WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sven Beichler v. chocri GmbH

Case No. D2011-1629

1. The Parties

The Complainant is Sven Beichler of Wermatswil, Switzerland represented by Bernasconi & Bernasconi, Switzerland.

The Respondent is chocri GmbH of Berlin, Germany.

2. The Domain Name and Registrar

The disputed domain name <myswisschoclate.com> (the “Domain Name”) is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2011. On September 26, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On September 26, 2011, Tucows Inc. 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 Respondent of the Complaint, and the proceedings commenced on September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 21, 2011.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 26, 2011. 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

Complainant is the owner of the following trademarks (the “Trademarks”):

- Swiss design trademark registration no. 599122 MY SWISS CHOCOLATE.CH filed on February 9, 2010;

- International image trademark (Madrid Protocol) application no. 1034529 MY SWISS CHOCOLATE.CH filed on February 16, 2010, designating the EU and the United States (“U.S.”) with a priority date of February 9, 2010;

- U.S. design trademark registration no. 3,927,914, registered on March 9, 2011, with a priority date of February 2010.

Complainant is the holder of the domain name <myswisschocolate.ch>.

The domain name <myswisschoclate.com> (the “Domain Name”) since November 8, 2010.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the Domain Name is confusingly similar to the Trademarks, since there is only one letter difference (the missing “o” in the Domain Name). Complainant submits that through extensive marketing it has established its trademark in the memory of the public. Through its website under “www.myswisschocolate.com” Complainant’s customers may create their own chocolate, by choosing from three types of chocolate bars, twelve different flavors and 120 ingredients.

According to Complainant, Respondent has no right or legitimate interest in the Domain Name, since he has no trademark rights (the Panel understands: to my swiss choclate.ch), nor is he an authorized agent or licensee of Complainant’s products, services or trademarks. He has not been commonly known by the Domain Name, there is no use of the Domain Name in connection with the bona fide offering of goods or services, nor is there a legitimate noncommercial or fair use.

Complainant submits that between November 2010 and July 4, 2011, Respondent redirected the Domain Name to its website under “www.chocri.de”, where it advertises goods and services similar to those sold by Complainant.

On February 11, 2011, Complainant sent a letter of summons to Respondent demanding transfer of the Domain Name and the domain name <my-swiss-chocolate.ch> to which no reply was received according to Complainant.

On July 4, 2011, Complainant alleges, Respondent disenabled the redirection to the website under “www.chocri.de” which resulted in the Domain Name connecting to no website at all. Complainant further submits that on July 22, 2011, it sent a second letter demanding transfer of both domain names and that on August 11, 2011, Respondent transferred the domain name <my-swiss-chocolate.com> to a third party.

Complainant puts forward that the Domain Name was registered and used in bad faith since Respondent, as a competitor of Complainant, was and is disrupting its business. Respondent should have been aware of Complainant’s trademark rights, since a simple search of the Swiss trademark register would have revealed those rights. Registering a misspelling of a trademark has been viewed by several panels to constitute bad faith registration and use under the Policy. Complainant also points out that Respondent has registered both the domain name <myswisschoclate.ch> and the domain name <my-swiss-chocolate.com> as evidence of Respondent’s awareness of the Trademarks and of a pattern of abusive domain name registrations.

In relation to the period from July 4, 2011 Complainant asserts that this is a case of passive holding which in accordance with the decision in Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 constitutes bad faith use of the Domain Name, since the holding of the Domain Name by Respondent prevents Complainant from reflecting its Trademarks in a corresponding domain name. The recent transfer of the domain name <my-swiss-chocolate.com> to a third party and the fact that the Domain Name was registered in a period in which Complainant’s advertising and marketing efforts finally started to pay off and the order intake rose sharply are further evidence of bad faith, according to Complainant. Likewise, Respondent’s failure to respond to Complainant’s cease and desist letters is a circumstance which has been considered to constitute bad faith in numerous UDRP decisions, Complainant submits.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Preliminary remarks

Initially, this seemed to this Panel to be a simple and straightforward case of abusive domain name registration, the Respondent having registered the Domain Name well after the registration of the Trademarks, redirecting it to its own website under a different domain name, where it sells competing products and not having responded to letters of summons from Complainant, nor having filed a response and apparently having another, similar domain name transferred to a third party after receiving a letter of summons from Complainant.

Upon scrutiny of the evidence submitted by Complainant, the case became less clear. First, Complainant in the Complaint did not mention that the Trademarks are design marks, consisting of a brown background, with a design consisting of the words “my swiss chocolate ch” in different font sizes, next to a square design (seemingly part of a chocolate tablet), a small white cross (somewhat similar to the one appearing in the Swiss national flag), with a swirl encircling the design and looping around as an underline for the word “chocolate”.

Second, Complainant failed to disclose in the Complaint that the U.S. registration was granted with the disclaimer “No claim is made to the exclusive right to use ‘Swiss chocolate.ch’, apart from the mark as shown”.

Third, Complainant asserts in the Complaint that it has a Community trademark, but provides only an international trademark registration designating the European Union. Therefore, there is no evidence that Complainant is the owner of a Community trademark to “my swiss chocolate.ch”.

Both facts are extremely relevant, both for the finding whether the Domain Name and the Trademarks are confusingly similar and for the findings in relation to rights or legitimate interests and registration and use in bad faith.

In the view of this Panel, deliberately omitting essential facts from the Complaint does not help the case of a Complainant, since it raises the suspicion that the Complainant is trying to “cover up” facts which are unfavorable to its case. Such behavior may in itself be sufficient for a panel to deny the Complaint. After all, when filing a Complaint, the Complainant has to subscribe to the following clause which is part of the model Complaint: “The Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”

Furthermore, Panelists have to do their work in a limited timeframe where, especially in a case like this one where no response is filed, they have to rely on the statements in the Complaint and the evidence provided by Complainant. If Complainant tries to mislead the Panelist as to essential facts, he cannot expect the Panel to decide in his favor.

On balance, the Panelist has decided to give Complainant the benefit of the doubt and not dismiss the Complaint out right for violation of the statement, cited above, in the Complaint, since Complainant has submitted evidence from which the actual facts, referred to above, could be deduced, so that the omission of those facts in the Complaint does not appear to be part of a deliberate attempt to mislead the Panelist.

A. Identical or Confusingly Similar

As set out under paragraph 4 above, the Trademarks on which Complainant relies are (a) a Swiss trademark, (b) a Community trademark, and (c) a U.S. trademark. In relation to the U.S. trademark, the words “my swiss chocolate.ch” are disclaimed which means, in short, that Complainant has no trademark rights to those words per se. Therefore, the U.S. trademark cannot be used as a basis for the Complaint, since this is based on the similarity between the words “my swiss chocolate.ch” in the Trademarks and the Domain Name.

Although no evidence was submitted that a Community trademark has been registered, Complainant did submit an international registration certificate in which the European Union had been designated. An online search by the Panel of the CTM register held by OHIM showed that a CTM was registered under No. 1034529 in the name of Complainant for a figurative trademark conforming to the international registration.

Like the Swiss trademark, the CTM consists of various colours, a complex design and the words “my swiss chocolate.ch”.

Complainant has submitted that:

(a) <myswisschoclate.com> differs only with regard to one single letter and this difference is not perceptible in the English language leading to an identical pronunciation;

(b) Elimination of the letter “o” does not significantly affect the visual impression (presumably: of the alleged similarity of the Trademarks and the Domain Name).

However, in this reasoning Complainant has not taken the visual aspects of the Swiss and CTM trademarks into account.

These result in many more differences than one single letter, of which, indeed, the letter “o” is not the decisive one. For completeness’ sake, the Panel points out that one other difference is the addition “.ch” to the words “my swiss chocolate” in the Swiss trademark, no doubt to underline the Swiss origin of the chocolate, “.ch” being the Swiss ccTLD.

As has been decided in Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279:

“[t]he confusing similarity question can be difficult where a complainant relies on a figurative mark comprising a logo and a descriptive or geographical expression. On one approach, the logo element of the complainant’s mark is ignored in the comparison with the disputed domain name, on the basis that it is normally the words in a figurative mark which convey the mark’s principal meaning, or impression. But where the words in the mark are purely descriptive, or the name of a well-known place, the words alone will not convey any meaning other than the descriptive or geographical one (unless of course the descriptive words have acquired, through use, a secondary meaning denoting the complainant’s particular goods or services – something which has not been alleged in this case).”

As set out, in a case without a response, the Panel has to rely on the statements in the Complaint and the evidence submitted by Complainant. This Panel believes, like many others, that in such default cases, for the sake of efficiency, a Complaint should not be denied because of small misstatements in the Complaint or minor omissions in the evidence. This is not the case here. On the first element, Complainant has failed to argue that and why (1) the design elements might be disregarded, (2) “my swiss chocolate.ch” would be the dominant element and, (3) “.ch” should be disregarded as well.

The Panel is inclined to conclude that Complainant has insufficiently established that the Domain Name is confusingly similar to the Trademarks. This Panel is mindful in this respect of another recent decision in Sven Beichler v. Yang Kyung Won, Lee Sujin, WIPO Case No. D2011-0535, in which the earlier panel, on the facts and arguments as specifically presented in that case, found sufficient indications in the file of confusing similarity between the trademarks (apparently the same as the Trademarks) and the domain name <myswisschocolate.com> under dispute therein. In each case, panels must reach their conclusions in response to the specific pleadings and record before them. To complete this Panel’s findings, the Panel will review the merits under the second element of the Policy.

B. Right or Legitimate Interest

Under paragraph 4(a)(ii) of the Policy, Complainant should prove that Respondent has no rights or legitimate interests in the Domain Name. Here, it should be recognized that the element “my swiss chocolate.ch” on which Complainant relies is a descriptive term.

As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions under Question 2.2, the fact that a domain name is comprised of a dictionary word or phrase is in itself insufficient to conclude that a respondent has no rights or legitimate interests. In a case like this, where no Response has been submitted, it would be sufficient for Complainant to make a prima facie case that Respondent has no rights or legitimate interests in the descriptive element of the Trademarks.

Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase). If, however, the circumstances of the case indicate that Respondent in fact attempts, through the registration and use of the Domain Name, to ride on the coat-tails of the Trademarks in order to benefit from their power of attraction, reputation and prestige, this would be evidence of cybersquatting (see e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 and Champagne Lanson v. Development Services/MailPlanet.com Inc., WIPO Case No. D2006-0006)

The Panel considers that a prerequisite for the latter finding in a case like the present is that Complainant provides evidence of the status and fame of the Trademarks and, in particular, shows that the descriptive element “my swiss chocolate.ch” has acquired secondary meaning. Complainant has stated that it established its trademarks “during some time through extensive advertising and marketing efforts as a chocolate manufacturer in the memory of the interested public”. The Panel notes that a mere nine months have lapsed between the registration of the Trademarks and the registration of the Domain Name, and that this in itself is a short period for any trademark to have acquired secondary meaning, although this is not impossible. In order to demonstrate that this is the case, Complainant should provide evidence such as length and amount of sales under the Trademarks, the nature and extent of advertising, consumer surveys and media recognition. However, Complainant has not provided any such evidence and, in fact, no evidence at all of the reputation and acquired distinctiveness of the Trademarks. Since Complainant has not submitted other compelling evidence relevant to this aspect, Complainant has not demonstrated that Respondent registered and used the Domain Name to trade off Complainant’s rights in the Trademarks.

In addition, the Domain Name originally referred to the website “chocri.de” which according to the Complaint advertises goods and services of the type offered by Complainant. In fact, the Panel observes that the webshop under “chocri.de” where one can order individualized chocolate pre-dates the similar webshop of Complainant under <myswisschocolate.ch> by some two years. Therefore, at least until July 4, 2011, the Domain Name apparently was used in connection with a purpose relating to its relied-upon descriptive meaning. The fact that the Domain Name at present does not connect to a website is in itself insufficient to come to a different conclusion.

Complainant having failed to establish the required facts on these two points, the Panel concludes that Complainant has not demonstrated that Respondent does not have rights or legitimate interests in the Domain Name and that the Complaint should be denied, since Complainant has thereby not provided the required evidence under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Since the Complaint is denied on the first element, there is no need to discuss the third element.

7. Decision

For the foregoing reasons, the Complaint is denied.

Wolter Wefers Bettink
Sole Panelist
Dated: November 17, 2011