The Complainant is Swissquote Group Holding SA of Gland, Switzerland, represented internally.
The Respondent is Swissquote Group Holding Ltd of Gland and Zurich, Switzerland.
The disputed domain name <swissquote.com.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center”) on October 18, 2012. On October 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 2012, 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 for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 26, 2012.
The Center verified that the Complaint together with the amendment 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2012.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on November 29, 2012. 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.
The Complainant is a Swiss company offering financial services and information, and on-line banking, notably through its active “swissquote.ch” webpage. According to the Complaint, the Complainant has held a registered Swiss Trademark for SWISSQUOTE since 1998, in various classes, including Class 36 – “services financiers” (financial services).
The Complainant also registered semi-figurative trademarks whose verbal element is “Swissquote” in Switzerland in 2000, which mark has been extended to Germany, France and Italy; evidence of this Trademark is submitted in the Annexes to the Complaint. The Complaint also states that the Complainant has requested the extension of this trademark to the European Union.
Little is known about the Respondent; the amendment to the Complaint states that “[t]o this day, the Complainant has been unable to identify precisely the Respondent”. It appears that the disputed domain name was registered on December 10, 2010, through a Colombian registration service called “Co. Registro”. The “nombre del registrante” is listed as “Swissquote Group Holding Ltd.”1 The address used in the registration is actual address of the Complainant in Gland, Switzerland.
The Complaint, as amended, asserts that the owner of the disputed domain name has registered it without authorization of any kind from the Complainant; that the disputed domain name contains the Complainant’s trademarks, and that the use of a phoney registration name that is almost identical to the Complainant’s name together with the listing of the Complainant’s address as the registrant’s is evidence of bad faith use and registration.
The Complainant also alleges that the unknown registrant of the disputed domain name has incorrectly implied that it was one of the Complainant’s employees.
Further, the Complainant alleges that the fact that the disputed domain name currently redirects to the “www.swissquote.ch” website of the Complainant “shows that the Respondent knows about Swissquote and its services and only intends to sell the domain name to Swissquote”.
The Respondent did not reply to the Complaint or its contentions
The disputed domain name contains the entirety of the Complainant’s trademark; the addition of domain suffixes does not dispel the identicalness and confusing similarity of the disputed domain name with the Complainant’s marks. The first element of paragraph 4(a) of the Policy is proven.
The Respondent has not replied to the Complaint, and there is no evidence or indicia in the case file that it has any rights or legitimate interests in trademarked word “Swissquote”, or is known by that name, with the exception of the fact the Respondent registered the disputed domain name identifying itself as “Swissquote Group Holding Ltd.”, a slight variation on the Complainant’s name (“Ltd.” instead of “S.A.” at the end). The Complainant asserts that this is a slightly inaccurate rendition of its name and, in any event, the person making use of this name for the disputed domain name’s registration had no authority to do so, such that this use of the Complainant’s name (and address) in the registration of the disputed domain name is further indicia of bad faith and subterfuge.
The Complainant adds that, to the best of its knowledge, the Respondent has not registered any trademark using the term “Swissquote” in Colombia, and clearly affirms that it has accorded no rights in its trademarks to the Respondent.
Under these circumstances, and in the absence of any explanation or reply from the Respondent, the Panel finds that the Complainant has met its burden under the second element of paragraph 4(a) of the Policy.
The Complaint is most laconic and only satisfied formal requirements of the Policy once it was amended following a notification from the Center. The Complainant’s assertions that the Respondent tried to pass itself off as the Complainant’s employee and “only intends” to sell the disputed domain name are not fully proven or substantiated. There is, however, sufficient evidence and indicia in the file of the Respondent’s bad faith registration and use. In particular, having the disputed domain name resolve to the Complainant’s website does demonstrate awareness on the part of the Respondent of the Complainant’s prior rights.
It is also pertinent that the Complainant’s business and trademarks have existed for more than 10 years prior to the Respondent’s registration of the disputed domain name. All these factors, together with those listed above are sufficient in the Panel’s view to demonstrate bad faith registration, and this conclusion is reinforced by the factors listed below.
As to bad faith use, it appears that the disputed domain name currently redirects to the Complainant’s active website; there is thus a genre of implicit argument that this causes no harm to the Complainant and therefore may not be considered to be bad faith use under the Policy.
But the analysis begs to be taken a little further. First, it is not required that the disputed domain name cause actual harm to the Complainant for it to be used in bad faith. It is well established since the path breaking case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that the passive holding of a website can constitute bad faith use under the Policy, even without an active attempt to sell the disputed domain name. Here, the disputed domain name is not held entirely passively, but has curiously been redirected to the Complainant’s website. The registration of the disputed domain name with a view to its use or to its sale to the Complainant is a logical and real supposition on the facts here, and it is alleged by the Complainant – but it is not proven by actual evidence.
There is, however, no good faith explanation why a person without demonstrated rights would register a domain name containing a trademark falsely using the trademark holder’s address and, essentially, its name for the registration. The consensus view of panelists is that the concealment of the identity of the Registrant is one of the factors that can infer bad faith use; under the circumstances here it is quite appropriate that this bad faith inference be drawn. The redirection of the disputed domain name to the trademark holder’s legitimate website (which redirection can, of course, be changed) is unusual but also unauthorized and does not here diminish the unrebutted inference of bad faith use. The Complainant accordingly has proven the third element of paragraph 4(a) of the Policy.
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 <swissquote.com.co> be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: December 5, 2012
1 The disputed domain name <swissquote.com.co> registration is sponsored by the Registrar.