The Complainant is Revox Group AG, Switzerland, represented by REBER Rechtsanwälte KlG, Switzerland.
The Respondents are Swiss Domain Trustee AG (SWISSDOM49406), Switzerland / PBT Consulting GmbH, Switzerland. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amendments to the Complaint on October 11, and 16, 2019. The Center verified that the Complaint together with the amendments 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 November 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2019. Upon the Center’s request for clarification, the Complainant submitted a Third Amendment to the Complaint on November 6, 2019. On November 7, 2019, the Center forwarded the Notification of Complaint with the Third Amendment to the Complaint to the Respondent, allowing an additional 3 days for Respondent to file a Response. The due date for Response was set for November 27, 2019. The Center received an email from the Respondent on November 15 and 26, 2019. The Complainant submitted a Supplemental Filing on November 26, 2019. The Center received a further email from the Respondent on November 27, 2019, to which the Complainant replied on the same day. The Center appointed Andrea Mondini as the sole panelist in this matter on December 18, 2019. 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 manufacturer of high-end audio systems. It has used the trademark REVOX for more than 70 years for tape recorders, professional studio equipment and more recently for multiroom audio systems. The Complainant owns registrations for the trademark REVOX, including the Swiss trademark registration P372038 in international class 9 for audio equipment, which was filed on 14 April 1989 and registered on 28 September 1989. The Complainant also owns the domain names The disputed domain name was registered on April 23, 2013, and does not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant in essence contends the following: The Complainant's trademark REVOX is highly distinctive and has a high reputation in the areas of high fidelity and multimedia equipment. The disputed domain name includes the identical REVOX trademark. The element "international" is merely descriptive and does not dispel confusing similarity. Therefore, the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name was registered on April 23, 2013 by Mr. Marcel Hüppi. At that time, Mr. Hüppi was working for Revox International AG, a licensee of the Complainant, and he registered the disputed domain name using incorrect contact details. In 2015, the Swiss entity PBT Consulting GmbH (“PBT”) registered the identical Swiss trademark REVOX (CH no. 681102) in international classes 9, 18, 25, 35 and 41. Mr. Hüppi was and still is the director of PBT. On June 7, 2016, the Complainant terminated the cooperation and distribution agreement with Revox International AG and requested this company to stop using the REVOX trademark. On June 17, 2016, the Complainant sent a warning letter to PBT requesting them to cancel the REVOX trademark in class 9 and to undertake inter alia to "never register" the REVOX mark. PBT did not respond to that letter but cancelled its trademark in class 9, thereby admitting the Complainant's rights in this mark. Mr. Hüppi then transferred the disputed domain name to Swiss Domain Trustee AG. In 2016, several attempts by the Complainant to request the transfer of the disputed domain name failed due to Mr. Hüppi's incorrect contact information. The fact that Mr Hüppi registered the disputed domain name while he was still engaged by Revox International AG, that he used incorrect contact details and then transferred the disputed domain name to Swiss Domain Trustee AG shows that he has no legitimate interest in the disputed domain name and that he registered and used the disputed domain name in bad faith in order to prevent the Complainant from reflecting its mark in a corresponding domain name. B. Respondent Swiss Domain Trustee AG did not submit a formal response, but sent an email stating that it is a trustee company enabling its clients to hide their domain name information, and that the owner of the disputed domain name is one of its customers and that he would soon respond. The Respondent also noted that the contact details under which the disputed domain name had been originally registered are completely wrong. Thereafter, Mr. Hüppi, the director of PBT, sent several emails to the Center: he stated that PBT is the owner of the disputed domain name, and that Swiss Domain Trustee AG holds the disputed domain name as the registered name holder purportedly for PBT. He further confirmed that he had been a consultant to Revox International AG. He contends that PBT is the rightful owner of the trademark REVOX “in a different category” than the Complainant and that PBT uses this trademark for totally different goods, e.g., for shampoo under “www.revox-shampoo.com”. Mr Hüppi further stated that the Complainant’s trademark agent had requested PBT to cancel its own registration of the REVOX mark in class 9 and that in return the Complainant would not take legal steps. PBT complied with this request by cancelling the registration in class 9, and the matter was thus amicably settled. Mr. Hüppi therefore takes the position that the Complainant cannot prevent PBT from using the REVOX brand for different types of products. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; (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 The Complainant has shown that it holds a registration for the trademark REVOX and that this trademark is highly distinctive and well known in the audio systems field. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, because it incorporates the identical trademark REVOX. The addition of the word “international” in the disputed domain name does not dispel confusing similarity. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made a prima facie case that the disputed domain name was originally registered by Mr. Hüppi using incorrect contact details and then transferred to Swiss Domain Trustee AG, a domain name trustee company, with the obvious intent to conceal Mr. Hüppi’s identity. The Respondents have not submitted a formal response, but Mr. Hüppi's emails to the Center confirm that PBT is the beneficial owner of the disputed domain name, which means that Mr. Hüppi (who is the director of PBT) transferred the beneficial ownership to PBT, and then to Swiss Domain Trustee AG as the registered name holder purportedly for PBT. However, neither Swiss Domain Trustee AG nor PBT demonstrated any rights or legitimate interests in the disputed domain name. The trademark REVOX has been used by the Complainant and its affiliates for almost 70 years and is a well-known mark clearly associated with the Complainant and its high-end audio equipment. The disputed domain name suggests a relationship with the Complainant which does not exist. Neither Swiss Domain Trustee AG nor PBT have been commonly known by the disputed domain name, nor made any use nor preparations to use the disputed domain name (which is still inactive), nor made any legitimate noncommercial or fair use of the disputed domain name. PBT alleges that it complied with the Complainant’s request to cancel PBT’s registration for the trademark REVOX in class 9 and that therefore the registration and use of this mark for goods in other classes were permitted. However, PBT just cancelled the registration in class 9 but never responded to the Complainant’s further requests contained in its warning letter. Therefore, no settlement was concluded. PBT has shown use of “www.revox-shampoo.com”; in that domain name, the addition of the entirely unrelated product category “shampoo” makes it clear that this website has nothing to do with the Complainant and its audio products. However, in the disputed domain name the addition of the word “international” to the mark REVOX does not refer to a different product category, but is rather understood as a reference to the distribution of the Complainant’s well-known audio products and/or the name of Revox International AG, for which Mr Hüppi had actually worked as a consultant. The Panel thus finds that the Respondents do not have rights or legitimate interests in the disputed domain name The Panel thus finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has shown that Mr. Hüppi had registered the disputed domain name on April 23, 2013, in his own name and using incorrect contact details while he was still working as a consultant for the distribution of the Complainant's audio products, and that after the termination of that relationship he transferred the disputed domain name to PBT using Swiss Domain Trustee AG as the registered name holder purportedly for PBT in an obvious attempt to conceal his identity. Especially noting these changes in registrant, the Panel thus finds that the disputed domain name has been registered in bad faith. During more than six years, the disputed domain name has been passively held by the Respondents. Considering this inactive holding of the disputed domain name without a legitimate purpose, the Panel concludes that the disputed domain name has been used in bad faith. The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 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 Andrea Mondini
Sole Panelist
Date: January 17, 2020
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