The Complainant is Swissnex, an annex of the Consulate General of Switzerland of Shanghai, China, represented by Perkins Coie, LLP of United States of America (“United States”).
The Respondents are Bart Johnson and Shipping Connections, Inc. of Salt Lake City, Utah, United States of America, represented by Steven L. Rinehart, Esq., United States of America.
The disputed domain name <swissnexshanghai.org> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2010. On June 2, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 2, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that:
(a) the domain name is registered with it;
(b) the registrant of the domain name is Shipping Connections and Bart Johnson is the administrative contact for the domain name;
(c) otherwise the contact details for the registrant are as specified in the Complaint; and
(d) English is the language of the registration agreement.
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 the Respondents of the Complaint, and the proceedings commenced on June 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2010. The Response was filed with the Center on June 21, 2010.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 25, 2010. 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.
Swissnex is a network of science and technology outposts located outside Switzerland run by the Swiss State Secretariat for Education and Research and the Swiss Ministry of Foreign Affairs. There are Swissnex offices associated with the Swiss Consulate General in Bangalore, Boston, San Francisco, Shanghai and Singapore.
The Complainant contends that it uses SWISSNEX throughout the world in connection with its services, but does not provide details of this use. However, it has registered SWISSNEX as a trademark, No. 3,376,332, in the Principal Register in the United States in respect of goods and services in International Classes 9, 35 and 41. The application for registration was filed on 20 September 2006. The registration states that it is based on a first use in commerce (in the United States) on January 1, 2004.
The Response states that Mr. Johnson owns and manages several retail shipping centers in Utah in the United States. He markets his services by reference to a composite mark consisting of the words SHIPPING CONNECTION with devices of an aeroplane and a truck. The primary website for this business uses the URL www.shippingconnection.com or “www.shippingconnections.com”. There are also related businesses for household moving, “www.movingconnection.com”, and car transport, “www.carshippinginc.com”, among others.
It appears that the Complainant held the disputed domain name prior to the Respondents. The Complainant states that it held the disputed domain name from October 2006 until sometime in January 2010. The Complainant does not disclose the circumstances in which it ceased to hold the disputed domain name.
According to the Registrar, the disputed domain name was first registered to the Respondents in December 2006. Neither party has sought to reconcile this information with the Complainant's claims.
The Respondents state, however, that they acquired the domain name at a public auction conducted by the Registrar. They do not say when this auction took place. The Respondents do say that they “bought” the disputed domain name at the public auction after noticing its page rank was higher than other domains being auctioned and acquired it for the page rank ascribed to it.
The disputed domain name currently resolves to a website containing information about the Complainant. According to the Complainant, these web pages are in effect the “pages” which it had uploaded to the site when it held the disputed domain name. Annex E to the Complaint is a print out of the home page for the website printed on June 1, 2010, shortly before the Complaint was lodged. The content of the print out is virtually the same as the home page which the disputed domain name resolves to at the time this decision is being prepared. The print out in Annex E to the Complaint, however, includes a second item:
Shipping, Moving, Auto Transport, Movers, Moving Quotes and Mail Express
At that time, these items were hyperlinked to the Respondents' sites at “www.shippingconnections.com”, “www.movingconnections.com”, “www.carshippinginc.com”, “www.moving-quotes.com” and “www.mailexpressplus.com” etc.
The “Swissnex Partners” heading and links do not appear on the website which the disputed domain name resolves to at the time this decision is being prepared.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Panel considers each of these elements in turn. Before doing so, the Panel notes that the WhoIs details for the disputed domain name and the Registrar state that the registrant is “Shipping Connections”. The Response does not make clear whether or not this is the corporate Respondent or just a trading name used by Mr. Johnson. In any event, it would appear from the Response that Mr. Johnson claims ultimate ownership of the registration. As the matter is peculiarly within the knowledge of the Respondents, the Panel will proceed on the basis that the registrant is either or both of them.
There are two parts to this inquiry: the Complainant must demonstrate that it has trademark rights in a sign and, if so, the disputed domain name must be shown to be identical or confusingly similar to those trademark rights.
Here, the Complainant has proved ownership of United States Trademark No. 3,376,332 for SWISSNEX.
The disputed domain name differs to the Complainant's trademark by the addition of Shanghai and the gTLD, .org.
The addition of the gTLD, however, can be disregarded for the purposes of this inquiry as it is a functional requirement of the domain name system. See for example, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.
The Respondents contend that “Shanghai” is one of the dominant textual elements in the disputed domain name and, because it is a geographic location, cannot be protected. Similarly, the Respondents contend that the other dominant textual element is the word “Swiss” which is similarly unprotectable. The Respondents note that the only non-geographic identifier in the disputed domain name is “nex” which they contend does not exclusively identify the Complainant. The Respondents then contend that even a registered trademark provides no rights under the Policy if it is deemed to be descriptive or generic.
The approach taken by the Respondents, however, fails to assess either the Complainant's trademark or the disputed domain name as a whole. It cannot be disputed that individual components of the disputed domain name have geographic significance or are descriptive. However, both the trademark and the disputed domain name need to be viewed as a whole. The term “swissnex” is not an ordinary dictionary word, nor does it have purely geographic significance. It is a coined term which at most is suggestive of some association with Switzerland or something “Swiss”. It has no meaning in or of itself. In this respect both the trademark and the disputed domain name are very different to the decisions about domain names such as <sweeps.com>, <landmarks.com>, <supercrete.com> and <rorschachonline.com> which the Respondents rely on. For the same reason, the Respondents can gain no assistance from the decisions referred to in paragraph 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
The inclusion of Shanghai with SWISSNEX in the disputed domain name does not assist the Respondents. Many (if not most) hypothetical users of the Internet presumed to have some awareness of the Complainant's trademark would read the disputed domain name as being a combination of the trademark with the geographic descriptor Shanghai and not parse the disputed domain name up in the way the Respondents invite the Panel to do. Such hypothetical users would be likely to perceive the disputed domain name as indicating some connection between the trademark and Shanghai.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark.
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondents are not partners of, nor affiliates of, the Complainant. Nor has the Complainant authorized them to use the disputed domain name. The disputed domain name is not derived from either of the Respondents' names nor, unlike “shipping connections”, is it descriptive of their businesses.
In view of the difficulty in proving a negative, these matters are sufficient to raise a prima facie case against the Respondents as a result of which an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 2.1.
The Respondents frankly acknowledge that they purchased the rights to the disputed domain name at a public auction to take advantage of its page rank value. They point out that they operate a perfectly legitimate business as Shipping Connections and do not offer services similar to those of the Complainant. They rely on previous decisions finding rights or legitimate interests under the Policy to use a common or ordinary word as a domain name to attract traffic to a legitimate site, referring to decisions such as Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 and Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Case No. 98813 and similar rulings.
These decisions do not help the Respondents because, as found above, the Complainant's trademark and the disputed domain name are not purely descriptive terms or common dictionary words.
While it can be accepted that the business being conducted at “www.shippingconnections.com” / “www.shippingconnection.com” is a legitimate business, the Response does not address the Complainant's evidence about how consumers were being directed to that website (and other websites of the Respondents). The print out included in Annex E of the Complaint has been described above. That web page would clearly convey to consumers that “Shipping Connections” (among other of the Respondents' businesses) was a commercial partner of “Swissnex”; indeed, the links were listed under the heading “Swissnex Partners”.
Moreover, the Respondents admit that the value of the disputed domain name lay in its high page rank value. That page rank value did not derive from the descriptive nature of the disputed domain name simply because it was not a descriptive term.
Accordingly, the Panel finds that the Respondents are attempting misleadingly to divert consumers to their own websites by means of the disputed domain name. Decisions under the Policy repeatedly establish that such conduct for commercial gain does not establish rights or legitimate interests under the Policy: see e.g. Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.
The Panel therefore finds that the Respondents do not have rights or legitimate interests in the disputed domain name.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondents.
The Respondents deny any knowledge of the Complainant or its trademark when they acquired the disputed domain name.
This denial does not sit well with the unexplained fact that the website which the disputed domain name resolves to reproduces substantial “pages” which had been posted by the Complainant including, very prominently, the trademark SWISSNEX.
In any event, as already noted, the Respondents acquired the disputed domain name because of its page rank value. As the disputed domain name did not consist of a purely descriptive or geographical term, its page rank value stems from its trademark significance. Hence, the Respondents have effectively admitted that they acquired the disputed domain name for its trademark significance.
Accordingly, the Panel finds that the Respondents registered the disputed domain name in bad faith. Moreover, having regard to the way the Respondents have used the disputed domain name especially until the Complaint was served on them, the Panel finds that the Respondents are also using the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <swissnexshanghai.org>, be transferred to the Complainant.
Warwick A. Rothnie
Dated: July 9, 2010