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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

3 Suisses International SA v. Reddot, Ltd

Case No. D2008-0595

 

1. The Parties

1.1 The Complainant is 3 Suisses International SA, Croix, France, represented by SELARL Espace Juridique Avocats, France.

1.2 The Respondent is Reddot, Ltd, St. Petersburg, Russian Federation, represented by Mikhail Smirnov, St. Petersburg, Russian Federation.

 

2. The Domain Name and Registrar

1.3 The disputed domain name <suisses.com> (the “Domain Name”) is registered with DomReg Ltd. d/b/a LIBRIS.com (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2008. The Complaint named “DesignBureau Ltd” of PO Box 100 in St Petersberg, Russia as Respondent. On April 17, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On April 23, 2008, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response. In that response the Registrar stated that the registrant of the Domain Name was Reddot Ltd, and provided Reddot’s contact details. The Registrar also confirmed that the language of the registration agreement was Russian. On May 5, 2008 the Center notified the contents of the Registrar’s response.

3.2 On May 7, 2005, the Complainant requested that English be the language of these proceedings and on May 9, 2005 the Center notified the Complainant that these proceedings would proceed in both English and Russian. On May 9, 2005, the Complainant submitted an amended Complaint naming Reddot, Ltd as the Respondent.

3.3 The amended Complaint failed to identify (in accordance with paragraph 3(b)(xi) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)), whether other legal proceedings were under way in relation to the Domain Name. However, the Complainant subsequently confirmed that there were no other legal proceedings ongoing by means of an email dated May 14, 2008.

3.4 The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 May 21, 2008. The notification was sent to the Respondent in both English and Russian. It stated that if the Respondent was “experiencing language difficulties with the Complaint” it should notify the Center of this fact by no later than May 28, 2008.

3.5 By means of an email dated May 22, 2008, the Respondent objected to the proceedings being in English. In an email dated May 26, 2005, the Center notified the parties as follows:

(i) It would accept the complaint as filed in English;

(ii) It would accept a Response in either English or Russian; and

(iii) It would appoint a Panel familiar with both English or Russian, if available.

3.6 In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2008. On June 2, 2008 the Center received an email sent from the email address provided for the Respondent by the registrar, i.e. info@namesev.com. The email was in both English and Russian. The English text of the email was as follows:

“Please be informed that in accordance with Registration Agreement our company insured the domain suisses.com against its loss resulted by activity of the third parties. Consequently, our company is an interested party in this dispute. Please be advised our decision is based on detailed analysis of domain name by expert commission, and on absence of barriers to its use. You are aware that in such situations insurance companies bear the financial burden of responsibility, and accordingly, interested in adequate solution of the dispute. Our experts have concluded that your complaint is unjust. Moreover, they came to the conclusion that you are well aware of it, also that your allegations are false and artificial. We have in mind the consequences of an unjust claim, and the complainant is well aware of this. Therefore, to avoid further unnecessary expenses that we are forced to imput to you, we offer you to withdraw this complaint immediately, within 24 hours.

Regards Denis Manilo”

3.7 When asked by the Center to clarify whether this was the Respondent’s final response, “Mr. Manilo” sent a further email to the Center in which he stated “We shall provide final Response before June 10, 2008”.

3.8 The Response was filed with the Center on June 10, 2008 as an attachment to an email from the info@nameserv.com address.

3.9 The Respondent sent a further submission to the Center (the “Respondent’s Additional Submission”) on June 11, 2008 again by means of an email using the info@nameserv.com address but this time signed “RedDot Ltd”. The following day the Complainant’s representative sent an email to the Center objecting to this filing on the basis that it had been filed a day out of date.

3.10 No panelist being readily available who spoke both Russian and English, the Center appointed Matthew S. Harris as the sole panelist in this matter on June 24, 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.

3.11 The Panel having considered the papers related to these proceedings and by means of a procedural order dated June 25, 2008 (the “Procedural Order”) put a number of queries to, and sought further clarification from, the Respondent as to the Respondent’s case. The Respondent was ordered to provide an additional submission to address these issues by no later than July 2, 2008. The Procedural Order also provided that the Complainant could respond to this additional submission by July 9, 2008 and extended the time by which a decision was to be issued in these proceedings until July 16, 2008.

3.12 The Respondent submitted a further submission pursuant to the Procedural Order on July 2, 2008 (the “Respondent’s Procedural Order Submission”). The Complainant submitted a further submission pursuant to the Procedural Order on July 7, 2008 (the “Complainant’s Procedural Order Submission”).

 

4. Factual Background

4.1 The Complainant is a company registered under the laws of France and is part of the 3 Suisses group of companies. The 3 Suisses group markets and sells by catalogue a wide range of goods including clothes, shoes, domestic appliances and furniture. Over a million of its catalogues are distributed each year in France but its activities extend beyond France.

4.2 The Complainant holds various trade marks that incorporate the 3 SUISSES name. They include Community Trade Mark No, 00 0372 698 for the text 3 SUISSES dated December 12, 1999 in classes 16, 25, 38 and 39.

4.3 The exact status and nature of the Respondent is commented upon in greater detail later on in this decision. It would, however, appear to be a company registered under the laws of the Russian Federation.

4.4 The Domain Name was registered on March 29, 2003. Until at least as late as April 15, 2008, the Domain Name was registered in the name of “DesignBureau Ltd. by proxy, agr. PR-gen-2003”.

4.5 On November 8, 2007, the Complainants’ legal manager sent a letter to “DesignBureau Ltd” informing it that the registration of the Domain Name constituted “infringement and cybersquatting” and demanding that the Domain Name be transferred to the Complainant.

4.6 By May 9, 2008, the WHOIS record for the Domain Name had changed to that of the Respondent.

4.7 Up until the date of the initial Complaint the Domain Name linked to a web page with the html <title> tag “suisses.com :: this domain is for sale”. The page itself had all the characteristics of a web page that had been generated by a domain parking service. In particular, the page prominently displayed the Domain Name and underneath it was placed the text “What you need, when you need it”. Beneath this were various links headed “Related Searches” or “Popular Categories”. The “Related Searches” included links with text such as “Gucci Handbags”, “Womens Clothing”, “3 Suisses France” and “Katalog”.

4.8 However, at some point after the Complaint was forwarded to the Respondent, the nature of the web site operating from the Domain Name changed. There appears to have been a brief period of non-use and then a new web site appeared. The new web site presented the image of a map of the word with Swiss flags planted in various countries. The home page of the web site now contained the following text:

“Fifth Switzerland

The Fifth Switzerland designates the set of Swiss nationals living abroad the national territory. The term fifth is a reference to the four official linguistic communities (German, French, Italian and Romansh) within the national territory.

The expatriates represent more than 600,000 people. Most of them live in countries belonging to the European Union. Their interests are defended by the Organization of the Swiss Abroad.”

4.9 By clinking on any of the Swiss Flags on this page, the Internet user would be taken to the web site of the Organisation of the Swiss Abroad.

 

5. Parties’ Contentions

A. Complaint

5.1 The Complainant contends that the Domain Name is confusingly similar to its 3 SUISSES trade mark. It claims that the omission of the number “3” from the Domain Name does not render the Domain Name dissimilar and refers in this respect to previous Panel decision in The Cyberbingo Corporation v. Global Gaming Entertainment N. V, WIPO Case No. D2006-0973 and Aйropostale West, Inc. v. Whois Protection, WIPO Case No. D2007-1271.

5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:

(i) The Respondent has never registered any trade mark that incorporates the text “3 Suisses” or “Suisses”.

(ii) The Respondent has no commercial relationship with the 3 Suisses group and the Complainant has never authorized the Respondent to use its trade marks.

(iii) The Domain Name was being used in April 2008¹ by its “last owner” to offer sponsored links in relation goods similar to the Complainant’s and to derive “click through revenue” from these links. The Complainant claims such use does not provide a right or legitimate interest under the Policy (citing among other cases MBI Inc. v. Moniker privacy Services/Nevis Domains LLC., WIPO Case No. D2006-0550).

5.3 On the question of bad faith the Complainant contends that the Domain Name is not being actively used but points to a number of decisions (including Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) that show that this is not necessary for a finding of bad faith. It further maintains that:

(i) “there is no reason to conceive that the Respondent did register the domain name without having the Complainant and its trade marks in mind”; and

(ii) bad faith is indicated by the fact that the previous owner of the Domain Name “did not accept [the Complainant’s registered letter of November 8, 2007] or reply” but instead transferred the Domain Name to the current Respondent.

B. Response and Respondent’s Additional Submission

5.4 The Respondent in essence appears to contend the following:

(i) That the Domain Name represents a common word “Suisses”, i.e. the plural of the “Suisse”, the French word for Switzerland.

(ii) That the Domain Name was registered without any knowledge on the part of the Respondent of the Complainant.

(iii) That the previous uses of the Domain Name (presumably a reference to its use in connection with sponsored links) are not important because this reflects not on the Respondent but on the previous owner.

(iv) That the Domain Name is neither identical nor similar to the Complainant’s trade marks. On the question of similarity, the Respondent contends that the word “3 Suisses” is somehow dependent upon and emulates the word “Suisses” and not vice versa. As a consequence whilst the Respondent accepts that “3 Suisses” may be similar to the word “Suisses”, it does not accept that that “Suisses” is similar to “3 Suisses”.

(v) That the Respondent has acquired the Domain Names together with a number of other domain names that incorporate references in some form or another to the Swiss or Switzerland. These include <clubsuisse.com>, <suisse-web.com>, <suisscontent.com> and <swissportal.com>.

(vi) The Domain Name together with the other Swiss related domain names is being used by the Respondent for the purposes of a “cultural project SUISSE”.

(vii) The activities of the Respondent are in the Russian Federation and since the Complainant has no trade mark rights in the Russian Federation it has no right to bring the current proceedings. Further, the Respondent maintains that the nature of the word “Suisses” is such that the Complainant could not obtain a trade mark in Russia in relation to this term.

(viii) The Respondent has made enquiries of the previous owner of the Domain Name to establish why it was being used for domain name parking purposes. It claims that is was “parked” to the domain name parking service provider “to enable e-mail” for the Domain Name and that the links were not under the previous owner of the Domain Name’s control.

(ix) The Domain Name could not have been sensibly registered for domain name parking purposes because “the income from the domain parking composed USD 9.39 for 3 months” and that in any event that income was “transferred to Slovo charities”. Also the Respondent claims that it is not possible to acquire a domain name of the type of the Domain Name for less than US $5,000 - $6,000.

(x) That the Complainant’s actions in this case amount to Reverse Domain Name Hijacking.

5.5 The Respondent also makes a number of other claims that it is harder to follow. There seems to be an allegation that some person connected with the “previous owner” of the Domain Name acted improperly in allowing the Domain Name to be used in connection with a domain name parking service. Also the Respondent seems to claim that the web parking page screen shots produced by the Complainant in support of its Complaint have in some way been “fabricated”. However, no evidence is brought before the Panel to substantiate any such allegations.

5.6 In the Respondent’s Additional Submission, the Respondent puts forward further argument as to the alleged generic nature of the Domain Name. Reference is made in this respect to the fact that there is a well known brand of fromage frais that is known as “les petit suisses”.

5.7 This document also gives a little more detail as to the Respondent’s alleged use of and plans for the Domain Name. In particular, it asserts that it had undertaken “preparations” to “use the domain name for providing cultural and business cooperation of private companies and individuals from Russia and Switzerland”.

C. Respondent’s Procedural Order Submission

5.8 Having considered the papers filed by the parties the Panel noted the following:

(i) It appeared that as at the time the Complaint was filed the Domain Name was registered in the name of DesignBureau Ltd and not Reddot Limited.

(ii) Very little explanation had been provided by the Respondent as to its alleged intended use of the Domain Name.

(iii) In its Response the Respondent stated that its contact details for the purposes of these proceedings were PO Box 169, ExpressPost St. Petersburg. Information that the Panel had discovered by a quick search on the Internet suggested that this was also the address used by a entity going by the name of BusinessService Ltd and BusinessService Ltd appeared to be the owner of in the region of 868 domain names.

5.9 Accordingly, the Panel required the Respondent to file a further submission to address these issues. In the Respondent’s Procedural Order Submission, it responded and claimed as follows:

(i) DesignBureau Ltd was the company from which the Respondent purchased the Domain Name, but the reason why this was not recorded in the WhoIs record at the time of the Complaint was that “DesignBureau Ltd failed to confirm to the [Registrar] its factual receipt of the payment remitted by Reddot Ltd”.

(ii) Evidence as to the Respondent’s project is said to be provided by a single page four paragraph document in Russian, which the Respondent claims is “an Order of the Chief Executive (namely, General Director) of Reddot Ltd as of April 15, 2002 whereas some guidelines for structuring of the Project are laid out and financial benchmarks determined”. It claimed to have further documentation but said that it could not disclose these because if it did so it would be in breach of its obligations to third parties under Russian law.

(iii) The Domain Name “can be used for making a website, where users would form to tend a community on the basis of their national, cultural and/or business orientation into Switzerland”.

(iv) Mr. Smirnov, who was the individual who had signed the Respondent’s submissions, was “the very person who is specially assigned with the Project implementation in Reddot Ltd”.

(v) Reddot Ltd was in no way affiliated with a company engaged in domain name trading. The ExpressPost address was a mailbox for clients that the Respondent has used to free it “from trouble with getting too much advertising material”. It also claims that the service was purchased as part of a “package deal” by the Registrar.

D. Complainant’s Procedural Order Submission

5.9 It is not necessary to set out the contents of the Complainant’s Procedural Order Submission in these proceedings as it sets out no further new facts or arguments that are relevant to this case. Suffice it to say that the Complainant did not accept that the Respondent has credibly responded to the issues raised in the Procedural Order.

 

6. Outstanding Procedural Issues

6.1 Before addressing the substance of the Complaint, it is necessary first to address a couple of procedural issues.

6.2 First there is the question of language. Paragraph 11(a) of the Rules provides:

“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.”

6.3 As was stated by the panel in Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”

6.4 Paragraph 11(b) of the Rules provides that a panel may require that documents that are not filed in the language of the proceedings be translated into that language. However, this Panel does not believe that is the sole extent of a panel’s powers so far as language is concerned. Subject always to the requirement that proceedings are conducted in accordance with the Policy and the Rules, a panel is generally granted wide discretionary powers regarding the conduct of those proceedings under paragraph 10 of the Rules. So, for example, insofar as a panel is concerned that the conduct of proceedings in a language other than that of the registration agreement and the native language of the respondent, may have had a detrimental impact on the ability of a respondent to express itself, then a panel may issue a procedural order seeking further clarification (see, for example, Mirela Zoita and Florin Popescu v. Westaco S.R.L., WIPO Case No. DRO2007-0008).

6.5 Further, the Panel can even conceive of circumstances where a panel might consider it appropriate to order the translation by the complainant of a complaint into a language other than the language of the proceedings.

6.6 Therefore, the fact that a panel has these wide powers available to it under paragraph 10 to address any disadvantage that may be suffered by a respondent if proceedings are not in the language of the registration agreement, is also something that the panel can take into account when exercising its power to determine the language of proceedings under paragraph 11(a) of the Rules.

6.7 In this case, the Respondent initially objected to the proceedings being filed in English but then filed the Response in English, notwithstanding the fact that the Center gave him the option of doing so in Russian. The quality of the English in the Respondent’s submissions is poor, but the Panel does not believe that the Respondent has suffered any substantive detriment in participating in these proceedings in English. Significantly, in order to ensure that the Panel had not misunderstood the Respondent’s case, the Panel by means of its Procedural Order sought clarification and provided the Respondent with a further opportunity to explain why and in what circumstances it registered the Domain Name. In the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English.

6.8 The next procedural issue is whether the Panel should take into account the contents of the Respondent’s Additional Submission filed one day out of time. The Panel is aware that there have been cases in which panels have refused to accept additional submissions even if they are only a day or two out of time (see for example, Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994). However, in this case the Panel is prepared to take this material into account. The reasons for this are that, there is very little new material in the Additional Response and in many respects the Respondent has simply repeated arguments made in the initial response but in slightly better English. The Panel also takes into account the fact that English is not the first language of the Respondent. Further, the Complainant will not have suffered any detriment as a result of the acceptance of this additional submission.

 

7. Discussion and Findings

7.1 The Panel has reviewed the parties’ submissions. In the light of this material, the Panel finds as set out below.

7.2 Under the Policy the Complainants must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely the Complainants must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

7.3 The Panel will consider each of these requirements in turn.

A. Identical or Confusingly Similar

7.4 This part of the case is relatively straightforward. The Complainant owns at least one registered trade mark for the text “3 Suisses” and the Panel has little hesitation in concluding that it is confusingly similar to that trade mark. It is irrelevant to this assessment whether the Claimant has a mark that is valid in the Russian Federation.

7.5 The Respondent has made lengthy submissions to the effect that the Domain Name is not confusingly similar to the Complainant’s mark. The argument seems to be that given the general and potentially generic nature of the word “Suisses” it cannot be considered as confusingly similar to the more particular and specific term “3 Suisses”.

7.6 The Panel does not think that these arguments assist the Respondent in this case. First, the difference between the mark and the Domain Name is very slight. When one ignores the “.com” TLD, it is single digit.

7.7 Further, a large number of Panel’s have held that the test of confusing similarity is a low threshold test (see for example Linear Technology Corporation v. Spiral Matrix, WIPO Case No. D2006-0699). It is a test that a complainant must satisfy in order to show that it has sufficient interest in and connection with the Domain Name in dispute.

7.8 Of course, it is also normally necessary for a complainant to show that the respondent choose the Domain Name with it and its mark in mind if it is to succeed under the Policy. However, this issue is best considered in the context of the Policy requirements of “no rights or legitimate interests” and “bad faith”.

7.9 In the circumstances, the Panel holds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

7.10 The issues in this case are (as is often the case with decisions under the Policy) predominantly factual. The Respondent claims that it registered a domain name with a “generic” meaning for a genuine business project associated with that generic meaning and that it did so without any knowledge of the existence of the Complainant, its marks or business.

7.11 If the Respondent’s factual contentions in this case are correct, it will succeed. However, for the reasons that are explained in greater detail under the heading of “bad faith” below, the Panel concludes that they are not correct. The Panel is of the view that the “business project” to which the Respondent refers is a sham and that the Domain Name was registered with Complainant in mind. Exactly why it did so is not entirely clear but it seems most likely to the Panel that the Domain Name was acquired in order to take commercial advantage of the reputation that the Complainant has built up in the 3 SUISSES mark. Such registration and use does not provide a right or legitimate interest for the purposes of the Policy.

7.12 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

7.13 In addressing the issue of bad faith, first it is necessary to address the question of the identity of the Respondent. The Domain Name was initially registered in the name of DesignBureau Ltd. However, the Complaint (as amended in response to the information provided to the Center by the Registrar) seems to proceed on the assumption that the DesignBureau Ltd is a separate entity from the Respondent. The Respondent picks up on this point and expressly states that it is not legally responsible for DesignBureau Ltd’s previous use of the Domain Name.

7.14 The Panel is deeply sceptical that this reflects the true position. The Complainant has put in evidence that the Registrar’s records for the Domain Name as at April 15, 2008 show the registrant at that time to be “DesignBureau Ltd by proxy”. The reference to “by proxy” is curious and suggests the Domain Name may be held on behalf of some other entity that is not disclosed.

7.15 Of greater significance is the fact that in the Procedural Order the Panel expressly puts it to the Respondent that as at the date of the Complaint that the Domain Name was still registered in the name of DesignBureau. The Respondent did not deny this. However, if this is so and DesignBureau is indeed the “previous owner” of the Domain Name, it is difficult to understand the Registrar’s actions in this case. Paragraph 8(a) of the Rules make it clear that once proceedings have become pending under the Policy then a Domain Name cannot be transferred to another entity. It would appear that some registrars interpret this provision as allowing changes to the domain name records to disclose the true identity of the owner of a domain name where a “domain name privacy service” is being operated. However, even if this is a valid interpretation of the Rules, it is not clear how if the Respondent’s factual contentions in this case are correct, it would justify the change in registrant that took place in this case².

7.16 To this is to be added the fact that the Respondent has failed to put any evidence before the Panel as to the circumstances surrounding its supposed purchase of the Domain Name from DesignBureau. No documentation is put forward recording that purchase or transfer and the Respondent does not even disclose the date upon which this supposed transfer occurred.

7.17 It may be that the Respondent contends that the purchase of the Domain Name took place before these proceedings were launched and that the Registrar changed the registration details after the proceedings were commenced because it was simply recording a prior transaction. However, this is not alleged by the Respondent and there is no evidence before the Panel to this effect.

7.18 Then there is the fact that the domain name parking page that the Respondent claims the previous owner of the Domain Name was responsible for, seems to have been in place as late as April 2008 and more likely than not on the date when these proceedings became pending. However, it would follow from this that the domain name transfer upon which the Respondent relies must have taken place after proceedings became pending. If so, once again paragraph 8(a) of the Rules would preclude any transfer of the name.

7.19 In short, the Respondent’s case here simply does not add up. The Panel concludes for the purposes of these proceedings that it is more likely than not that at all relevant times the Domain Name was controlled by a single entity or person (whether that entity be Reddot Limited or someone else) and that it can proceed in this decision on this basis³.

7.20 With this finding in mind the question arises why the Respondent registered the Domain Name in this case and whether it did so with the Complainant in mind.

7.21 As has already been described, the Domain Name was until recently used in connection with a domain name parking service. The way in which domain name parking services operate is described in some detail by this Panel in Owens Corning v. NA, WIPO Case No. D2007-1143. In short, a domain name owner will receive a percentage of the click though revenue that is generated as a result of Internet users clicking on a “sponsored link”.

7.22 There is nothing illegitimate in registering and using a domain name solely because of its generic meaning for domain name parking purposes. However, if the registration was instead with a view to attracting to the relevant web page internet users seeking out a business that uses the a mark that is similar to the Domain Name, then that registration and use will be in bad faith (see for example Express Scripts, Inc. v. Windgather Investments Ltd, WIPO Case No. D2007-0267).

7.23 In the current case the Panel accepts that the word “Suisses” has a potential generic meaning. However, in a case such as this one where the words embodied in a domain name have both potential descriptive and trade mark associations, the links displayed on the web-site operating from that domain name are often a factor that can be taken into account in assessing whether the respondent is acting with the complainant’s connection with the domain name in mind. The inclusion of links tailored to the trade mark meaning of the domain name will ordinarily evidence knowledge on the part of the respondent of the complainant and an intention to take advantage of the reputation that the complainant has developed in the relevant name.

7.24 Sometimes, it is argued by respondents that the links in question were automatically generated by some domain name parking service or the like and as a consequence it is simply not possible to draw the relevant inferences of intent from the existence of these links. In fact, in many cases these sorts of arguments are unconvincing given that it is frequently possible for the owner of a domain name to influence the sponsored links produced by the choice of key words, meta tags and the like.

7.25 Turning to the particular facts of this case, what is noticeable about the sponsored links displayed on the relevant parking page is that a large number of them have associations in one way or another with the products with which the Complainant is involved. They include “Gucci Handbags”, “Women’s Clothing”, “3 Suisses France” and “Katalog”. With perhaps the exception of “3 Suisses France”, there is no obvious reason why the word “Suisses” should automatically throw up these results⁴. In the absence a more detailed explanation from the Respondent as to why it was that these results were returned the Panel believes it is legitimate to conclude that the Respondent had some influence over their choice. From this it is in turn possible to infer that at that time the Respondent’s was aware of the Complainant’s use of the 3 SUISSES mark and registered the Domain Name with the intention of taking commercial advantage of the similarity between the Domain Name and that mark.

7.26 Whether it was specifically with domain name parking in mind that the Domain Name was registered, the Panel does not know. It notes in this respect that the Domain Name appears to have been registered as long ago as March 29, 2002, but whether this reflects the true date upon which the Domain Name was acquired by its true owner is not clear. The Panel also notes that the <title> tag for the domain name parking page also clearly stated that the Domain Name was for sale. However, the point is that absent cogent evidence to the contrary, the domain name parking use is evidence of the fact that at the time of registration the owner of the Domain Name intended in some form or other for commercial gain to take advantage of the reputation that the Complainant had built up in the 3 SUISSES mark. That is sufficient.

7.27 There are also a large number of other factors that suggest bad faith in this case. First there is the Respondent’s use of an address that seems to be associated with an organisation that is the owner of a large number of domain names. There is nothing per se wrong with the owning of, and dealing in, large numbers of domain names, but if the Respondent is in reality a domain name trader this is completely inconsistent with the explanation of its activities which is given in its submissions. The obvious inference is that the Respondent has something to hide and that “something” is its attempt to take advantage of the similarity between the Domain Name and the Complainant’s mark.

7.28 The Respondent’s explanation here appears to be that it has used this is an ExpressPost address to stop receipt of unwanted “advertising material” and that the reason why it may be the same address as that used by domain name traders is that the service was purchased as part of a “package deal” by the Registrar for its registrants. However, again this explanation does not add up. The address in question is not an email address but a physical address. Presumably, ExpressPost must not only receive this post, but also open it to determine what is junk mail and what is not (otherwise, how would the use of a post office box prevent junk mail?). But if the Registrar’s version of events is correct, it is a company that is merely in the early stages of developing a project that at present is only in beta testing. The suggestion that such a company needs a postal filtering service of some sort to deal with vast volumes of junk mail strikes the Panel as implausible.

7.29 Then there is the fact that the address in question is not one that appears on any public register that the panel has been able to locate. It is an address that the Respondent has seemingly simply chosen for the purposes of communications with the Center in connection with these proceedings. Is the Respondent concerned that the Center or the Panel will start sending it vast amounts of junk mail? The suggestion is not just implausible. It is ridiculous.

7.30 Next there is the rather curious contents of the email that was originally sent to the Center in relation to this Domain Name from one “Denis Manilo”, who appeared to claim that he represented “a company [that had] insured the domain suisses.com against its loss resulted by activity of the third parties”. No further representations were forthcoming from Mr. Manilo or this “insurance company”, and the content of the original email is so amateur and implausible that the Panel does not believe that it can ever have been sent by a genuine insurance company. Further, this communication was sent from an email address (i.e. info@nameserv.com) that the Respondent has used for the purposes of these proceedings. In the absence of any further explanation, the Panel can only conclude that the Respondent initially thought it would further its interests to impersonate an insurance company with an interest in the domain name and then thought the better of it. Why it did so is unclear. Perhaps it hoped that it would illicit some form of financial offer from the Complainant (and in this respect the Panel notes that the email expresses an interest in “an adequate solution of the dispute”). The Panel does not know. However, whatever the reason, this email does not reflect well on the Respondent and undermines the credibility of its other assertions.

7.31 Last but by no means least there is the nature and timing of the web site that now operates from the Domain Name. The Panel does not believe that this is the web site of a genuine business project (whether in beta stage testing or otherwise). The reasons for this are as follows:

(i) The timing of the appearance of this site (i.e. just shortly after proceedings had been commenced) is inherently suspicious. The Panel is not prepared to accept in the absence of further evidence in relation to this project that this is simply coincidental.

(ii) The only text that appears on the site about the “Fifth Switzerland” has apparently simply been lifted from an entry on Wikipedia without acknowledgement or other credit.

(iii) The site has a login page but there is nothing on the site that allows you to register before hand.

(iii) Under each of the Swiss flags that appear on the front page of the site there is a link. However, whichever link is clicked upon takes the user away from suisses.com to http://www.aso.ch. This is the website of the Organisation of the Swiss Abroad which is mentioned in the Wikipedia text. The Respondent does not claim to have any connection with this organisation and no explanation is offered for these links.

7.32 All of this might have been discounted had the Respondent brought forward a more compelling explanation of exactly what its project was and/or evidence of its preparations and plans for that project. None was provided save for a four paragraph internal document in Russian. The Respondent claims that it cannot provide more because the Russian law of confidence prevents it from doing so, but in the opinion of the Panel this is not a credible explanation. There may indeed be details of any pending project that are commercially sensitive, but if this is a genuine project there would presumably be evidence of activity in connection with the project that are not. Documents can also be redacted to protect sensitive commercial information. Affidavits and statements could also have been provided from those involved in the project.

7.33 When all these different factors are added together, the inference is overwhelming. That is that there is no real business project and the reason why the Complainant can bring forward no compelling evidence of that project is that such evidence does not exist.

7.34 The only credible reason why the Respondent would have wanted to act in this manner is to disguise the real reason why it registered the domain name i.e. to take advantage of the similarities between the Domain Name and the 3 SUISSES mark.

7.35 There is one thing in this case that might point away from a finding of bad faith. That is the Respondent’s holding of other “Swiss related” domain names. But pointing to other “Swiss related” domain names, given all the other factors in this case that suggest bad faith, is not enough. The Respondent needs to explain when and in what circumstances they were purchased, how exactly these domain names fit in with the Respondent’s plans for its supposed “project” and to what extent this represents merely part of a broader domain name portfolio. This it does not do.

7.36 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

7.37 Given this finding, the Respondent’s claims of reverse domain name hi-jacking inevitably fail.

 

8. 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 <suisses.com> be transferred to the Complainant

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Matthew S. Harris
Sole Panellist

Dated: July 10, 2008

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¹ The Amended Complaint says April 2007, but this seems to be a typographical error since the first version of the Complaint dated April 16, 2008 stated this was how the Domain Name was at that time being used

² For a more detailed description of the issues surrounding the operation of Paragraph 8(a) of the Rules see Mrs. Eva Padberg v. Eurobox Ltd, WIPO Case No. D2007-1886.

³ It is also worth noting that had the Panel instead concluded that there was a real change of ownership it is likely that the Panel would have proceed on the basis that DesignBureau Ltd could still be treated as the Respondent in this case since any transfer from it to Reddot Ltd is contrary to paragraph 8(a) of the Rules (see paragraphs 5.17 ad 5.18 of Eva Padberg v Eurobox Ltd, WIPO Case No. D2007-1886). Given the Panel’s comments latter on in the decision about the nature of the domain name parking page used from the Domain Name, the Panel doubts that the outcome of this case would have been any different.

⁴ The Panel does not know what the source of the sponsored links was in this case, but it also notes that searches against the term “Suisses” both on Google and Yahoo at the date of this decision produce no sponsored results.