The Complainant is Swiss Prime Site AG, Switzerland, represented by Weinmann Zimmerli, Switzerland.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Irini Philippou, Saint Vincent and the Grenadines. 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 2, 2020. On October 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2020, 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 8, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 9, 2020. The Center verified that the Complaint together with the amended 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 October 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2020. The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on November 26, 2020. 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 leading Swiss real estate company. It holds a real estate portfolio to the value of approximately CHF 11 billion. The Complainant holds the Swiss Trademark No. 681034, SWISS PRIME, filed on July 1, 2015 and registered on December 1, 2015, in international classes 9, 16, 35, and 36. In addition, the Complainant is the registered owner of a number of Swiss trademarks that incorporate the terms “swiss prime”, for real estate and associated management and financial services in international classes 35 and 36. These are figurative marks No. 681033, SWISS PRIME ANLAGESTIFTUNG, filed on July 1, 2015 and registered on December 1, 2015 in classes 9, 16, 35, and 36; No. P-467748, SWISS PRIME SITE, filed on November 18, 1999 and registered on December 15, 1999 in class 36; No. 701422, SWISS PRIME SITE IMMOBILIEN, filed on December 23, 2016 and registered on April 24, 2017 in classes 9, 16, 35, and 36; and No. 706120, SWISS PRIME SITE SOLUTIONS, filed on February 22, 2017 and registered on August 17, 2017 in classes 9, 16, 35, and 36. The figurative aspect of the marks concerns in particular a stylized representation of a high-rise building and other abstract elements. The disputed domain name was registered on May 27, 2020. According to the Complaint, the Respondent sent emails in the name of a fictitious employee of the Complainant and offered – in the name of the Complainant as well – financial services on a platform operated under the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant is the holder of the Swiss Trademark SWISS PRIME. The Complainant is also the registered owner of a number of Swiss trademarks that incorporate the terms “swiss prime” and “swiss prime site” and in each case some figurative elements. The Complainant’s business activities over 20 years or so and the associated signs SWISS PRIME and SWISS PRIME SITE have, according to the Complainant, an outstanding reputation. They are said to enjoy a very high degree of recognition in Switzerland and are immediately associated with the Complainant by the Swiss public. According to the Complainant, the additional graphical elements do not, according to well-established practice, affect the relevant test of similarity. According to the Complainant, the disputed domain name and the Complainant’s trademark SWISS PRIME are therefore identical. Regarding the SWISS PRIME SITE trademarks, the Complainant says there is a strong similarity because the disputed domain name incorporates the first two and dominant parts of these trademarks. The matter is not affected by the fact that the marks of the Complainant incorporate a geographical and a common laudatory term, according to the Complainant. The latter also points out that the marks are not solely registered for real estate located in Switzerland. In any case, the signs are said to have acquired a high level of actual or acquired distinctiveness with the public in Switzerland. The association between the Complainant and the marks is also proven by the fact the Respondent chose to incorporate the two terms “swiss” and “prime” in the disputed domain name. That would not have been done by the Respondent was it not for the fact that the relevant marks are distinctive in the minds of the Swiss public. In other words, according to the Complainant, the Respondent precisely registered the disputed domain name because the (Swiss) public recognizes SWISS PRIME as a reference to the Complainant. Further, according to the Complainant, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. According to the Complainant, it is in fact the case that the Respondent has registered and used the disputed domain name to unlawfully profit from the extensive reputation of the Complainant and its trademarks. By sending fraudulent emails using an email address that incorporates the disputed domain, the Respondent pretends that an online trading platform she operates is part of the Complainant’s business. The Complainant also says that the Respondent is not commonly known by the disputed domain name and has not acquired any trademark rights to the term “swiss prime”. Neither is the Respondent making a legitimate noncommercial or fair use of the disputed domain name because she is fraudulently operating an online trading platform from a website associated with the disputed domain name. More specifically, according to the Complainant, the Respondent has used the registration of the disputed domain name to send fraudulent emails using the Complainant’s SWISS PRIME trademark and Zurich branch address to pretend that her online trading platform is part of the Complainant’s business. The Respondent used to the disputed domain name to send emails to impersonate an officer of the Complainant corporation. Accordingly, there is, according to the Complainant, no doubt that the Respondent knew about the Complainant’s existence when she registered the disputed domain name and that she registered exactly that domain name in order to benefit from the Complainant’s extensive reputation. Therefore, it is, according to the Complainant, self-evident that the disputed domain name was registered, and the associated email server was established, in bad faith. The disputed domain name is used in bad faith because by false pretenses, the Respondent tries to benefit from the Complainant’s extensive reputation and to defraud third parties for her own commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name is identical to the Complainant’s trademark SWISS PRIME. According to the section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Panel assessment of identity or confusing similarity involves comparing the (alpha numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. The disputed domain name is, strictly speaking, not identical to the Complainant’s SWISS PRIME registered trade marks insofar as each of these marks incorporates a figurative element, and a number of the marks also use the terms SWISS PRIME SITE rather than SWISS PRIME simpliciter. Nonetheless the terms SWISS PRIME are a significant and obvious part of the Complainant’s trademarks, and those terms are immediately recognizable in the disputed domain name. They form the only relevant part of that domain name and therefore the disputed domain name brings the registered trademark of the Complainant directly to mind. The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. Therefore the disputed domain name is confusingly similar to the Complainant’s SWISS PRIME figurative trademarks. B. Rights or Legitimate Interests There is nothing before the Panel that suggests that the Respondent has any rights or legitimate interests in the disputed domain name or indeed the SWISS PRIME marks, whether as simple word marks or combined with a figurative element. The only evidence placed before the Panel indicates that the Respondent has relied on the registration of the disputed domain name to engage in an attempt to defraud customers of the Complainant by impersonating an officer of the Complainant. This clearly constitutes the exact opposite of the kind of facts and circumstances might result in recognition of a right or legitimate interests in a domain name. Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith There can be little doubt on the material placed before the Panel by the Complainant, that the Respondent acquired the disputed domain name with a view to implementing a scam or fraud. The Respondent attempted to impersonate an officer of the Complainant by using an email address which incorporates the disputed domain name. In any case the Complainant’s marks and the terms “swiss prime” even without the figurative elements, are manifestly well recognized and familiar with Swiss consumers as the Complainant’s business is the largest real estate holding company in that country. By the time in May 2020 that the Respondent registered the disputed domain name, it was inherently improbable that the Respondent was unaware of the Complainant, its business, and its marks. The subsequent use the Respondent made of the disputed domain name further reinforces that conclusion. Since the scheme put in place by the Respondent is fraudulent and critically reliant on the registration of the disputed domain name, there is an overwhelming imputation that the disputed domain name was registered and used in bad faith. Therefore, the Panel holds that the disputed domain name was registered and used 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 William A. Van Caenegem
Sole Panelist
Date: December 10, 2020
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