The Complainant is Oy Nautor AB of Jakobstad, Finland, represented by Octrooibureau Vriesendorp & Gaade B.V., the Netherlands.
The Respondent is M.E. Giltay, Swan Yacht Charters of Laren, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2014. On December 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2014, the Registrar 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 amendment to the Complaint on January 7, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on January 8, 2015. On the same date the Registrar responded to an email from the Center confirming that the disputed domain name would remain locked after the lapse of the expiry date of March 3, 2015 until de proceedings had concluded, and that no action was required by the Parties at that juncture in light of the expiry of the disputed domain name on March 3, 2015 to keep the disputed domain name under Registrar lock. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2015. The Respondent sent an e-mail communication on January 8, 2015. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on January 29, 2015.
The Center appointed David J.A. Cairns as the sole panelist in this matter on February 11, 2015. 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 Finnish manufacturer of luxury sailing yachts, founded in 1966.
The Complainant is the owner of the following Community Trademarks; (i) Community trademark registration No. 2787521 for the word mark NAUTOR’S SWAN registered on May 27, 2004 for classes 9, 25 and 41; (ii) Community trademark registration No. 3165289 for the word and device registered on October 19, 2004 for classes 9, 14, 18, 25, 28 and 41; and (iii) Community trademark registration No. 3892411 for the word and device registered on September 20, 2005 for classes 35 and 39. These trademark registrations all predate the registration of the disputed domain name on March 3, 2011.
The Complainant produces the “Swan” range of yachts. The Swan range of yachts have been produced for many years, and are well known and sold worldwide. The Complainant is also active in the field of cruises, brokerage and charters, including the “Swan Charter Experience”. The Complainant has attached its name to events, such as the “Swan European Regatta” and “Rolex Swan Cup”. The Complainant established “ClubSwan” and distributes the “ClubSwan magazine” throughout the world.
The disputed domain name resolves to a website relating to yacht charters and sales. The Panel viewed the website hosted at the disputed domain name on February 24, 2015. The landing page includes the following statements: “Swan Yacht Charters… Regatta charters, luxury yacht charter, sailing charters & brokerage & sales… Welcome to the Charter experience... […] We will deliver excellent, well organized charters on the best available charter yachts. As we do not own or directly manage the yachts we advertise, we can objectively and without bias recommend the best yachts in the world from every supplier and owner.” The website has offers relating to Swan Yachts, but also yachts of many other manufacturers and brands. There was no apparent disclaimer on the website or explanation of any relationship with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is at least confusingly similar to the trademarks of the Complainant. The Complainant argues that figurative, stylized or design elements in a trademark are generally disregarded for the purpose of assessing identity or confusing similarity and that the design elements of the Community trademarks Nos. 3165289 and 3892411 should be disregarded in the comparison as they do not form an especially prominent or distinctive part of the trademarks overall. The Complainant further submits that as the disputed domain name incorporates in its entirety the element SWAN it is therefore confusingly similar to the trademarks. The Complainant argues that the mere addition of descriptive, non-distinctive elements such as “charters” and “yacht” to a complainant’s trademark is insufficient to affect the impression of confusing similarity and the element “swan” remains the dominant, distinctive part of the disputed domain name. Further, the Complainant alleges, the use of a trademark at the beginning of the disputed domain name increases the confusing similarity.
The Complainant further submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that once it establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. The Complainant alleges that the Respondent is not only offering yachts of the Complainant for rent, for charter and for sale, but it also offers yachts of other brands which are direct competitors of the Complainant. Moreover, the Complainant alleges that the website at the disputed domain name does not disclose the relationship with the trademark holder. Therefore, the Complainant argues that the requirements for a bona fide offering of goods and services for a reseller or distributor to have a legitimate interest in the disputed domain name are not met.
The Complainant further states that the Respondent was not commonly known by the disputed domain name at the date of registration and that the Respondent is not an authorized dealer, distributor or licensee of the Complainant nor has it otherwise been permitted by the Complainant to make any use of its trademarks. Further, the Complainant submits that the Respondent is not using the disputed domain name in connection with a legitimate noncommercial or fair use.
Finally, the Complainant submits that the disputed domain name is registered and used in bad faith by the Respondent as the Respondent intentionally attempts to attract Internet users for commercial gain to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks. The Complainant argues that the Respondent registered the disputed domain name long after the Complainant registered its trademarks and as a professional sailor the Respondent was undoubtedly aware of the well-known trademarks of the Complainant when it registered the disputed domain name. The Complainant also argues that when a disputed domain name is so obviously connected with a complainant, its very use by a registrant with no connection to the complainant suggests opportunistic bad faith, as established by a previous UDRP panel. The Complainant alleges that by using the disputed domain name the Respondent suggests that he has a commercial relationship with the Complainant, in the sense of a sponsorship, affiliation, or endorsement (especially in combination with the look and feel of the website in question), and that the Respondent is creating a likelihood of confusion. The Complainant alleges that attracting Internet traffic for commercial gain by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith.
The Complainant requests the Administrative Panel that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The only communication from the Respondent, following service of the Complaint, was to advise of a new street address at the Huizer Marina (an address which also appears on the Respondent’s website and was referred to in the Complaint). 6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed 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 respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the NAUTOR’S SWAN and SWAN Community trademarks referred to above. The Panel accepts that the SWAN trademark has acquired considerable renown and goodwill worldwide in the nautical and luxury yachts sector.
The disputed domain name is not identical with the Complainant’s trademarks. The disputed domain name incorporates the trademark SWAN entirely, adding the descriptive words “yacht” and “charters”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.11 states that “…as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances - such as where, for example, they form an especially prominent or distinctive part of the trademark overall…”
And paragraph 1.2 states that “The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms ....typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
In the present case, the Panel considers that the design element of the SWAN trademark can be disregarded as the word SWAN is clear and prominent, and the design elements are confined to a swan motif forming the letter “S” and the typeface.
The disputed domain name is comprised of the SWAN trademark and the suffix “yachtcharters”, which in English would be read as the descriptive phrase “yacht charters” comprising two distinct words.
The Panel considers that on a visual comparison the disputed domain name is confusingly similar to the SWAN trademark for the following reasons: (i) the disputed domain name incorporates in its entirety the trademark SWAN; (ii) “yacht” and “charters” are descriptive, non-distinctive elements which are insufficient to distinguish the disputed domain name from the Complainant’s trademark; (iii) the addition of “yacht” and “charters” emphasizes rather than neutralizes the trademark function of SWAN as a brand of yacht; (iv) SWAN is a well-known trademark in the nautical and luxury yachts sector, and the Complainant’s services include the offering of its Swan yachts for charter.
Therefore the addition of the suffix “yachtcharters” does not avoid a confusing similarity between the SWAN trademark and the disputed domain name, and so the first element required by the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainant to use the SWAN trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent was commonly known by the disputed domain name at the time of registration of the disputed domain name; (iv) the Respondent is using the disputed domain name for commercial gain and with full knowledge of the Complainant’s SWAN trademark, as Swan yachts appear prominently on the website.
With regard to paragraph 4(c)(i) of the Policy the WIPO Overview 2.0, paragraph 2.3 states that “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder…”
The Panel finds that the Respondent is not only offering SWAN yachts but also other yacht brands such as Berths, Monte Carlo and Wally, which are direct competitors to the Complainant, and that the site does not disclose the Respondent’s relationship with the Complainant. Therefore, the requirements for a bona fide offering of goods and services by a reseller or distributor are not met.
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thus, the second element of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name was registered in bad faith and also “is being used” in bad faith. Paragraph 4(b) sets out the four circumstances without limitation which if found by a Panel to be present shall be evidence of the registration and use of a domain name in bad faith. However, bad faith may be established on grounds other than those set out in paragraph 4(b), as the circumstances in paragraph 4(b) are expressed to be “in particular but without limitation”.
The Panel finds that the circumstances of paragraph 4(b)(iv) are present in this case for the following reasons: (i) SWAN is a well-known international trademark in the nautical and luxury yachts sector where the Respondent operates; (ii) the Respondent knew of the Complainant’s trademark at the time of its registration of the disputed domain name, and deliberately chose this name precisely because of the goodwill attached to the SWAN trademark in this sector; (iii) the Respondent intended to attract Internet users who would expect to find either a website of the Complainant or a website that was affiliated to or sponsored by the Complainant at a domain name incorporating the SWAN trademark in conjunction with the suffix “yachtcharters”; and (iv) the Respondent chose the disputed domain names for purposes of commercial gain and with indifference to the Complainant’s rights in the SWAN trademark.
Further, the registration and use of a domain name so as to attract Internet users seeking a product or services associated with a particular trademark, so as then to offer the products or services not only of the trademark owner but of other manufacturers or suppliers as well, amounts to a form of “bait and switch” selling. In this case, the Respondent seeks revenue from the sale or charter not only the Complainant’s yachts, but also yachts of other manufacturers and brands. The use of the SWAN trademark to generate revenue in this way constitutes bad faith registration and use within the meaning of the Policy (see, for example, F. Hoffmann-La Roche AG v. Pinetree Development, Ltd.,WIPO Case No. D2006-0049)
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
David J.A. Cairns
Sole Panelist
Date: February 24, 2015
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