WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Strellson AG v. Simunza Muyangana Case No. D2009-0027 1. The Parties
Complainant is Strellson AG, Kreuzlingen, Switzerland, represented by A.W. Metz & Co. AG, Switzerland.
Respondent is Simunza Muyangana, Cape Town, South Africa. 2. The Domain Name and Registrar
The contested domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2009. On January 13, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the contested domain name. On January 13, 2009, eNom transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on January 22, 2009. The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on February 17, 2009.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 24, 2009. 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
Complainant is a Swiss producer of clothing, headgear, footwear and accessories. Complainant was founded in 1945 and has been active under the company name Strellson AG (Strellson Limited) (Strellson SA) since then.
Respondent registered the contested domain name on October 9, 2008 and has not yet used it. 5. Parties' Contentions A. Complainant
Complainant has used the company name Strellson AG (Strellson Limited) (Strellson SA) since 1945. The main business of Complainant is to produce and sell clothing.
Complainant owns dozens of trademarks STRELLSON for clothing and accessories around the world. The Swiss trademark 331937 STRELLSON claims protection for clothing, footwear and headgear and enjoys the priority of April 2, 1984. Based on this trademark, the International Registration 486977 STRELLSON claims protection for the same goods and enjoys the same priority. This trademark is effective - among others – in Germany, Spain, France, Belgium, Italy, Poland, the Russian Federation, the Socialist Republic of Viet Nam and the United Kingdom of Great Britain and Northern Island.
The Swiss trademark 460192 STRELLSON claims protection for perfumery and cosmetics in class 3, glasses und sunglasses in class 9 and jewellery and watches in class 14. This trademark enjoys the priority of December 30, 1998. Based on this trademark, the International Registration 712433 claims protection for the same goods and is effective among others in Austria, Benelux, Germany, Egypt, Spain, France, Italy, Poland, Portugal, the Russian Federation, Denmark, Finland, United Kingdom of Great Britain and Northern Island and the United States of America.
Besides these trademarks, Complainant owns trademarks for clothing in the United Arab Emirates, Armenia, Argentina, Australia, Azerbaidjan, Bosnia and Herzegovina, Bulgaria, Bahrain, Brazil, Belarus, Canada, the People's Republic of China, the Czech Republic, Estonia, the European Union (priority of August 29, 2000), Greece, Hong Kong, SAR of China, Croatia, Israel, India, the Islamic Republic of Iran, Jordan, Japan, the Republic of Korea, Kazakhstan, Morocco, the Republic of Montenegro, Mexico, Malaysia, New Zealand, Oman, Pakistan, Romania, Saudi Arabia, Singapore, Slovenia, Sweden, the Syrian Arab Republic, Turkey, Taiwan, Province of China, Ukraine and South Africa. The United States of America (or “U.S.”) trademark registration owns the priority of June 4, 1992. Additionally, Complainant owns combined trademarks with the word “strellson”.
Complainant is active in Switzerland, but also in the other parts of Europe and additionally, Complainant is doing business in the Russian Federation, the former member states of Russia, Asia and the U.S.. In Central Europe, Complainant's trademark STRELLSON is at least well-known, if not famous.
The contested domain name is exactly the company name of Complainant in its English version: Strellson Limited. The identity of the contested domain name with Complainants' company name is therefore established in accordance with paragraph 4(a)(i) of the Policy.
Because “limited” refers to the legal form of the owner of Complainant, it only describes the actual business activity associated with the mark STRELLSON. The contested domain name is therefore only a mere reproduction of Complainant's trademark STRELLSON and therefore similar in accordance with paragraph 4(a)(i) of the Policy.
The company name Strellson Limited and the trademark STRELLSON are unique. There are no other companies with a comparable company name or family name around the world. Respondent is not known by the name STRELLSON and it is not a licensee of Complainant, nor has Respondent received any permission or consent to use the trademark STRELLSON. Consequently, Respondent has no rights or legitimate interests in respect of the contested domain name. Accordingly, para graph 4(a)(ii) of the Policy is met.
After discovery of the registration of the contested domain name, Complainant sent a cease and desist letter by registered mail on November 25, 2008 to Respondent and requested Respondent to transfer the contested domain name. No reply was ever received. Respondent announces on his website that it will “go live soon”.
The fact that Respondent registered a domain name which is entirely identical with Complainants' company name will lead to confusion, especially because Complainant is owning the domain name and is running a website under this domain name. It is very likely that the consumers will believe that the website “www.” is associated with Complainant's website because the consumers will understand that the website “www.” is run by a company with the name Strellson AG and Strellson Limited respectively. Respondent sought to create this confusion which is an additional indication that Respondent has no rights or legitimate interests in the contested domain name in accordance with paragraph 4(a)(ii) of the Policy.
The fact that Respondent is currently not using the website does not exclude bad faith use because Respondent is clearly indicating that he will use the domain name soon. In the case DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232, it was clearly held that already “the passive holding of the domain name by the Respondent amounts to acting in bad faith”. In the case Pomellato S.p.A.v. Richard Tonetti, WIPO Case No. D2000-0493, it was held that the non-response to a Complainant is “indicative of lack of interest inconsistent with an attitude of ownership and the believe in the firmness of one's own rights”. In the present case, Respondent did not respond to a cease and desist letter. This shows to the same extent lack of interest in the contested name as the non-response to a Complaint.
Respondent's registration of the contested domain name is clearly an indication that Respondent tries to trap users who legitimately seek the trademark STRELLSON on its website. This conduct may likely create confusion with Complainant's company name and trademarks in order to imply Complainants' sponsorship, affiliation or endorsement of products promoted on Respondent's website. This clearly falls within the scope of paragraph 4(b)(iv) of the Policy.
Complainant's company name and trademarks are well-known or have at least gained a strong reputation and are recognized internationally. It cannot be otherwise than Respondent was aware of Complainant's company name and trademark. Respondent has no conceivable connection with Complainants' name or activities. The registration of a well-known trademark of which Respondent must reasonably have been aware constitutes bad faith, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Additionally, Respondent's failure to acknowledge or reply to Complainant's cease and desist letter amounts to bad faith as well, Ebay, Inc. v. E and Tony Caranci, WIPO Case No. D2000-1632; Charles Jourdan Holding AG vs. AAIM, WIPO Case No. D2000-0403; Tag Heuer S.A. vs. JBlumers Inc./Jerald Blume, WIPO Case No. D2004-0871; Alstom v. Domain Investments LLC,WIPO Case No. D2008-0287. There is no conceivable reason to decide differently in the present case and consequently, paragraph 4(b)(iv) of the Policy is met. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the complainant 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; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The domain name consist of Complainant's STRELLSON mark with the addition of the generic word “limited” which actually reflects the English version of Complainant's corporate name. Use of “limited” does not serve to distinguish the domain name from Complainant's mark in fact it suggests a further connection with Complainant due to the singular nature of the denomination “limited” to refer to the company of that name. The domain name is confusingly similar to Complainant's STRELLSON registered mark. B. Rights or Legitimate Interests
Respondent has not filed a Response and does not appear to have any rights or legitimate interests in the domain name. Respondent does not appear to be known by the name “Strellson” and has not received permission from Complainant to use the contested domain name.
Accordingly, the Panel finds that Respondent lacks of rights or legitimate interests in the contested domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith as follows:
(i) the respondent has registered or has 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct: or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
There is no evidence that Respondent has engaged in a pattern of cybersquatting conduct sufficient to satisfy paragraph 4(b)(ii) of the Policy.
There is no evidence that Respondent is a competitor of Complainant sufficient to satisfy paragraph 4(b)(iii).
There is no evidence that Respondent has attempted to cause confusion amongst Internet users between Complainant's mark and any on line location of Respondent or any goods and services offered by Respondent on line sufficient to satisfy paragraph 4(b)(iv).
However, given, in particular, Complainant's longstanding use of the mark and the use of the word “limited” with its connotations of exclusive association with the registered company of that name the panel finds it difficult to accept that Respondent registered the domain name without knowledge of Complainant's rights. Respondent has not put forward any arguments to demonstrate it has any rights or legitimate interests in the domain name and the panel is entitled to draw appropriate adverse inferences from the failure of Respondent to submit any Response to the Complaint.
Following the case of Telstra Corporation Limited v Nuclear Marshmellows, WIPO Case No. D2000-0003 the Panel believes that this is an appropriate case to transfer the contested domain name despite the fact that this is a case of passive holding or use of the contested domain name. The longstanding use of Complainant's mark and the failure of Respondent to respond to the Complaint leads the Panel to believe that Respondent registered the contested domain name primarily for the improper purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant for valuable consideration in excess of Respondent's documented out-of-pocket costs of registration of the domain name sufficient to satisfy paragraph 4(b)(i) of the Policy or for other bad faith purposes, as the general overriding criterion of bad faith which is not limited to the four strict circumstances listed in paragraph 4(b).
Accordingly, the Panel finds that the contested domain name has been registered and used in bad faith. 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 contested domain name be cancelled.
Dawn Osborne
Sole Panelist
Date: March 2, 2009
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