WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Victorinox AG v. Whois privacy services provided by DomainProtect LLC / Domain Administrator, Konsulta d.b.a. Brandcreation.com

Case No. D2018-0475

1. The Parties

The Complainant is Victorinox AG of Ibach, Switzerland, represented by Isler & Pedrazzini AG, Switzerland.

The Respondents are Whois privacy services provided by DomainProtect LLC of Saint-Petersburg, Russian Federation / Domain Administrator, Konsulta d.b.a. Brandcreation.com, Domain Administrator of Saint Petersburg, Russian Federation, self-represented.

2. The Domain Name and Registrar

The disputed domain name <swiss-army-knife.com> (the “Disputed Domain Name”) is registered with OPENNAME LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 5, 2018, 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 March 6, 2018, 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 March 8, 2018.

The Center verified that the Complaint together with the amendment to the Complaint/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 March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. The Response was filed with the Center on March 31, 2018.

The Center appointed Nick J. Gardner as the sole panelist in this matter on April 11, 2018. 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 relevant facts can be summarized as follows.

The Complainant is incorporated in Switzerland. The Complainant manufactures and distributes knives on an international basis. Its leading product range is a range of folding pocket knives with multiple blades and tools which are branded and sold under the term “swiss army knife”. It owns trademark registrations for the words “swiss army” in relation to knives – for example International Registration No. 691820A SWISS ARMY, registered on June August 20, 1997, claiming protection for goods in Class 8, for “hand-operated hand tools and implements; cutlery” in many countries around the world, including United States for Amercia (“United States”), the European Union, China, and Russian Federation. These trademarks are referred to below as the “Swiss Army” trademark.

In 2005 the Complainant acquired another Swiss company Wenger S.A., which also produced similar knives for the Swiss Army, and since that date it has been the only manufacturer and supplier of multi-purpose knives to the Swiss army.

The Disputed Domain Name was registered on May 14, 2017. According to the evidence with the Complaint, it links to a parking page which provides various links to third party websites which appear to offer knives for sale, some of which would appear to relate to the Complainant’s knives and some of which appear to be other types of knife. The Complainant received unsolicited emails on May 15 and 16, 2017 indicating the Disputed Domain Name was for sale and inviting offers for it. The website to which the Disputed Domain is linked also itself contains a link which leads to a form inviting offers to purchase the Disputed Domain Name.

After the Complaint was filed the Respondent sent an e mail date March 30, 2018 to the Complainant which reads as follows “we have started the process of preparing the supplementary filing, but before finishing and sending the text to WIPO we feel obliged to resolve the dispute through negotiation, as a standard practice all around the world. We never received Cease & Desist letters from you so that prevented our negotiation, in any event we believe it is incumbent to make such an offer. We look forward to hearing from you”.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

The Disputed Domain Name is similar to the Swiss Army trademark as it simply adds the descriptive word “knife”.

The Respondent has no rights or legitimate interests in the term “swiss-army-knife”. The Complainant says that term has no other meaning other than in relation to itself and its products and the Respondent has no authorization to use the term.

In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It says the emails it has received (see above) indicate the Respondent only registered the Disputed Domain Name in order to sell it to the Complainant.

B. Respondent

The Respondent makes the following points.

The Complainant’s trademarks are for the words “swiss army” not “swiss army knife”.

The term “swiss army knife” is generic and available for anyone to use.

It says the term “swiss army knife” was coined by American soldiers after World War II. It says that historically, Wenger knives were advertised as the “Genuine Swiss Army Knife” and Victorinox knives as the “Original Swiss Army Knife”. It refers to various online references in support of its case. One of these refers to a legal case which the Respondent says involved a ruling by the court that anyone could use the term “swiss army knife”.

The Respondent says that it is normal to own a generic name and it can use it at its discretion. It says it is in the process of developing a website “devoted to multifunctional IT consulting, a kind of jack-of-all- trades approach, in positive connotation”. It says it would prefer not to disclose details of its “startup”.

It says the emails the Complainant received soliciting offers for the Disputed Domain Name are nothing to do with the Respondent, and such e-mails are commonly generated as scams by third parties. It says the third party links on the website linked to the Disputed Domain Name are automatically generated by its service provider and can easily be blocked.

It concludes its argument with a passage the Panel finds difficult to understand which reads as follows: “If someone enters your home without knocking at the door, but cautiously and all over a sudden, this does not look like pattern of conduct of a legitimate owner, but more likely, a thief, an infringer. It is not ethical to refer to such arguments and “evidences” as impersonal spam and fake emails. As well as not to try to contact the owner, send Cease-and-Desist email, etc., not even to reply to an invitation for amicable negotiations (WIPO Center has a copy of this email).”

The Respondent asks for a finding of Reverse Domain Name Hijacking.

6. Discussion and Findings

Procedural Matters

The Panel notes this is a case where one of the named Respondents (DomainProtect LLC) appears to be a privacy or proxy registration service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent”.

In the present case the Panel finds the substantive Respondent to be Konsulta d.b.a. Brandcreation.com – and references to the Respondent should be understood as being to that person.

Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:

(i) The Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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

The Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s SWISS ARMY trademark. It is established that the addition of a generic or descriptive term (such as here “knife” which is dictionary word describing the Complainant’s products) to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253).Furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity. It accordingly follows that whilst the Respondent is correct that the Complainant’s trademark is for “swiss army” and not “swiss army knife” this does not matter.

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the SWISS ARMY trademark. The Complainant has prior rights in the Swiss Army trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent says that (i) applies and that it registered the Disputed Domain name to use in connection with its planned development of a website “devoted to multifunctional IT consulting”. The Panel adopts the approach described in WIPO Overview 3.0 to this issue, as follows:

“2.2 What qualifies as prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services?

As expressed in UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required.

Acknowledging that business plans and operations can take time to develop, panels have not necessarily required evidence of such use or intended use to be available immediately after registration of a domain name, but the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual.

If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving but should be inherently credible and supported by relevant pre-complaint evidence”.

The Respondent has provided no evidence of any sort to support its case but simply stated it would prefer not to reveal details of its plans. The Respondent has also not even explained who it is or what its business is or why it would wish to develop an IT related website. In these circumstances the Panel rejects the Respondent’s case and holds that the Respondent has failed to establish it has any rights or legitimate interest in the Disputed Domain Name and hence the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

The Respondent’s case is in effect to say that the term “swiss army knife” is generic and it is free to register and use it. The Panel does not accept this argument. The evidence filed by the Respondent does not support this case. Indeed it confirms that the term “swiss army knife” does refer to the Complainant’s products. Thus for example one article in the Respondent’s evidence, describing the United States distributor of these knives, contains the following passage:

“During the 1920s the company imported high-quality cutlery from Germany, but supply problems in the years shortly before the outbreak of World War II prompted Forschner to begin buying cutlery and what was later called the Victorinox Original Swiss Army Knife from a Swiss company named Victorinox. During World War II thousands of American soldiers were stationed in Europe, where they observed that the Swiss Army was equipped with multipurpose pocketknives that the Americans called Swiss Army knives”.

The evidence does show that prior to 2005 there were two manufacturers of “swiss army knives” both suppliers to the Swiss Army and in competition with each other. The Panel does not need to decide what the position in those circumstances was, as it is quite clear that in 2005 the Complainant took over its competitor and since that date has been the only manufacturer of knives bearing the Swiss Army trademark. There is no evidence of any other party manufacturing or supplying such knives.

The Respondent has referred to a court case which it says ruled that the term “swiss army knives” was generic and available to anyone to use. The evidence the Respondent relies on is a reference to this case in an article, and this does not provide proper details of the case or its reasoning. The article in question indicates this was a United States trademark case brought at a date when there was no United States registered trademark and when there were two different manufacturers of knives bearing the Swiss Army trademark. The action was apparently brought against a third party starting to import knives from China. The Panel does not consider that case relevant – the factual position is different today in that the Complainant does now have a United States registered trademark and on the evidence the Complainant is nowadays the only manufacturer of knives bearing the Swiss Army trademark. Whatever the reasoning of the court in that case was, the evidence before the Panel today establishes that the term “swiss army knife” is not generic and relates to the Complainant’s products. Accordingly the Panel rejects the Respondent’s argument that the term “swiss army knife” is generic and available for anyone to use.

The Panel views with considerable skepticism the Respondent’s denial that it was responsible for e-mails sent to the Complainant soliciting an offer to purchase the Disputed Domain Name. The Disputed Domain Name was registered on May 14, 2017, and the emails in question were sent on May 15 and 16, 2017. It defies belief to consider that these emails were independently generated by a third party unconnected with the registrant of the Disputed Domain Name. Looking at the evidence as a whole the Panel on the balance of probabilities does not accept the Respondent’s denial. The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corrobative or third party evidence. The Panel considers this to be such a case. In reaching this conclusion the Panel has also had in mind that the website to which the Disputed Domain Name linked indicated the Disputed Domain Name was for sale. It also seems likely the Respondent’s e mail of March 30, 2018 (set out above) after the Complaint was filed was another attempt to seek an offer from the Complainant to purchase the Disputed Domain Name. Taking all this evidence together the Panel concludes the Respondent registered the Disputed Domain Name because of its obvious relevance to the Complainant and its products and immediately set about trying to encourage the Complainant to make an offer to buy it. The Panel infers that the Respondent would only have been prepared to sell the Disputed Domain Name for a price exceeding its costs of obtaining it.

This amounts to evidence of bad faith registration and use within paragraph 4 b (i) of the Policy being “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name”.

Accordingly the Panel concludes the Disputed Domain Name was registered and used in bad faith and hence the third condition of paragraph 4(a) of the Policy has been 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, <swiss-army-knife.com> be transferred to the Complainant. The Respondent’s request for a finding of Reverse Domain Name Hijacking fails.

Nick J. Gardner
Sole Panelist
Date: April 23, 2018