The Complainant is Wenger S.A., Switzerland, represented by Isler & Pedrazzini AG, Switzerland.
The Respondent is Bagtology co., ltd., Karnnithi Leenithiroj, Thailand.
The disputed domain name <swissgear.online> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 6, 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 March 9, 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 amendment to the Complaint on March 9, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on April 17, 2020. On April 18, 2020, the Center received an informal email from the Respondent. Between April 23 and 27, 2020, the Center received several informal communications from the Parties. On April 27, 2020, the Center notified the Parties that it was proceeding with the Panel appointment process.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 5, 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.
The Complainant is a private joint stock company organized and established under Swiss law and is based in the town of Delément, in the Canton of Jura, Switzerland. The Complainant manufactures, promotes, sells and distributes Swiss quality watches, as well as travel and business gear. The Complainant is part of the Victorinox Group which produces and distributes Swiss Army knives and related products.
The Complainant owns several registrations for SWISSGEAR, including those listed below:
- Swiss Registration No. 680267 for SWISSGEAR filed on October 28, 2015, and registered on November 9, 2015;
- Swiss Registration No. P-479380 for SWISS GEAR (figurative) filed on April 27, 2000, and registered on December 7, 2000;
- Swiss Registration No. 602460 for SWISSGEAR BY WENGER filed on June 21, 2010, and registered on June 29, 2010;
- Swiss Registration No. 679254 for SWISSGEAR BY WENGER filed on October 13, 2015, and registered on October 16, 2015;
- International Registration No. 978731 for SWISSGEAR registered on August 20, 2008;
- International Registration No. 1321437 for SWISS GEAR (figurative) filed on August 9, 2016; and,
- International Registration No. 1241212 for SWISSGEAR (figurative) registered on October 29, 2014.
The disputed domain name <swissgear.online> was registered on August 18, 2019. At the time the Complaint was filed the disputed domain name resolved to a website which appeared to offer for sale unauthorized products of the Complainant.
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered trademarks for SWISSGEAR. The disputed domain name contains the Complainant’s trademark in its entirety and the addition of the generic Top-Level Domain (“gTLD”) “online”, which does not distinguish it from the Complainant’s trademark.
The Complainant contends that the Respondent does not own any rights or legitimate interests in the disputed domain name. The Respondent has never received authorization or a license to use the Complainant’s trademark. The Respondent is not using the disputed domain name in association with a bona fide offering of goods and services. At the time the Complaint was filed, the disputed domain name resolved to a website which offered for sale unauthorized counterfeits of the Complainant’s products. Further, the Respondent has designed the website in a manner which suggests it is a distributor of the Complainant’s products.
The Complainant further submits that the Respondent has registered and is using the disputed domain name in bad faith, as it is engaged in the sale of unauthorized counterfeit products of the Complainant. The design of the Respondent’s website creates the impression that the Respondent is an authorized distributor of the Complainant. This is clear evidence that the Respondent has registered and is using the confusingly similar domain name for the purpose of trading on the goodwill and reputation of the Complainant, all of which is evidence of bad faith under the Policy.
The Respondent did not formally reply to the Complainant’s contentions. In several informal communications, the Respondent indicated, inter alia, that it intended to delete the disputed domain name, had registered the disputed domain name for a potential client, and offered to transfer the disputed domain name to the Complainant.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant does have trademark rights in the trademark SWISSGEAR by virtue of the registrations listed in paragraph 4 of this Decision.
The Panel finds that the disputed domain name is identical to the Complainant’s trademark as the disputed domain name wholly incorporates the Complainant’s SWISSGEAR trademarks. The addition of the gTLD “online” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the SWISSGEAR trademarks as noted in section 4 of this Decision. The Complainant’s trademarks are well-known in Switzerland and internationally, based on the voluminous sales and promotion of the Complainant’s products over many years. The evidence filed in this proceeding, which was not contested by the Respondent, supports the fact that the Respondent was fully aware of the Complainant’s trademark. The potential sale of counterfeit products bearing the Complainant’s trademark cannot be considered a bona fide offering of goods and services under the Policy.
Furthermore, in the circumstances of this case, the composition of the disputed domain name, incorporating the Complainant’s trademark, carries a risk of implied affiliation and does not constitute fair use as it effectively impersonates or suggests sponsorship or enforcement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
In this situation, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
The Respondent registered the disputed domain name to attract consumers to its website which appears to feature counterfeit SWISSGEAR-branded products. The Respondent has designed the website in a manner to mislead consumers into thinking that it is an authorized or licensed distributor of the Complainant. The Respondent’s website uses the Complainant’s word mark SWISSGEAR and the related design trademarks (listed in paragraph 4 above) all for the purposes of deceiving users into purchasing unauthorized goods. The registration of the disputed domain name was clearly abusive, noting the Complainant’s trademarks were well known long before the registration of the disputed domain name and the use of the disputed domain name targeting the Complainant’s trademark. The circumstances of this case justify a finding of registration and use in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) 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 <swissgear.online> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: May 13, 2020