclosed by the Registrar,
and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended

Complaint on April 15, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2025.

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The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on May 15, 2025. The Panel finds 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 Complainant SWATCH AG is a wholly-owned subsidiary of The Swatch Group Ltd, which is one of the largest watch companies in the world that employs about 31,000 people in 50 countries and encompasses numerous other world-renowned watch maker brands such as OMEGA, BREGUET, HARRY WINSTON, HAMILTON, TISSOT, and RADO.

At least as early as 1983, the Complainant commenced the use of the SWATCH trademarks (the “SWATCH
Marks”) in connection with what has become one of the most famous industry leaders in wristwatches.
Additionally, the Complainant also has produced or produces apparel, sunglasses, and other items.

The Complainant owns many trademark registrations for the SWATCH Marks, which are protected through registration and enforcement.

The Complainant’s trademark registrations for the SWATCH Marks include the following:

- SWATCH Logo for International Class (IC) 014, watches and parts thereof, registered in the US on
August 27, 1985 (filed November 2, 1984) under no. 1356512;

- SWATCH for lC. 14, Quartz wristwatches and parts thereof, registered in China on September
15,1985 (filed April 6, 1983) under no. 232954;

- SWATCH for IC 14, Horological instruments, Parts and accessories of horological instruments,
registered in Japan on October 31, 1989 under no. 2184860

According to the WhoIs records, the Respondent in this administrative proceeding is Spaic Kristina, Kristina

Spaic from the US.

The disputed domain name was registered on August 30, 2024, and resolves to a website imitating the sale the Complainant’s branded SWATCH products at discounted prices.

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:

-	The disputed domain name encompasses the entirety of the Complainant’s SWATCH Marks combined with the geographical term “philippines”, connected with a hyphen. The addition of such geographical terms and or hyphen is insufficient to dispel the confusing similarity under the first element and thus, the Complainant’s trademarks are readily recognizable within the disputed domain name and the disputed domain name is, on its face, essentially identical to the Complainant’s SWATCH Marks, thus, confusingly similar under the Policy.
-	There is no indication that the Respondent has been commonly known by the disputed domain name, and the Respondent is not in any way related to the Complainant or its business activities nor has the Complainant granted a license or authorized the Respondent to use its trademarks or apply for
registration of the disputed domain name.

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-	The Respondent is using the disputed domain name in connection with a website that mimics the Complainant’s website in order to impersonate the Complainant and to lure consumers into buying counterfeited products or paying for products that are never delivered. Such usage of a domain name can never constitute a fair use under the Policy.
-	The Respondent has registered the disputed domain name and is using the disputed domain name in bad faith.
-	By linking the disputed domain name to a website that is a copy of the Complainant’s official website, which displays the content of the Complainant’s official website, including the Complainant’s copyrighted material and logos without any authorization from the Complainant whatsoever, the Respondent has infringed on the company rights, trademark rights, and copyrights of the Complainant.
-	The Respondent is creating confusion and is misleading Internet users by prominently placing the Complainant’s logos in the header of the website, thus, impersonating the Complainant and furthermore infringing on the Complainant’s company rights, trademark rights, and copyrights.
-	In light of various successful collaborations of the Complainant with sister companies, to launch unique watch collections, including the “Moonswatch” collection (also known as “Omega X Swatch”) and the “Scuba Fifty Fathoms” collection (also known as “Blancpain X Swatch”) the Respondent has leapt at the opportunity to sell said watches for discounted prices on its website. Accordingly, on the website associated with the disputed domain name, the Respondent offers the Complainant’s said watch
collections for sale in ostensibly new condition and unlimited quantities for an unrealistically low consideration (e.g., watches being sold on for a consideration of PHP 5655 [approximately USD 98] instead of PHP 12330 [approximately USD 214]).
-	The Respondent’s sole aim appears to be to impersonate the Complainant in order to attract unsuspecting Internet users to its websites and to then entice these Internet users into paying for products that are either counterfeit or into paying for products that are never delivered following payment. Accordingly, the Complainant has received numerous reports from consumers that have fallen victim to the Respondent’s fraudulent websites, forcing the Complainant (and its sister companies) to file numerous UDRP complaints against similar domains names where the Respondent’s bad faith domain name registration and use has been confirmed as defrauding consumers constitutes bad-faith registration and use of a domain name.

B. Respondent

Although procedurally summoned, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings
A. Identical or Confusingly Similar

It is well accepted that the first 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has definitely shown rights in respect of a trademark or service mark for the purposes of the Policy, as it holds numerous trademarks registrations all over the world for SWATCH trademarks. WIPO Overview 3.0, section 1.2.1.

The disputed domain name encompasses the entirety of the Complainant’s SWATCH trademarks combined with the geographical term “philippines”. Where the relevant trademark is recognizable within the disputed domain name, which is the case in these proceedings, the addition of other terms (whether descriptive,

geographical […]) would not prevent a finding of confusing similarity under the first element. WIPO Overview
3.0, section 1.8. The addition of such geographical terms and of a hyphen do not prevent the finding of
confusing similarity under the first element, as the Complainants’ trademarks are readily recognizable within
the disputed domain name, thus, confusingly similar under the Policy.

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The entirety of the SWATCH Marks are reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Consequently, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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 often 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 satisfied 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.

Essentially, the Panel notes that there is no indication that the Respondent has been commonly known by the disputed domain name, and the Respondent is not in any way related to the Complainant or its business activities nor has the Complainant granted a license or authorized the Respondent to use its trademarks or apply for registration of the disputed domain name.

Further, the Panel notes that the Respondent is using the disputed domain name to resolve to a website that is a copy of the Complainant’s website in order to impersonate the Complainant and to lure consumers into buying counterfeited products or paying for products that are never delivered. Such use of a domain name can never constitute a fair use under the Policy.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, sale of counterfeit goods, or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Consequently, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(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 and use of a domain name in bad faith.

In this case, the Panel notes that the Respondent appears to impersonate/pass off as the Complainant and infringes on the Complainant’s trademark rights and copyrights, by linking the disputed domain name to a website that is a copy of the Complainant’s official website, which displays the Complainant’s official

website’s content, including the Complainant’s copyrighted material and logos without any authorization from
the Complainant whatsoever.

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The Respondent is creating confusion and is misleading Internet users by prominently placing the Complainant’s logos in the header of the website at the disputed domain name, impersonating the Complainant and furthermore severely and systematically infringing on the Complainant’s trademark rights

and copyrights, especially by offering for sale the Complainant’s branded products at discounted prices, including its limited collection watches launched as part of collaborations between the Complainant with sister companies, such as the “Moonswatch” collection (also known as “Omega X Swatch”) and the “Scuba Fifty Fathoms” collection (also known as “Blancpain X Swatch”).

The Panel finds that by registering and using the disputed domain name to impersonate the Complainant, the Respondent intended to attract unsuspecting Internet users to its website and to then entice these Internet users into paying for products that are either counterfeit or into paying for products that are never delivered following payment. Following such bad faith use of the disputed domain name, the Complainant has received numerous reports from consumers that have fallen victim to the Respondent’s numerous fraudulent websites including that of the current proceeding, forcing the Complainant (and its sister companies) to protect its trademarks against the abuse of the Respondent.

Panels have held that the use of a domain name for illegitimate activity, here, claimed impersonation/passing off, sale of counterfeited goods, or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed

domain name constitutes bad faith under the Policy.

Consequently, the Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <swatch-philippines.com> be transferred to the Complainant.

/Dr. Beatrice Onica Jarka/
Dr. Beatrice Onica Jarka
Sole Panelist
Date: May 29, 2025