WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Credit Suisse Group v. Milanes-Espinach, Fernando and Milanes-Espinach, SA

Case No. D2000-1376

 

1. The Parties

The Complainant in these Administrative Proceedings is Credit Suisse Group, a joint stock company, incorporated and existing under the laws of Switzerland with its principal place of business at Paradeplatz 8, 8001 Zürich, Switzerland.

The Respondents in these Administrative Proceedings are Milanes-Espinach, Fernando and Milanes-Espinach S.A., Pops Curridabat 300 M. Sur, 100 M. Este Y 200 M.S Curridabat, San Jose 1000, Costa Rica.

 

2. The Domain Name and Registrar

This dispute concerns the domain name "creditswiss.net". The registrar with which the domain name is registered is Network Solutions, Inc. ("the Registrar").

 

3. Procedural History

On October 12, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on October 16, 2000, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules").

On October 27, 2000, the Center sent a Request for Register Verification to the Registrar and on October 29, 2000, the Registrar confirmed that the said domain name "creditswiss.net" was registered through the Registrar, that the Second Named Respondent was on that date the current registrant of the said domain name, that the First Named Respondent was the administrative and billing contact for the said registration, that the Registrar's 5.0 service agreement applies to the said registration and that the said registration is in active status.

In accordance with paragraph 4(a) of the Rules and paragraph 5 of the Supplemental Rules, the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment in the required amount had been made by the Complainant.

On November 14, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name "creditswiss.net" to the Respondents by Post/Courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondents that these Administrative Proceedings had commenced on November 14, 2000, and that the Respondents were required to submit a Response to the Center on or before December 3, 2000.

No Response was received from the Respondents by the due date or at all.

On December 6, 2000, the Center sent a Notification of Respondent Default to the Respondents and indicated that as the Complainant had designated a single member administrative panel, the Center would appoint a panelist from its published list.

On December 14, 2000, the Center invited James Bridgeman to act as Administrative Panel in these Administrative Proceedings and on December 20, 2000, having received a Statement of Acceptance and Declaration of Impartiality from said James Bridgeman, the Center proceeded to appoint this Administrative Panel. On the same date, the case file was transferred to this Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.

On considering the Complaint, this Administrative Panel was not convinced that the Complainant had satisfied all the requirements of paragraph 4(a) of the Uniform Policy primarily due to the brevity of the content of the Complaint. Nonetheless this Administrative Panel came to the view that it was highly likely that the Complainant could satisfy each of the tests in paragraph 4 of the Policy upon the submission of further arguments and/or evidence. In these unusual circumstances, this Administrative Panel considered the suggestion made by the Administrative Panel in Creo Products Inc. v. Website In Development, (WIPO Case No. D2000-1490, January 19, 2001) where it was suggested by the learned panelist as follows:

"6.18. There may be situations in which an administrative panel considers that the complainant has not proved that the complaint satisfies all the requirements of the Uniform Policy, but that it is highly likely the complainant could do so upon the submission of further arguments and/or evidence. In this situation, it appears to this Administrative Panel that, rather than dismissing the complaint without prejudice, the better approach is to utilize the provisions of Rule 12 of the Uniform Rules, and request further statements and/or documents from either or both of the parties."

This Administrative Panel requested further submissions from Complainant on the allegations that the Respondents had no rights or legitimate interest in the domain name and that the said domain name was registered and is being used in bad faith.

On February 23, 2001 the Parties were advised by the Center that the Complainant was allowed fourteen days to furnish detailed argument and substantive evidence on these points. The Respondents were allowed a further five days to reply to these further submissions.

On February 28, 2001, the Complainant furnished further submissions. Once again there was no response from the Respondents.

 

4. Factual Background

The Complainant is a joint stock company, incorporated and existing under the laws of Switzerland with its principal place of business at Paradeplatz 8, 8001 Zürich, Switzerland and carries on an international business in financial services throughout the world. It is the owner of many registrations throughout the world, for the trademark and service mark "CREDIT SUISSE" and other trademarks and service marks incorporating the words "credit" and "suisse" in combination.

There is very little information available relating to the Respondents. According to the Registrar's WHOIS database, the Respondents have an address at Pops Curridabat 300 M. Sur, 100 M. Este Y 200 M.S Curridabat, San Jose 1000, Costa Rica. The First Named Respondent is the administrative and billing contact for the registration of the said domain name. The Second Named Respondent is the registrant of the said domain name.

 

5. Partiesí Contentions

A. Complainant

The Complainant has requested that this Administrative Panel should direct that the said domain name be transferred to the Complainant and alleges that:

i. the said domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii. the Respondents have no rights or legitimate interests in respect of the domain name; and

iii. the said domain name was registered and is being used in bad faith.

In support of this claim, the Complainant stated that the Complainant is the owner of the world famous trademark " CREDIT SUISSE", which has been registered all over the world. The Complainant has submitted a twelve-page list of trademark and service mark registrations owned by and applications made by the Complainant throughout the world. The Complainant submitted that these registrations relate to the provision of goods and services within the activities of an internationally active bank and financial institute.

"CREDIT SUISSE" is also the name of the Complainant, which the Complainant claims is protected under the laws of Switzerland as well as based on Art. 8 of the Paris Convention, to which most countries in the world adhere.

The Complainant submitted in the Complaint that the said domain name consists essentially of the words "credit" and "swiss", and the Respondents have simply adopted the Complainant's name and trademark and used the English spelling of the French word i.e. "swiss", instead of "suisse"). The Complainant further submitted that it offers its customers services in several languages including English, German and French. In support of this submission, the Complainant submitted a printout of the homepage on its main www site at "credit-suisse.com" which offers visitors the option of accessing data in these three languages.

The Complainant alleged that the said domain name was registered in bad faith, because the name "CREDIT SUISSE" is not a coined word, which could have been found by the Respondents by coincidence. The Complainant submits that the Respondents must have known of the Complainantís business and decided to take advantage of it.

The Complainant submits that the public seeing and using the said domain name "creditswiss.net" will be misled into believing that this is the English language website of the Respondents. The fact that the TLD is ".net" will add to the likelihood of confusion among the public, which would be aware that the Complainant has a large network of affiliate companies and branches throughout the world.

The Complainant further submits that it is the holder of the following domain name registrations: "creditsuisse.com "; "credit-suisse.com"; "creditsuisse.net"; "credit-suisse.net"; "creditsuisse.org"; "credit-suisse.org"; "creditswiss.com"; "credit-swiss.com"; and "credit-swiss.net".

The Complainant submits that it is clear that the Respondents sought out one domain name in this family of domain names, which had not been registered by the Complainant "and grabbed it".

The Complaint did not provide any argument to support its allegation that the Respondents had no rights or legitimate interest in the said domain name. Further submissions were sought from both parties to enable this Administrative Panel to reach the appropriate decision in this case.

In the further submissions the Complainant stated that on November 14, 2000, it had been notified that the Complaint satisfied all formal requirements and noted with surprise that more than three months later, the Administrative Panel was of the opinion that the Complaint of October 12, 2000, did not satisfy all the requirements of the Policy.

In the further submissions the question of the Respondents' rights or legitimate interest was however expressly addressed. The Complainant surprisingly took the view that the Complaint had explained in detail, why the Respondents have no rights or legitimate interest in respect of the domain name and that the domain name was registered in bad faith. Furthermore, the Complainant had already furnished all the evidence possible. The Complainant stated that it is impossible to file direct evidence of the "bad faith" of a person. The Complainant further stated that to its knowledge, the said domain name in issue in these proceedings was not in use, but the Complainant did not provide any evidence of its investigations or inquiries.

In the further submissions, once again, the Complainant essentially relied on the strength of the Complainant's trademark and service mark and argued that the Respondents had no rights or legitimate interest in the domain name because: the domain name "creditswiss.net" is identical to domain name(s) of the Complainant (except for the TLD); the domain name "creditswiss.net" is phonetically identical to domain name(s) of the Complainant; the domain name "creditswiss.net" is a translation of the Complainantís domain name; the domain name "creditswiss.net" is a translation of the Complainantís corporate name ("Swiss" being the English translation of "Suisse"); and, the domain name "creditswiss.net" is confusingly similar to the world-famous trademarks of the Complainant.

The Complainant submitted therefore that the use of the domain name "creditswiss.net" at issue will inevitably lead to confusion with the Complainant company, the trademarks, the domain names and the business of the Complainant. The Complainant further submitted that the Respondents have no connection with Switzerland. The Respondents have no business in the banking, finance or credit field.

On the question of bad faith, the Complainant submitted that this element cannot be proved directly. The Complainant has shown that it is the owner of the world famous name "CREDIT SUISSE", (and itís translations such as "CREDIT SWISS"), which is registered and protected throughout the world as a trademark, as a company name, as a domain name. The Complainant further submitted that it is unthinkable that the Respondents did not know it. It is unthinkable that the Respondents invented the domain name "creditswiss.net". The Complainant submits that the Respondents very obviously checked the registers and found a form of domain name, which had not been registered by the Complainant and grabbed it. The Complainant states that these circumstances clearly point to an act of bad faith.

B. Respondents

There was no Response filed by the Respondents. Neither did the Respondents take the opportunity afforded to furnish further submissions.

 

6. Discussion and Findings

Preliminary Issue Relating to the Request for Further Submissions

The Complainant has stated that on November 14, 2000, it was notified that the Complaint satisfied all formal requirements and noted with surprise that more than three months later, the Administrative Panel was of the opinion that the Complaint of October 12, 2000, did not satisfy all the requirements of the Policy.

The Complainant is correct in stating that it was notified on November 14, 2000, that the Complaint satisfied the formal requirements, however this notification related to procedural as distinct from substantive matters. The request for further submissions was made because the Administrative Panel was concerned that the Complainant had not satisfied the substantive requirements of the Policy and in particular had not provided sufficient arguments and evidence on each of the elements of the test set out in paragraph 4(a) of the Policy, but nevertheless, it appeared to this Administrative Panel that further submissions would assist this Administrative Panel in deciding this case.

In these unusual circumstances, in order to reach the appropriate decision as between the Parties, this Administrative Panel followed the course suggested by the learned administrative panelist in Creo Products Inc. v. Website In Development, (WIPO Case No. D2000-1490, January 19, 2001) set out supra and requested further submissions from both Parties.

Substantive Issues

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that

i. the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

ii. the Respondents have no rights or legitimate interests in respect of the said domain name; and

iii. the said domain name has been registered and is being used in bad faith.

The Complainant has provided this Administrative Panel with prima facie evidence in the form of a list of registered trademarks and service marks and pending applications for trademarks and service marks, that it is the owner of the "CREDIT SUISSE" trademark and service mark in many jurisdictions throughout the world. The Complainant claims that the said registrations are owned by the Complainant and that the Complainant has made the listed applications.

While these registrations are owned by the Complainant in many cases, in many other cases they appear to be owned by an entity known as Schweizerische Kreditanstalt. The Complainant has not made any reference to this entity or made any attempt to explain the relationship, if any, between the two entities.

The Complainant has nonetheless, made out a prima facie case that it is the owner of many of these registrations for the trademark "CREDIT SUISSE" including Argentinean registration number 1,546, 792 registered on May 11, 1994, Australian registration number 625, 577 registered on May 22, 1994 and numerous other registrations.

This Administrative Panel accepts the Complainant's submissions that the said domain name is confusingly similar to the Complainant's "CREDIT SUISSE" trademark as the only difference between the two is that the Respondents have merely used the English spelling "swiss" in lieu of the French spelling "suisse". The pronunciation being the same.

This Administrative Panel is therefore satisfied that the said domain name "creditswiss.net" is confusingly similar to the trademark and service mark "CREDIT SUISSE" in which the Complainant has rights.

As regards the second element of the test in paragraph 4 of the Policy, the Complainant primarily relies on its rights in the name "CREDIT SUISSE" in Switzerland and throughout the world under the Paris Convention, and furthermore that the Respondents must have been aware of the Complainant's rights when registering the said domain name. As it seemed to this Administrative Panel that it was implicit in this argument that the Complainant's position was that the Respondents have no rights or legitimate interest in the domain name, this Administrative Panel sought further submissions on this point from the Complainant and in the interest of due process and natural justice, gave the Respondents the opportunity to furnish submissions thereafter.

In any event, the Complainant did not furnish any further substantive evidence but relied on the argument outlined supra and the Respondents remained silent.

The difficulty presented to a complainant in proving the negative in the second element of the test in paragraph 4(a) of the Policy has been addressed by the administrative panelist in Intocast AG v. Lee Daeyoon. (WIPO Case No. D2000-1467, January 17, 2001) in the following terms:

"For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given. Falsification does not equal positive proof for the lack of a fact. Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant ís assertion. In this case the Complainant by asserting that the Respondent does not have a right or legitimate interest in the Domain Name has provided prima facie evidence. Therefore it would have been up to the Respondent to demonstrate that he has rights or a legitimate interest in the Domain Name."

The Complainant has asserted that the Respondents have no rights or legitimate interest in the said domain name and the Respondent has not put this assertion in issue. If one were to accept the approach taken by the learned panelist in Intocast, this in itself would be sufficient to make out a prima facie case which requires and answer from the Respondents. In the present case however the Complainant in its further submissions has gone somewhat further and pointed out that the Complainant has an established worldwide reputation in the trademarks and service mark "Credit Suisse" and has further alleged that the Respondent has no connection with Switzerland. Although this is not a strong case it does amount to a prima facie case, sufficient to satisfy the second element in the test in paragraph 4 of the Policy in the absence of any challenge from the Respondent.

As regards the question of whether the Respondents registered and are using the domain name in bad faith, there is an argument that in a default situation such as this, a complainant has a more difficult task in complying with the third element of the test in paragraph 4(a) of the Policy. This Administrative Panel obviously cannot accept the Complainant's submission that it is impossible to file direct evidence of the "bad faith" of a person.

The learned panelist in Intocast AG v. Lee Daeyoon. (WIPO Case No. D2000-1467, January 17, 2001) put this argument forward in the following terms:

"According to Paragraph 4(b) of the Policy for the purpose of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a Domain Name in bad faith:

(i) circumstances indicating that Respondent has registered or has 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, for valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the Domain Name; or

(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct;

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentsís website or location or of a product or service on Respondentís website or location.

Unlike Paragraph 4(c) there is no indication in Paragraph 4(b) that the Policy intends to place the burden of proof for a lack of bad faith on the Respondent. Unlike Paragraph 4(c) it does not invite the Respondent to demonstrate its good faith, but merely rules that the circumstances described above "shall be evidence of the registration and use of a domain name in bad faith".

Such evidence for bad faith also does not burden the Complainant with the proof of the lack of a fact, which would be contrary to the principle negativa non sunt probanda mentioned above. It is therefore the obligation of the Complainant to convince the Panel that the domain name has been registered and is being used in bad faith.

The mere allegation of such bad faith on the side of the Respondent is not sufficient. Paragraph 5(e) of the Rules provides that if a Respondent does not submit a response, the Panel shall decide the dispute based upon the complaint, in absence of exceptional circumstances. Paragraph 14(a) of the Rules provides that in the event that a Party does not comply with any of the time periods established by the Rules or the Panel, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the complaint.

These rules, however, do not seem to determine that the allegations in the Complaint shall be considered as facts, without the necessity of proof of these facts. A lack of Response therefore does not remove the burden of proof from the Complainant to show its own trademarks rights and the bad faith of the Respondent.

On the other hand it seems sufficient that the Complainant shows a prima facie evidence for bad faith of the Respondent. It would then be up to the Respondent to provide evidence for good faith in registering and/or using the domain name."

A similar approach seems to have been taken by the learned panelist in RŠdio Globo S.A. v. The Paradigm Corporation (WIPO Case No. D2000-1704, January 31, 2001) addressing the question of the sufficiency or insufficiency of evidence in the following:

"Paragraph 15 (a) of the Rules requires that ĎA Panel shall 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.í Paragraph 4(a) of the Policy is also relevant when considering whether or not unsubstantiated statements of the Complainant can be accepted as fact by the Panel when the Respondent has failed to make a response. This paragraph 4(a) requires not only that the Complainant 'assert to the Applicable Provider, in compliance with the Rules of Procedure,Ö.' the three elements set out at subparagraphs 4(a)(i),(ii) and (iii) of the Policy, but also that 'Ö the complainant must prove that each of these three elements are present.' This paragraph 4 of the Policy distinguishes between the assertion and proof of the three elements set out therein. In the absence of sufficient proof to establish that the three elements are present the complaint cannot succeed. Mere assertions are not enough to prove the three elements of paragraph 4 of the policy. "

On the other hand it is well established from the earliest cases that an administrative panel may take an adverse inference from the failure of a respondent to file a response. This was an issue which came up in some of the earliest cases in the UDRP as can be illustrated by the decisions in Mondich v. Brown, (WIPO Case No. D2000-0004, February 16, 2000) and Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, (WIPO Case No. D2000-0007, March 6, 2000) In these decisions the administrative panels decided that the respondentís failure to respond to the complaint allows the inference that the evidence would not have been favourable to the respondent.

In later cases the administrative panels continued to take adverse inferences from a failure by a respondent to produce evidence within its control which would rebut complainantís allegations. This approach can be illustrated in the following quotation from the decision of the learned panelist in Yahoo! Inc. v. Eitan Zviely, et al.(WIPO Case No. D2000-0273, June 14, 2000):

"Yahoo! urges, and has the burden of proving, that each of the 37 domain names in dispute is either identical to, or confusingly similar to, the Yahoo! mark. Respondentsí failure to respond does not relieve Yahoo! of its burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, Respondentsí failure to deny any of Yahoo!ís averments permits this panel to take Yahoo!ís averments as true and to draw appropriate inferences."

In Cyro Industries v. Contemporary Design WIPO (Case No. D2000-0336, June 19, 2000), the administrative panel quoted from the decision in Edgar Rice Burroughs, Inc. v. Adtel Communications, (WIPO Case No. D2000-0115, April 21, 2000) and held that "in cases of default, a Complainantís papers will be held to an exacting standard."

Nonetheless, in Burroughs the administrative panel further stated: "Because Respondent has failed to submit an answer to the Complaint in a timely fashion, and because the allegations of the Complaint, taken on their face, engender no substantial doubt, the Panel accepts as true all allegations set forth in the Complaint except those involving the disregarded registrations referred to above."

It would appear from these decisions that a consensus has developed among certain panelists at least, that in a default situation the administrative panel may take as true the averments in the Complaint. Furthermore the administrative panel may draw appropriate inferences from a respondentís failure to deny the averments in a complaint.

In the present case, the Complainant has convinced this Administrative Panel that there is a strong likelihood that the Respondents were well aware of the Complainantís trademarks and domain names when the said domain name was registered and in such circumstances, the Respondents should be expected to provide some explanation as to why the said domain name was chosen. In taking this view, this Administrative Panel is conscious that the Respondents did not even take the second opportunity afforded to them to make submissions.

The Complainant has established that it has registered a number of domain names incorporating variations on the words "credit" and "suisse", viz.

"creditsuisse.com" according to the Registrar's WHOIS database the record was created on November 6, 1999;

"credit-suisse.com" according to the Registrar's WHOIS database the record was created on December 6, 1996;

"creditsuisse.net" according to the Registrar's WHOIS database the record was created on February 17, 2000;

"credit-suisse.net" according to the Registrar's WHOIS database the record was created on February 15, 1999;

"creditsuisse.org" according to the Registrar's WHOIS database the record was created on May 13, 1999;

"credit-suisse.org" according to the Registrar's WHOIS database the record was created on April 20, 1999;

"creditswiss.com" according to the Registrar's WHOIS database the record was created on July 4, 2000;

"credit-swiss.com" according to the Registrar's WHOIS database the record was created on September 18, 2000; and

"credit-swiss.net" according to the Registrar's WHOIS database the record was created on September 18, 2000.

According to the Registrar's WHOIS database, the record for said domain name "creditswiss.net" was created on April 14, 2000. Therefore, as most of these domain names were registered prior to the Respondents' registration of the said domain name "creditswiss.net", in the absence of any Response from the Respondents, this Administrative Panel, accepts that in registering said domain name, the Respondents would have been aware of the Complainant's trademark rights and presence on the Internet.

In Arthur Guinness Son & Co. (Dublin) Limited v. Executive Products Ltd., WIPO Case No. D2000-1785 February 20, 2001, this panelist considered circumstances wherein the complainant had a strong established trademark, and this panelist accepted the complainant's submissions that despite the respondent's assertion to the contrary, it was very likely that a reasonable person would associate the domain names in issue with the complainant. This panelist took the view that the complainant had established a prima facie case of registration and use of the domain names in bad faith by the Respondent for the following reasons:-

"Paragraph 4(b) of the Policy sets out examples of circumstances that are evidence of bad faith for the purposes of paragraph 4(a)(iii) of the Policy. Paragraph 4(b)(iv) gives as an example, circumstances where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site or location or of a product or service on the Respondent's website or location.

Although the circumstances outlined in 4(b)(iv) refer to circumstances where there is an established website, and whereas in these Administrative Proceedings no such website has been established, the circumstances outlined in paragraph 4(b) of the Policy are expressed to be "without limitation" and are non exhaustive. It is clear that any use of the said domain names by the Respondent would inevitably result in an intentional attempt to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site or location or of a product or service on the Respondent's website or location.

Such use would be intentional because it is clear to this Administrative Panel, that the Respondent is aware of the reputation of the Complainant's trademark and the Respondent must have known of the Complainant's famous trademarks when the said domain names were registered or acquired."

In the present case, this Administrative Panel does not necessarily accept the Complainant's submission that "creditswiss" is not a coined word, which could not have been decided upon by the Respondents by coincidence. However on the balance of probabilities the Respondents must have become alerted to the Complainant's domain pre-existing domain names and consequently the Complainantís reputation in its trademark and service mark "CREDIT SUISSE" when the said domain name was registered. In fact, given the established reputation of the Complainant's trademarks and service marks, on the balance of probabilities, the Respondent would have been aware of the Complainant's rights in the said trademarks and service marks prior to the date on which the said domain names were registered.

This Administrative Panel is also satisfied that in registering said domain name and in passively holding said domain name, the intention of the Respondent has been to take advantage of the Complainant's goodwill in the combination of the words "credit" and "suisse" or "swiss" in some way. It is therefore clear to this Administrative Panel that, while the Respondent has not established any website accessible via said domain name, nonetheless, in the absence of any rights or legitimate interest of the Respondent in the said domain name, and given the established reputation of the Complainant, on the balance of probabilities, any use of the said domain name by the Respondent would inevitably result in an intentional attempt to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's site or location or of a product or service on the Respondent's website or location.

In conclusion, therefore, in the view of this Administrative Panel the Complainant has satisfied the first part of the test and established that the Respondents have registered a domain name which is identical or confusingly similar to the service mark in which the Complainant has rights. The Complainant has furthermore made out a prima facie case in respect of the second element of the test and has established a prima facie case that the Respondents have no rights or legitimate interest in the said domain name for reasons set out above. The Complainant has succeeded in this element of the test in no small measure due to the fact that the Respondents have failed to even deny or in any way put in issue the averments of the Complainant.

Furthermore, this Administrative Panel is satisfied that the Complainant has also succeeded in establishing a prima facie case that the said domain name was registered and is being used in bad faith. In this regard, this Administrative Panel is conscious that the Complainant relied on brief argument and averments rather than producing any substantive evidence. It seems to this Administrative Panel that the Complainant patently had significant resources and could have carried out appropriate investigations to support its argument. In the event however, the Respondents did not put any of these averments in issue.

This has been a difficult decision to make and even a brief Response by the Respondents putting the Complainant's averments in issue may well have brought about a different result. However the Respondents have made no effort to address any of the issues raised by the Complainant despite, in the exceptional circumstances of this case, having been given a second opportunity to furnish submissions.

 

7. Decision

With specific reference to paragraph 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the Respondents have registered the domain name "creditswiss.net" confusingly similar to a trademark and service mark in which the Complainant has rights, that the Respondents have no rights or legitimate interest in respect of said domain name and that the Respondents have registered and are using said domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name "creditswiss.net" should be transferred to the Complainant.

 


 

James Bridgeman
Sole Panelist

Dated: March 20, 2001