The Complainant is Bucherer AG of Luzern, Switzerland, represented by Wild Schnyder AG, Switzerland.
The Respondent is Soraya Lacheb of Geneva, Switzerland, represented by Etude Carrel & Rey, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with CCI REG S.A. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2015. On July 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2015.
On August 11, 2015, the Respondent’s legal counsel filed with the Center a copy of the facsimile message sent to the Complainant on the same date, acknowledging the Complainant’s rights and inviting the Complainant to withdraw its Complaint.
On August 17, 2015, the Center acknowledged receipt of the Respondent’s facsimile and informed the Complainant of the possibility to submit a suspension request by August 19, 2015 to explore a possible settlement between the parties. No suspension request was filed by the Complainant. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on August 20, 2015.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on August 28, 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 well-known jewelry company which was founded in 1888 by Carl-Friedrich Bucherer in Luzern, Switzerland. The family-run business is in its third generation and currently ran by Jörg G. Bucherer, who is the Chairman of the Board of Directors. The Complainant has around 1,200 employees across Switzerland.
The Complainant owns several trademarks consisting in whole or in part of the word “Bucherer”, such as:
- BUCHERER (wordmark CH 2P-326249), registered in Switzerland under Class 14 of the Nice Classification with a priority date as of June 14, 1983;
- BUCHERER (wordmark CH 2P-418777), registered in Switzerland under Classes 37 and 42 of the Nice Classification, with a priority date as of March 30, 1995;
- BUCHERER (wordmark IR 743 783), claiming protection in various countries under Classes 14, 35, 37 and 42 of the Nice Classification, registered on September 6, 2000.
The Complainant also owns the domain names and .
The Respondent runs a business under the trade name “LACHEB”, entered in the Register of Commerce of the State of Fribourg on May 28, 2015, in the fields of jewelries, watches, clothing, leather goods, gold, perfumes and cosmetic products. Prior to running its business, the Respondent was already active in the watch industry in a company called “Watch4me SA”, seated in Fribourg, Switzerland, then renamed “Art & Deco SA”.
The Respondent issues invoices related to the sales of watches by using the trademark and company name “Bucherer” and stating that payment shall be made “in favour of BUCHERER lacheb”.
The Respondent registered the disputed domain name on July 2, 2015 and seems to use the email address “info@” to perform its activities.
On August 11, 2015, acting through its legal counsel, the Respondent sent a letter to the Complainant, in which it acknowledged the Complainant’s rights in the disputed domain name. No settlement or request to transfer the disputed domain name however took place as a follow-up to such letter. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical to its trademarks BUCHERER, its company name and its domain names.
The Complainant considers that the Respondent has not been commonly known by the disputed domain name and has no connection to a natural or legal person named “Bucherer” and therefore no rights or legitimate interests in a domain name containing the term “Bucherer”.
In having registered the disputed domain name , the Respondent commercially benefits from the likelihood of confusion resulting from the identity between the disputed domain name and the Complainant’s trademark and corporate identity. The use of invoices labelled under the Complainant’s BUCHERER trademark and company name as well as the email address “info@” are another indication of the Respondent’s bad faith. B. Respondent
On August 11, 2015, acting through its legal counsel, the Respondent sent a facsimile to the Complainant, in which it acknowledged the Complainant’s rights in the disputed domain name. No settlement or request to transfer the disputed domain name however took place. 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 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 several trademarks consisting of the word “Bucherer”.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark for purpose of the first element of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises,WIPO Case No. D2007-1629).
The applicable country code Top-Level Domain (“.co”) is disregarded under the first UDRP element confusing similarity test.
Such happens to be the case here. As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As 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 a 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 consensus 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, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant is the owner of the BUCHERER trademark. The Complainant has no business or other relationships with the Respondent. As a result, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, it was up to the Respondent to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements (see paragraph 4(c) of the Policy):
(i) Before any notice to it of the dispute, the Respondent used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent is commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, the Respondent did not respond to the Complainant’s allegations and therefore did not rebut the Complainant’s prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name. To the contrary, on August 11, 2015, the Respondent, acting through its legal counsel, acknowledged that the Complainant had rights in the disputed domain name. Such a statement is a clear admission that the Respondent has no rights or legitimate interests in the disputed domain name .
In light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, for a complaint to succeed, the panel must be satisfied that the domain name has been registered and is being used in bad faith.
Bad faith requires a respondent to be aware of the complainant’s trademarks. In the present case, there is no doubt that the Respondent was fully aware of the Complainant’s trademarks and of its corporate identity when it registered the disputed domain name considering the fact that it has been active in the fields of jewelry and watches over the past years and runs its business in the same fields as the Complainant in Switzerland.
The Complainant provides ample evidence that the disputed domain name was registered with the sole purpose of benefitting from the Complainant’s reputation. The email address used, “info@”, as well as the invoices sent to the Respondent’s clients bear the Complainant’s BUCHERER trademarks. As a result, in the Panel’s opinion, there is no doubt that the disputed domain name was solely registered to benefit from the Complainant’s reputation and let users mistakenly believe that they were concluding with the Complainant.
The Panel notes that the disputed domain name resolves to a non-active website, more specifically a registrar parking site. The passive holding of the disputed domain name and the use of the above emails are evidence of bad faith use of the disputed domain name.
As a result, the Panel considers paragraph 4(a)(iii) of the Policy to be fulfilled. 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.
Philippe Gilliéron
Sole Panelist
Date: September 7, 2015
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