WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Swatch AG v. Boomin Jeong Case No. D2018-2627 1. The Parties

The Complainant is Swatch AG of Biel, Switzerland, represented by Steven M. Levy, United States of America (“United States”).

The Respondent is Boomin Jeong of Busan, Republic of Korea, self-represented. 2. The Domain Name and Registrar

The disputed domain name is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”). 3. Procedural History

The Complaint and the Amended Complaint were filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2018. On November 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Complainant submitted an additional annex by email on November 21, 2018. On November 27, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On November 28, 2018, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On the same day, the Respondent requested that Korean be the language of the proceeding. On November 29, 2018, the Complainant requested that English be the language of the proceeding.

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 in English and Korean of the Complaint, and the proceedings commenced on December 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2018. The Response was filed with the Center on December 21, 2018.

The Center appointed Andrew J. Park as the sole panelist in this matter on January 11, 2019. 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 company incorporated in 1984 and based in Bern, Switzerland. It is a subsidiary of The Swatch Group AG and manufactures and distributes watches to markets worldwide serving customers through its retail and online stores. The Swatch Group is an international group active in the design, manufacture, and sale of finished watches, jewelry, watch movements, and components. The Complainant owns the distinctive and well-known SWATCH and SWATCH PAY trademarks and has been using these trademarks in connection with what has become one of the most famous industry leaders in wristwatches. The Complainant has hundreds of dedicated, branded retail stores throughout North America, Europe, the Middle East, Africa, Central and South America, Asia, and Australia, as well as a growing number of online shops available at “”. The Swatch Group also announced the July 27, 2017 launch of its SWATCH PAY service.

The Complainant owns many trademark registrations for SWATCH and SWATCH PAY.

Mark

Goods and Services

Registration No.

Registration Date

SWATCH PAY

Classes 9, 14, 35, and 36

1405780 (International)

February 9, 2018

SWATCH

IC 014. US 027. G&S: WATCHES AND PARTS THEREOF.

1356512
(USA)

August 27, 1985
(filed November 2, 1984)

SWATCH

IC 042. US 101. G&S: retail store services, namely, retail shops featuring, sunglasses and electronics.
FIRST USE: 19931126. FIRST USE IN COMMERCE: 19931126

1849657
(USA)

August 9, 1994
(filed February 21, 1992)

SWATCH

C1. 14 Quartz wristwatches and parts thereof

232954 (China)

September 15, 1985

SWATCH

IC 14: Horological instruments,
Parts and accessories of horological instruments

2184860
(Japan)

October 31, 1989

SWATCH

IC 14 Precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery), jewellery, precious stones, clocks and watches and other chronometric instruments

506123
(International)

September 9, 1986

SWATCH

IC 14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewellery, precious stones, horological and chronometric instruments.

226019
(EU)

October 2, 1998
(filed April 15, 1996)

SWATCH

IC 14 Precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery, forks and spoons), jewellery, precious stones, horological and chronometric instruments.

226316
(EU)

November 12, 1998
(filed April 15, 1996)

The disputed domain name was registered by the Respondent on April 22, 2018, and has not resolved to an active website. 5. Parties’ Contentions A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name is identical and confusingly similar to the Complainant’s trademarks in which the Complainant has rights. The Respondent’s disputed domain name is identical, on its face, to the Complainant’s registered SWATCH PAY mark and nearly so with respect to its SWATCH mark. The mere addition of generic words to a well-known trademark does not avoid a finding of confusing similarity and also the addition of the “.com”, generic Top-Level Domain (“gTLD”) does nothing but alleviate confusion between the SWATCH or SWATCH PAY marks and the disputed domain name .

2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant insists that the Respondent’s actions are not a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The disputed domain name does not resolve to any substantive website content and only displays the message “Services for this domain have been discontinued,” thus indicating that it is being held passively by the Respondent with no real intention or ability to make a legitimate use of the disputed domain name. Also, the Respondent is not commonly known by the disputed domain name or either of the Complainant’s respective marks, nor does the Respondent operate a business or other organization under either of the marks and does not own any trademark or service mark rights in the terms that make up the disputed domain name.

3) the disputed domain name was registered and is being used in bad faith. The Respondent intentionally targeted the Complainant’s SWATCH and SWATCH PAY marks without consent from the Complainant. The Respondent was on actual notice of the Complainant’s rights in its globally famous marks as a result of the Complainant’s extensive use of the marks which long predate the date on which the Respondent registered the disputed domain name, and this means that the Respondent intentionally used the disputed domain name with the knowledge of, and in violation of the Complainant’s trademark rights.

The Complainant also argues that the Respondent has no active website affiliated with the disputed domain name and has merely passively held the disputed domain name. When the Complainant’s representative contacted the Respondent concerning the disputed domain