Thu 29. Aug 2024, 18:36
Joining forces for success: Even his almost childlike naivety did not protect the owner of moon-swatch.com from losing a UDRP legal dispute over the domain. But the two famous complainants have not exactly covered themselves in glory either.
The complainants' bank was prominently represented in the dispute over moon-swatch.com before the WIPO Court of Arbitration. Both SWATCH AG and OMEGA SA, which both belong to The Swatch Group Ltd. based in Switzerland, objected to the registration and use of this domain. MoonSwatch’ is a collection of eleven wristwatches named after the planets of the solar system. It is based on a design partnership between the street style watch brand Swatch and the luxury watch manufacturer Omega, which developed the Speedmaster Moonwatch, an iconic timepiece worn by Neil Armstrong and Buzz Aldrin on the surface of the moon in 1969. While OMEGA SA was able to invoke trademark rights to the word mark ‘MOONWATCH’, SWATCH AG had secured rights to the word mark ‘MOONSWATCH’, the latter with a registration date of 23 August 2023. The complainants were opposed by the Moroccan Soulaimane El Maimouni, who had registered the disputed domain moon-swatch.com on 2 July 2024. He used it to redirect to a typical parking website and offer the domain for sale there. WIPO appointed Stephanie G. Hartung, a lawyer from Frankfurt/Main, as sole arbitrator to deal with the transfer request of the two complainants.
The first element of the UDRP, according to which the domain moon-swatch.com must be identical or confusingly similar to the disputed trade mark, was initially unproblematic. Here, Hartung was able to affirm both, as the ‘MOONSWATCH’ trade mark of SWATCH AG is fully reproduced in the domain; in the case of the ‘MOONWATCH’ trade mark, only the letter ‘s’ was added to the domain, so that the domain is at least deceptively similar to the trade mark. With regard to the second element, the lack of right or legitimate interest of the opposing party in the domain, Hartung affirmed prima facie evidence in favour of the complainants. There were no indications that the respondent was generally known under the disputed domain; likewise, it could not be assumed that he was associated with the complainants or their company. Finally, the third step was to examine whether the disputed domain was registered and used in bad faith. Here, the respondent displayed a childlike lack of understanding for the regulations of the UDRP. He not only admitted that he had acquired the domain for resale via a trading platform; he even offered the complainants to acquire the domain by way of amicable negotiations. It was undisputed that the respondent had initially called for a sales price of US$ 28,193; after the UDRP proceedings were initiated, he then increased his demand to US$ 99,888. These circumstances left the arbitral tribunal in no doubt that the respondent was fully aware of the complainants' trade marks and was attempting to enrich himself by selling directly to the complainants. Thus, all three elements of the UDRP were fulfilled and the transfer decision was the logical consequence.
As predictable as the result was, the legal dispute was avoidable. According to Wikipedia, the MoonSwatch was launched on 26 March 2022 and was in high demand worldwide from the outset, not least due to its limited availability. Nevertheless, it took well over a year for the word mark ‘MOONSWATCH’ to be registered. And even when the trade mark was registered, the respondent was still able to register the disputed domain in July 2024 without any problems. And not under a supposedly exotic top-level domain, but under .com and in an obvious character string. Even if the Swatch Group can be credited with the fact that at least the domain moonswatch.com had already been registered on 30 June 2022 - with prudent domain management, the hyphen variant should also have been registered. This made it possible for the respondent to misuse the domain, at least temporarily. The fact that he did not do this, but merely speculated on the sales price, was probably due solely to his naivety.
The UDRP decision on the domain moon-swatch.com can be found at:
https://www.wipo.int/amc/en/domains/dec ... 4-2747.pdf