The Complainant is Naviswiss AG of Brugg, Switzerland, represented by DGE Avocats, Switzerland.
The Respondent is inLink GmbH of Glattbrugg, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and confirming English as the language of the Registration Agreement.
On November 18, 2016, the Center notified the Complainant that English was the language of the registration agreement and invited the Complainant to either provide satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in French, or submit the Complaint translated in English, or submit a request for French to be the language of the proceedings with arguments and supporting materials to that effect.
On November 21, 2016, the Respondent requested that English be the language of the proceeding. On the same day, the Complainant submitted the Complaint translated into English.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 30, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2016. The Response was filed with the Center on December 21, 2016.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 4, 2017. 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 company that got created on May 14, 2007 and which is active in the field of medical devices.
It holds the NAVISWISS trademark which was registered in Switzerland on November 7, 2006 in class 9 (navigation instruments from Swiss origin) with a priority date as of August 8, 2006.
The Respondent registered the disputed domain name on July 28, 2005. The disputed domain name has been passively held for about ten years. The website attached to the disputed domain name was activated in 2016 and allows users to view different locations in Switzerland via Google Street View.
On September 21, 2016, the Complainant sent an email to the Respondent, drawing the Respondent's attention upon its exclusive rights upon its corporate name and trademark and inviting the latter to transfer both the disputed domain name and the domain name to the Complainant for an amount not to exceed CHF 1,000.--. This email ultimately led to a phone call between the parties during which the Respondent refused to transfer the domain names, arguing that any offer below CHF 15,000 would not be taken into account. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical to its NAVISWISS trademark which it entirely incorporates without including any additional element.
The Complainant then affirms that the Respondent would have neither rights nor legitimate interests in the disputed domain name as the disputed domain name was held passively for more than ten years and was only activated as a result of the Complainant's email sent on September 21, 2016 and the resulting phone call that took place between the parties.
The Complainant finally considers that the offer to sell the disputed domain name for an amount not below CHF 15,000 must clearly be qualified as amounting to a bad faith behavior. B. Respondent
The Respondent argues that it was first contacted by the Complainant in 2006. The fact that the disputed domain name was let inactive for several years only is the result of a change of priorities within the Respondent's organization. The disputed domain name has never been registered in bad faith. The Respondent's provision of virtual tours of Swiss locations through Google Street View cannot be considered as use in bad faith, all the more as the Respondent's business would be recognized as "Google Street View trusted". The offer made by the Respondent to only sell the domain names and for an amount not inferior to CHF 15,000 was only the result of the arrogant tone of the Complainant's emails and meant to clearly state that these domain names were not for sale. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of the trademark NAVISWISS that was registered in Switzerland with a priority date as of August 8, 2006, thus prior to the incorporation of the Complainant itself, which took place on May 14, 2007.
It is a consensus view that "Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP" (see, e.g., paragraph 1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
As a result, considering that the disputed domain name entirely incorporates the NAVISWISS trademark without any additional element, the disputed domain name is identical to the Complainant's trademark.
Consequently, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the UDRP panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name "would require complainant to prove a negative, a difficult, if not impossible, task". Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion". Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent's burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview 2.0).
In the present case, the Complainant notably argues that the disputed domain name was held passively for more than ten years and was only activated as a result of the Complainant's email sent on September 21, 2016 and the resulting phone call that took place between the parties. The circumstances would thus make it clear that the Respondent has neither rights nor any legitimate interests in the disputed domain name.
While the passive holding of the disputed domain name and its sudden activation in October 2016 does indeed raise some doubts as to the legitimacy of the website, the Panel finds it nevertheless difficult to consider that the Respondent would have no legitimate interests in the domain name. The services provided by the Respondent, namely to offer tours of Swiss locations through Google Street View, could not have been implemented within a couple of days following the Complainant's email on September 21, 2016. Such a website could obviously not have been developed and put in place in 2005 absent any technology to that effect. Similarly, Respondent's credential as "Google Street View trusted" also tends to demonstrate a commitment and willingness to build upon such credentials.
As a result, while the Panel finds it difficult to consider that the Respondent would have no legitimate interests in the disputed domain name that seems to be attached to a website offering bona fide services, this question need not be decided in view of the Panel's findings below. C. Registered and Used in Bad Faith
For a complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
In the present case, the disputed domain name was registered on July 28, 2005, thus before the incorporation of the Complainant and the registration of the NAVISWISS trademark. The disputed domain name was thus registered well before the Complainant's trademark registration that took place on August 8, 2006 and its incorporation on May 14, 2007.
Previous UDRP panels' consensual view is that, absent exceptional circumstances, when a domain name is registered by a respondent before a complainant's relied-upon trademark right, the domain name can generally not have been registered in bad faith, as the respondent could obviously not have been aware of the non-existing complainant's trademark as of the time the domain name got registered (see, e.g., paragraph 3.1 WIPO Overview 2.0).
This is the case here, all the more as the Complainant did not even exist at the time the disputed domain name was registered. The Complainant presents no explanation as to why, at that time, the Respondent knew or should have known that the Complainant was intending to use or register any potential mark and how such registration could have occurred in bad faith.
As a result, the Panel finds that the Complainant has not succeeded in proving that the disputed domain name was registered in bad faith, and considers paragraph 4(a)(iii) of the Policy not to be fulfilled. 7. Decision
For the foregoing reasons, the Complaint is denied.
Philippe Gilliéron
Sole Panelist
Date: January 5, 2017
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