The Complainant is Victorinox AG, Switzerland, represented by Domgate, France.
The Respondent is Andre Freitas, Result Capital, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2021, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. On September 14, 2021, the Center received an email communication from the Respondent. On October 5, 2021, the Center notified the commencement of Panel Appointment process.
The Center appointed Taras Kyslyy as the sole panelist in this matter on October 11, 2021. 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 BackgroundThe Complainant is a Swiss company established in 1891 and producing knives including those known as “Swiss Army Knife” with current daily production of about 88,000 items. In addition to the knives, the Complainant also produces watches, luggage and, perfumes. The Complainant has sales outlets in 120 countries and distribution subsidiaries in many countries, namely Chile, Peru, Bolivia, Brazil, China, India, Japan, Mexico, Poland, United States, and Canada. The Complainant is made up of 2,100 employees around the world, including 950 people at the head office. The annual worldwide turnover amounts to CHF 500 million.
The Complainant owns several trademark registrations for the combination of words “swiss army” including for instance International registration No. 691820A SWISS ARMY, registered on August 20, 1997.
The Complainant also owns several domain names including the trademark SWISS ARMY for example, the domain name
The disputed domain name was registered on June 22, 2018, and resolved to a website prominently featuring the Complainant’s trademarks and offering for sale various products of the Complainant and its competitors. Since at least May 9, 2020, the disputed domain name resolves parking Wordpress webpage.
The Complainant sent a cease and desist letter to the Respondent on April 9, 2020, however the Respondent never replied.
The Complainant also provided correspondence with the Respondent offering the disputed domain name for sale at EUR 20,000.
5. Parties’ Contentions A. ComplainantThe disputed domain name is identical or confusingly similar to the Complainant’s trademark. It is unlikely that the addition of the word “shop” will lessen the confusing similarity with Complainant’s trademark. Moreover, the suffix “shop” is descriptive when applied to a website for a virtual store.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known under the trademark SWISS ARMY nor under the term “swiss army shop”, he was only selling the Complainant’s goods VICTORINOX and its competitors’ products on the attached website. The website at the disputed domain name provided no proper disclosure of the relationship of the reseller to the trademark owner. The Complainant has never licensed or otherwise authorized the Respondent to use the Complainant’s trademark as a domain name in particular for conducting Internet users to competitive products. The use of the disputed domain name which intentionally trades on the fame of the Complainant and its trademark cannot constitute a bona fide offering of goods and services
The disputed domain name was registered and is being used in bad faith. Taking into account the notoriety of the Complainant and its trademark and the fact that the Respondent is offering for sale the Complainant’s products, it appears that the Respondent knew about its existence and registered the disputed domain name with the objective to make money with it. The Respondent’s use of the disputed domain name is simply to attract those who might be interested in the Complainant’s trademark and to direct them to other products some of which directly compete with the products sold by the Complainant and all of which provide the Respondent with income.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. In its informal response, the Respondent stated it was not interested in the disputed domain name and offered it for sale.
6. Discussion and Findings A. Identical or Confusingly SimilarAccording to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the TLD “.com” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the entirety of the Complainant’s trademark.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that in the present case the addition of term “shop” would not prevent finding the confusing similarity.
Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones, TheDotCafe,/ Victoria McCann / Robert Hope,
WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademark by the Respondent.
According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names reflecting trademark.
The Panel finds that the Respondent failed to satisfy at least the second and the third above requirements offering for sale products of the Complainant’s competitors and not disclosing its actual relationship with the Complainant, and thus failed to pass the Oki Data Test. The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide.
The disputed domain name incorporates the SWISS ARMY trademark of the Complainant in its entirety and it is its distinctive element. Since SWISS ARMY is a well-known trademark, and the disputed domain name is associated with the website offering SWISS ARMY products, the Panel finds that the Respondent must have been aware of the SWISS ARMY trademark when it registered the disputed domain name, and that it chose to target the SWISS ARMY trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich,
WIPO Case No. D2016-1513).
The Respondent also has no rights or legitimate interests in the disputed domain name then resolving to a parking Wordpress webpage (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,
WIPO Case No. D2016-1302).
Noting the high risk of implied affiliation between the disputed domain name and the confusingly similar well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed,
WIPO Case No. D2019-2897).
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and well-known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,
WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Switzerland and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith.
According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark 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 trademark 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 website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
In this regard, the Panel finds that at least the first and the fourth of the above scenarios apply to the present case where the disputed domain name was offered for sale at unreasonable price and also was resolving to a website featuring the Complainant’s trademarks and making false impression of being official Complainant’s website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The above confirms the bad faith.
Although at the time of this decision the disputed domain name resolves to parking Wordpress webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),
WIPO Case No. DPW2017-0003).
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,
WIPO Case No. D2009-1022).
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Taras Kyslyy
Sole Panelist
Date: October 22, 2021