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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SWX Swiss Exchange v. Yan Yang

Case No. D2008-0401

 

1. The Parties

The Complainant is SWX Swiss Exchange, Zurich, of Switzerland, represented by Meisser & Partners, Switzerland.

The Respondent is Yan Yang, Zurich, of Switzerland.

 

2. The Domain Name and Registrar

The disputed domain name <swxtrading.com> is registered with Xin Net Technology Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2008. On March 17, 2008, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the domain name at issue. On March 18, 2008, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 25, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2008.

The Center appointed Richard Tan as the sole panelist in this matter on April 28, 2008. 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 is the operator of Switzerland’s national stock exchange. It was founded in 1993 as “Schweizer Borse/Bourse Suisse/Borsa Svizzera/Swiss Exchange” but its history and roots stretch back for more that 150 years and its predecessor was the Vereinigung Schweizerischer Borsen (VSB) and the floor-based stock exchanges of Zurich, Geneva and Basel.

It introduced electronic trading in 1995/1996. The business or trading name “SWX Swiss Exchange” was introduced in 1999. In 1997, its turnover was in excess of CHF 1000 billion and in 2000, its turnover was CHF 1,324,512 million.

The Complainant is an integral part of the Swiss financial marketplace. It organizes, operates and regulates key aspects of Switzerland’s capital market place. Its commercial activities include cash market operations, information products, the development and operation of fully electronic trading platforms and the admission of securities to trading on the stock exchange.

The Complainant is the registered owner of the trade mark IR No. 718 878 for SWX since 1999 in classes 9, 16, 35, 36, 38, 41 and 42 and is protected for services, including “the publishing of statistics and index figures relating to the stock exchange rate, commercial securities, interest rates, prices, exchange rates and other economic data”, “financial operations” and “advice on banking and financial matters”. The Complainant claims that its mark is also protected in various countries around the world including China.

It is also the registered owner of the trade mark IR No 711 368 for the mark and device SWX SWISS EXCHANGE. This logo or device is used on all the Complainant’s brochures and manuals regarding financial services.

The Complainant also owns and operates the website “www.swx.com”.

The Respondent’s disputed domain name <swxtrading.com> was registered on or around January 29, 2007 and is used for a website which offers financial services and products by the Respondent, who appears to be based in Switzerland although the administrative and technical contacts have contact details in China.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The disputed domain name <swxtrading.com> is confusingly similar to the Complainant’s SWX famous registered trade mark, in which the Complainant has rights and which enjoys protection in several countries around the world, including Switzerland and China. It is also confusingly similar to the Complainant’s registered trade mark SWX SWISS EXCHANGE which also enjoys protection in many countries. The Complainant has also used the domain name for its website which incorporates the mark SWX. The Complainant contends that the name of the business under which it has been operating has been used for many years and it is well known by that name around the world.

(b) The Complainant contends that it has not authorized the Respondent to use the disputed domain name. It has no commercial relationship or any other association with the Respondent. The Respondent has not demonstrated any rights or legitimate interests in the disputed domain name. The name or mark SWX is not a common name.

The Complainant contends that the Respondent has provided an address at Selnaustrasse 30, 8021 Zurich, Switzerland, but this is not possible as the address is in fact the address of the Complainant (except that the postal code of the latter is 8001). The Complainant contends that the Respondent’s aforesaid address (with the postal code 8021) does not exist in Zurich.

The Complainant also contends that the Respondent’s website under the section “About Us” describes the Respondent as “SWX Capital Markets Ltd” and “set up in Switzerland”. However, according to the Complainant, it has made searches at the Swiss Commercial Registry and no such company exists in Switzerland. The Respondent could not therefore be regarded as having been commonly known by the disputed domain name and the use of the name or mark SWX is not bona fide.

The Complainant further contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that the Respondent must have been aware of the Complainant’s rights in the SWX trade mark but decided to use the Complainant’s famous mark as part of its domain name to attract customers to its site to offer and sell its own services.

The Complainant therefore contends that there can be no legitimate reason for the Respondent to use the Complainant’s business name, trade mark and domain name as part of the disputed domain name and the Respondent lacks any rights or legitimate interests in the disputed domain name.

(c) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant submits that the Respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name.

The Complainant further submits that the Respondent has registered the disputed domain name for the purpose of disrupting the business of a competitor. It has on its website offered similar services and products as the Complainant’s. Further, the sole purpose must have been to divert users to the Respondent’s website and to exploit the Complainant’s famous trade mark and goodwill and reputation. The registration and use of the disputed domain name would likely cause confusion and deceive potential customers into mistakenly believing that the Respondent’s website and associated services and products were being offered, authorized, sponsored or otherwise connected, associated or affiliated with the Complainant. The Respondent’s website is also very similar in appearance to the Complainant’s website and this was designed to create an ever greater likelihood of confusion and to attract consumers. The Respondent’s use and reference in its website to non-existent companies or companies with incorrect or false addresses is also evidence of bad faith. The Complainant therefore contends that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

 

6. Discussion and Findings

A. Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition: see e.g. General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334. Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 may result in delay, and considerable and unnecessary expenses of translating documents.

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.

The Complainant has submitted in its Complaint that the language of the proceedings be English but submits that the Respondent could if it wished, apply to submit its Response in Chinese. The Complainant contends that conducting the proceedings in English would not be disadvantageous to the Respondent as the Respondent has demonstrated an ability to understand and communicate in English. A large part of the Respondent’s website is in English. The Panel is prepared to infer that the Respondent is able to understand and communicate in English based on the substantial content of its website in English. The Panel also notes that the disputed domain name is also in English.

The Panel further notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Chinese, the language of the Registration Agreement. This was despite the Center notifying the Respondent on March 27, 2008 in Chinese and English that if the Respondent was experiencing any language difficulties, the Respondent could indicate the same to the Center and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had ample opportunity to raise objections or make known its preference, but did not.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Chinese.

Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. The Merits

The Panel now turns to consider the Complainant’s case on its merits.

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:

(i) that the Respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

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

(iii) that the Respondent’s domain name has been registered and is being used in bad faith.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

C. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.

Having regard to the evidence adduced by the Complainant in relation to its registered trade marks, SWX and SWX SWISS EXCHANGE, in many countries, the extensive use of these marks in the Complainant’s business and the domain name secured and used by the Complainant in its website which incorporates the mark SWX, the Panel finds that the Complainant has established rights in its SWX and SWX SWISS EXCHANGE marks.

The disputed domain name is not identical to the Complainant’s trade mark SWX in that it contains the additional word “trading”. The addition of the generic or descriptive term “trading” does not however in the Panel’s view distinguish the domain name from the widely known trade mark SWX, bearing in mind that the Complainant’s mark is not a common word and is distinctive, as the Complainant contends. It is well-established under the Policy that a domain name composed of a trade mark coupled with a generic or descriptive term can still be regarded as confusingly similar to the trade mark, see for example, Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans, WIPO Case No. D2002-0367, where the panel held that the addition of the generic term, “automotive” did not distinguish a respondent’s domain name <experianautomotive.com> from the complainant’s mark, as the domain name contained the complainant’s EXPERIAN mark in its entirety.

Although the disputed domain name contains the addition of the “.com” gTLD, it is now clearly established that this is not sufficient to escape a finding of substantial or confusing similarity (see inter alia, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; CITGO Petroleum Corporation v. Horace A. “Woofer” Smith, WIPO Case No. D2003-0054; EasyGroup IP Licensing Limited v. Amjad Kausar, WIPO Case No. D2003-0012; Microsoft Corporation and MSNBC Cable LLC v. Seventh Summit Ventures, WIPO Case No. D2002-0567; Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015).

This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s SWX trade mark, in which the Complainant has rights.

D. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a website which offers financial services and products by the Respondent, which are broadly similar to those financial services related to the business of the Complainant.

The Complainant asserts that the Respondent has not been authorised by the Complainant to use the mark SWX in the disputed domain name. The Respondent has no known association with the Complainant, which is the operator of Switzerland’s national stock exchange.

The Panel accepts that the name or mark SWX is not a common name. The Respondent has not filed any Response that shows how it came to choose that name or mark SWX as part of the disputed domain name or that establishes that it has any rights or legitimate interest in the disputed domain name.

The Panel also notes that the Respondent has referred in the website to the owner or operator of the website as “SWX Capital Markets Ltd” and that it is “set up in Switzerland”. The Panel accepts the evidence put forward by the Complainant, in the absence of any contrary allegation by the Respondent, that no such company exists in Switzerland.

The Panel further notes that the Complainant has pointed out that the Respondent has given his address as “Selnaustrasse 30, 8021 Zurich, Switzerland”. The Complainant contends that this address is however the address of the Complainant (except that the Complainant’s postal code is 8001 and not 8021.) The Complainant also contends that the address in Zurich with the postal code 8021 does not exist. The Complainant has, in support of this allegation, referred (at paragraph 28 of its Complaint) to a printout of a website found at Exhibit 13 of its Complaint. The Panel however notes that the printout of the website at Exhibit 13 which is the Complainant’s own website “www.swx.com”, refers to the postal code of the Complainant as 8021. While there is some inconsistency in the Complainant’s submissions regarding the postal code, the Panel accepts, in the absence of any contrary submission by the Respondent, that the Respondent’s declared address is in all likelihood a false address.

The Complainant further contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. It was aware of the Complainant’s rights in the SWX trade mark but decided to use the Complainant’s famous mark as part of its domain name in order to attract customers to its site to offer and sell its own services.

In the absence of a Response, the Panel accepts the above arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

E. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the disputed domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant submits that the Respondent registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. With regard to this contention, the Panel finds that the Complainant has not succeeded in adducing evidence that the Respondent has engaged in a pattern of such conduct, which is a requisite element of paragraph 4(b)(ii) of the Policy.

The Complainant then submits that the Respondent has not made any use, or demonstrable preparations to use, the domain name in connection with the bona fide offering of goods or services, is not commonly known by the domain name, has no license or other authorisation to use the SWX trade mark and is not making a legitimate non-commercial or fair use of the name. The Panel finds that the Respondent must have registered the disputed domain name with full knowledge of the Complainant and its trade mark, business and reputation. The Respondent’s website offers financial services related to electronic trading which is not dissimilar to parts of the business carried out or offered by the Complainant. The Respondent’s website contained features and elements that could mislead members of the public into thinking that the website was operated or connected with the Complainant. The references to certain companies in the Respondent’s website and the use of the misleading information (as discussed above) clearly suggest that the Respondent was deliberately intending to attract Internet users to its website so that they could use the Respondent’s services in the mistaken belief that the services might be related to the Complainant or in some way supported or endorsed by the Complainant. Such conduct would clearly constitute intentionally attracting, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark.

The Respondent has not submitted any evidence to rebut the Complainant’s claims. In the absence of such evidence and in the absence of any conceivable legitimate reason for registering the disputed domain name, and given particularly the distinctive nature of the trade mark, SWX, the Panel accepts the Complainant’s contentions that the domain name was registered with knowledge of the Complainant’s trade marks and in bad faith.

Such conduct has been consistently found to constitute bad faith under the Policy: See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408 (finding the Respondent registered the disputed domain name in bad faith because it had notice of the Complainant’s rights); Yahoo! Inc. v. Kelvin Pham, NAF Case No. 109699.

This Panel accordingly has no hesitation in finding that the Respondent has registered and used the domain name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

 

7. Decision

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

 

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Richard Tan
Sole Panelist

Dated: May 12, 2008