The Complainant is Betty Bossi Verlag AG of Zurich, Switzerland, represented by Meyer Lustenberger, Switzerland.
The Respondent is SinoSwiss Co., Ltd. of Bangkok, Thailand, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 28, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On December 28, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on January 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2011. The Response was filed with the Center on January 27, 2011.
The Center appointed Sir Ian Barker as the sole panelist in this matter on February 10, 2011. 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 a Swiss corporation which publishes books and magazines on cooking, nutrition, decoration, gardening and healthy living. It also offers classes on cooking and nutrition on television and sells convenience food products.
The Complainant markets all its products and conducts its activities under the name of “Betty Bossi” who was a fictional character – a cook – whose name was invented in the 1950s and first used in a cooking magazine in 1972. The magazine has been known as Betty Bossi since 1993. The brand is well-known in Switzerland and the Complainant has an extensive business in that country. The Complainant owns registered Swiss trademarks (both wordmarks and word and device marks) for Betty Bossi. The first trademark was registered on March 26, 1993. The Complainant also has registered the domain name .
The Respondent is a Thailand corporation which owns Thai registered trademarks for Betty Bossi and BettyB. These were registered on January 27, 2000. These trademarks have different shadings and fonts from the Complainant’s trademarks. The disputed domain name was registered on September 24, 1999.
The Respondent is engaged in management, testing, coaching and recruitment services in the Asia-Pacific region. English is exclusively used in the delivery of its products. It uses its Betty Bossi brand to promote its services to women. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical to the Complainant’s registered trademarks which represent one of the best-known brands in Switzerland.
The Respondent was given no rights by the Complainant to use the Complainant’s trademarks in a domain name. The Respondent has no connection with the Complainant.
The disputed domain name creates a likelihood of confusion as to source, sponsorship and affiliation with the Complainant’s trademarks. By trading under the name ”Sino-Swiss” the Respondent is taking advantage of the fame of the Complainant’s marks and its own link to Switzerland. Because Betty Bossi is a fantasy creation, there is no reason why anyone would use that name. The disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent registered the disputed domain name before the date when the Policy and its enforcement regime came into effect. Since regulations cannot be enforced retrospectively, the Complaint should be denied for that reason alone.
The Respondent’s services and target groups are completely different from those offered or used by the Complainant. The Respondent created its Betty Bossi product in 1999 aimed at career women. The “Betty” portion of the name came from the name of the administrator during the first few years of operation. Bossi represents the first letters of the BettyB motto as follows:
Be unique
Open-minded
Sincere
Service minded
Initiative
The Complainant is unknown in South-East Asia and is known only in Switzerland and in parts of countries near the Swiss borders. The Respondent has been in business for 18 years. The founders of the Respondent company have Chinese and Swiss roots. The Respondent’s different business and different geographic area cannot constitute a hindrance to the Complainant’s business. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to prevail, a complainant must prove the following elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There can be no doubt that the disputed domain name is identical to the Complainant’s registered Swiss trademarks.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights to use its trademarks in a disputed domain name. However, the Respondent impliedly relies on paragraph 4(c)(i) of the Policy whereby it seeks to show that before notice of this dispute, it had used the disputed domain name in connection with a bona fide offering of goods or services.
The available evidence shows that the Respondent has been using the disputed domain name for 11 years in connection with its apparently legitimate business of offering career-enhancement for women. It obtained registered trademarks in Thailand, the country where it is located.
Clearly, on this basis, the Respondent has satisfied the burden of paragraph 4(c)(i) of the Policy and therefore the Complainant has failed in these proceedings to prove paragraph 4(a)(ii). C. Registered and Used in Bad Faith
This is a case where the Complainant has apparently gone to sleep on its rights for a long period. It complains about a domain name some 11 years after it had been registered. No explanation was offered by the Complainant for its delay in filing a complaint. Whilst the equitable doctrine of laches does not apply under the Policy, the longer the interval between registration of the disputed domain name and the filing of a complaint under the Policy, the harder it becomes for a complainant to prove bad faith registration and bad faith use. Both need to be proved. See, e.g., Mile, Inc v. Michael Barg,WIPO Case No. 2010-2011.
In the present case, the Complainant’s difficulties under the third limb of paragraph 4(a) of the Policy are exacerbated by the difficulty for the Panel in being able to infer that the mark of a company which seemingly trades almost exclusively in Switzerland in selling cooking publications and associated products would have been known in Thailand in 1999 by a company which markets self-improvement courses for women in South-East Asia.
The only indication of bad faith registration is that one of the founders of the Respondent appears to have Swiss origins. In that light, the Panel must confess to a certain skepticism about the narrative relating to the choice of name for the Respondent’s operations. However, these misgivings are not enough to create an inference of bad faith registration, given the unexplained delay of 11 years by the Complainant in asserting its rights. It is unnecessary for the Panel to rule on bad faith, since the Respondent has established a defence under paragraph 4(c)(i) of the Policy.
It becomes therefore unnecessary to consider whether the Respondent should succeed regardless because the disputed domain name was registered before the Policy came into effect. Naturally, should the Complainant believe it has a valid trademark infringement claim against the Respondent regarding the disputed domain name, the present finding would in no way preclude recourse to an appropriate court. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Sole Panelist
Dated: February 22, 2011
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