WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swisse Vitamins PTY Ltd. v. Buckshot Enterprises LLC (t/a BE LLC)
Case No. D2010-1672
1. The Parties
1.1 The Complainant is Swisse Vitamins PTY Ltd. of Melbourne, Victoria, Australia, represented by Madgwicks, Australia.
1.2 The Respondent is Buckshot Enterprises LLC (t/a BE LLC) of Libuse, Louisiana, United States of America, internally represented.
2. The Domain Name and Registrar
2.1 The disputed domain name <swisse.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 5, 2010, the Center transmitted by email to the Registrar, a request for registrar verification in connection with the Domain Name. On October 5, 2010, 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.
3.2 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”).
3.3 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 October 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2010. A Response was filed with the Center on October 28, 2010. A further Response was filed with the Center at 3:13 am on November 1, 2010 (i.e., shortly after 9 pm Central Standard Time). The email that accompanied that Response asserted that the previous document had been a draft filed “for the purpose of ensuring timely filing”, although the Respondent had not previously indicated that to be the case in previous correspondence of October 28, 2010.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 5, 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.
4. Factual Background
4.1 The Complainant is a company based in Melbourne, Australia. It or its predecessors business has sold vitamins under the “Swisse” name since the late 1950s. Sales of its top 10 products for the last financial year exceeded $47 million.
4.2 In October 1997 the Complainant registered the domain name <swisse.com.au> and thereafter has operated a website from that domain name in relation to its business.
4.3 The Complainant is the owner of various trade marks that comprise or incorporate the term “Swisse”. They include:
(i) Australian trade mark registration No. 731258 filed on April 2, 1997 and registered in class 5.
(ii) Community trade mark registration No. 8764839 for the word SWISSE, filed on December 17, 2009 in classes 5, 29 and 30.
4.4 The Respondent is Buckshot Enterprises LLC, a company registered in the United States, state of Louisiana. It is engaged in the business of “adult domain name development” and dealings in domain names.
4.5 The Domain Name was registered on November 30, 1999. The exact circumstances surrounding the registration are discussed in greater detail later on in this decision. However, it would appear that the Domain Name was originally registered in the name BE SWISSE LLC. Later the registration was changed into the name of “BE LLC”. In each case BE appears to have been intended to represent the first two words of the Respondent’s registered name.
4.6 By March 2000 the Domain Name was being used for a website that displayed a picture of a flower and the text “This domain project has been removed from service”. At the bottom of the page was the words “BE Swisse Continuity Group, LLC”.
4.7 By February 2001 although the format of the webpage remained the same, the text displayed had changed slightly to read “THIS PROJECT IS NO LONGER IN SERVICE”, and the words at the bottom of the page had been changed to “BE Swisse Group, LLC”. By May 2001 the words “NOW ACCEPTING OFFERS FOR DOMAIN NAME” were added to the text under the picture.
4.8 At some point in our prior to August 2005, the format of the webpage operating from the Domain Name changed significantly. It appeared to take a form of a page generated by a domain parking or pay-per-click service. As at August 24, 2005 the “RELATED SEARCHES” links appearing on the page, seemed primarily to relate to Swiss related products, information or services. However, in contrast, the sponsored listings links also appearing on that page predominantly related to vitamins or other heath products and services. They comprised: QUALITY GNLD VITAMINS, NATURE MADE VITAMINS, NEW ANTI AGING FORMULA, ALTRUM MULTIVITAMINS, TO YOUR HEALTH, INTRAMAX – FREE SHIPPING, LOOKIN FOR GOOD VITAMINS?, ALL NATURAL SUPPLEMENTS, VIT. A-FREE MULTIVITAMIN and BUY VITAMINS WHOLESALE.
4.9 As at October 23, 2009, similar sorts of links continued to appear on the webpage operating from the Domain Name. The “Sponsored listings” comprised: Multi Vitamins & Minerals, Golden Glow Multivitamins, Swisse Vitamins, Yoplait Elivaé Yoghurt, Swiss Air Flights, The Best Kid’s Vitamin?, Book train in Switzerland, Isotonic MultiVitamin, Centrum Multivitamin.
4.10 In January 2010 the Patent and Trade Mark agents of the Complainant sent an email to the Respondent alleging that the Domain Name offended against the Policy and Australian law.
4.11 Subsequently, the page appearing from the Domain Name changed. It still took the form of a pay-per-click service generated page, but the links displayed in large part related to travel and/or Switzerland.
5. Parties’ Contentions
5.1 The Complaint refers to its Australian and Community Trade Marks and claims that the Domain Name is identical to those registered marks. It also contends that by reason of its activities, it is the owner of common law trade mark rights in the SWISSE mark and also relies on these claimed rights.
5.2 On the issue of rights or legitimate interests, the Complainant contends that the Respondent has sought to disguise its true identity by using the name BE LLC in the WhoIs details for the Domain Name when in fact no such company exists. It also contends that the Respondent has falsely claimed to have a corporate name related to the domain name by the use of the names “BE Swisse Continuity Group, LLC” and “BE Swisse Group, LLC” on web pages appearing from that domain name.
5.3 The Complainant further contends that the terms “Swisse” was coined by the Complainant and that the Respondent’s use post dates the Complainant’s registration and use of the domain name <swisse.com.au>. It asserts that the none of the uses of the Domain Name since registration relates (a) to any inherent meaning in the Domain Name itself; (b) to any trade mark being used in good faith by the Respondent; or (c) even to a trade mark being used other than in good faith by the Respondent. In the circumstances, it contends that it has prima facie shown a lack of rights or legitimate interests of the Respondent within the meaning of the Policy and that in such circumstances (and as is set out in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions) the burden of proof on this issue passes to the Respondent.
5.4 So far as bad faith is concerned, the Complainant claims that the Respondent registered and used the Domain Name for the purpose of selling it to the Complainant and that the Respondent registered and used the Domain Name for the purpose of attracting, for commercial gain, Internet users to the website at the Domain Name by creating an initial interest confusion. In particular, it contends, when one considers the uses made of the Domain Name since registration, that on the balance of probabilities, the appropriate conclusion is that the Respondent registered the Domain Name because it had became aware of the Complainant’s registration of the domain name <swisse.com.au>.
5.5 In this respect the Complainant anticipates any claim on the part of the Respondent that it did not choose the links that appeared on the pay-per-click page by referring to the decision in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. That case is said broadly to be authority for the proposition that a registrant cannot disclaim responsibility for the links appearing on a website operating from its domain name.
5.6 The Complainant also provides evidence that the Respondent has registered several hundred other domain names for sale. This appears to be put forward to support the contention that the Complainant is a dealer in domain names rather than that any of these domain names take advantage of the trade marks of a third party.
5.7 The following summary of the Respondent’s position is drawn from the Response filed on November 1, 2010, which for the reasons identified later on in this decision the Panel treats as the Respondent’s formal Response.
5.8 The Respondent claims that the Domain Name was registered by it in 1999 for use in the United States and it claims that it only became aware of the Complainant’s Australian mark “this year”.
5.9 So far as the Complainant’s Australian mark is concerned, the Respondent claims that this is a composite mark with design elements and that the term “Swisse” within that mark is not distinctive. It claims only to have become aware of the Complainant’s Community Trade Mark on receipt of the filled Complaint and points out that this mark was registered long after the Domain Name.
5.10 The Respondent contends that the Complainant’s business name is Swisse Vitamins Pty Ltd. However, as far the Panel can tell, there is no allegation that the Complainant has not used the term “Swisse” alone in relation to its products.
5.11 The Respondent recognises the Complainant’s “admirable” growth but claims “that in 1999, [the Complainant] was a tiny fraction of the size the company has become today, [and] unheard of outside its own borders”. It also claims that the Complainant has unsuccessfully attempted to register SWISSE as a trade mark in the United States.
5.12 The Respondent further contends, given its claims about the nature of the Australian mark that the Complainant has failed to show that the Domain Name is identical or similar to a mark in which the Complainant has rights citing Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047.
5.13 The Respondent also denies that it has ever concealed its identity. It claims that it initially intended that the Domain Name be registered in the name of “BE LLC – SWISSE.COM”. Due to “character limitations in the ascii registration template” (which are not explained) and “issues with the ‘last name first, first name last’ format” (again which are not described) this is said to have led to the registration “turn[ing] out to be ‘BE SWISSE LLC’”. The Respondent makes no attempt to explain how and why various names for the Respondent that included the term “Swisse” subsequently appeared on the website operating from the Domain Name.
5.14 The Respondent puts forward various pieces of evidence to support the contention that the Domain Name has a “generic” meaning as an alternative to the terms “Swiss” and “Suisse”.
5.15 On the issue of bad faith the Respondent claims that it did not know of the Complainant until ten years after acquisition of the Domain Name. It contends that it first heard of the Complainant as a result of approaches made by the Complainant’s representatives in January 2010. It claims that “upon guidance of counsel” it decided not to respond to that correspondence but made enquiries in relation to the pay-per-click advertising undertaken from that domain name. In its Response the Respondent claims that, as a result of those enquiries it “discovered” and then acted as follows:
“For a short period in 2008 or 2009, dynamic advertiser links did, in fact, generate some ads that contained the word ‘vitamins’, links that were not originally designed or authorized;
Without delay we contacted SEDO.COM and learned that our links had changed solely because of keywords purchased by [the] Complainant or its agents with major search engines. These sponsorships, ranking higher than non-paid ads, effectively overrode our links to Switzerland travel links;
As a direct result of SEDO.COM lacking the software tools to eliminate this deficiency, we took the initiative and moved the domain to PARKED.COM where we could exclude keywords not associated with our intended use of the domain;
Words excluded, among others, were spa, beauty, bakery, vitamins, antioxidants and similar words used by companies found on GOOGLE.COM (US). To this day we maintain this effort has kept the website free of any references to [the] Complainant or other entity using the letters SWISSE as a part of their name;”
5.16 The Respondent brought forward no evidence to substantiate its claims that the links initially appearing on the website operating from the Domain Name, were travel links, or that it had learnt either from Sedo or in some other manner that the vitamin related links appearing on the site were as a result of the Complainant’s key word purchases.
5.17 The explanation offered by the Respondent for its registration of the Domain Name was as follows:
“As [the] Complainant pointed out in their annexes, BE LLC had a large investment in adult-oriented domain names. In 1999, there were no credit card processers dedicated to working with adult websites, and purchases had to be made through alternative means, such as bank transfers and pre-paid deposits. We found what we believed to be a partnership with a German Swiss programmer who had started developing CONTINUITY ‘E-tools’ for credit card processing from websites, e-commerce and mass-marketing products. It was our intent to sell her completed products in the U.S. from our website, SWISSE.com, to e-commerce website developers. However, not only was she unable to deliver on time but new companies such as ccBill and PayPal were soon offering seamless website interfaces and single-point processing of credit card charges at no charge, effective ending the promotion”.
5.18 Again no supporting evidence was provided in respect of these contentions.
5.19 The Respondent accepts that after this alleged “unsuccessful partnership” it placed a notice on the website offering the Domain Name for sale and then contends that it opted to use the Domain Name to generate pay-per-click revenue from travel and other Swiss related advertisements.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, the Complainant has the burden of proof of showing the following:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
6.2 The Panel considers these requirements in turn below. Before it does so it will briefly comment on the fact that the Response was filed after midnight in Switzerland on November 1, 2010.
6.3 There is no guidance in the UDRP, Rules or Supplemental Rules as to how time is to be calculated for the purposes of the proceedings. It is possible for a case under the Policy for the parties, registrar and the Center all to be in different time zones. Therefore, there are potentially four different candidates for the time zone to be adopted when calculating dates for the purposes of deadlines under the Policy. Nevertheless, the Panel has reached the view that regardless of whether the Response was filed strictly out of time for the purposes of the Policy, it should admit that document as the Respondent’s formal Response for the purposes of the proceedings. The delay (if there was one) was of only a few hours and did not in any way prejudice the Complainant and the Complainant has not made any objection or submission to the Center to the effect that this Response should not be considered.
A. Identical or Confusingly Similar
6.4 The Panel accepts the Complainant’s contention that it owns trade mark rights in the word mark SWISSE in Australia. The Complainant expressly asserts that its Australian mark is a series registration, which under Australian law protects each of the representations in that series as a separate trade mark. Although the evidence filed suggests that a number of the representations involve the use of the term the word “Swisse” as part of a larger mark, one of these representation appears to be for the word “Swisse” alone. The Response does not direct address this point and, therefore, its claim that the Complainant does not have trade mark rights in the word “Swisse” alone appears misconceived. In the circumstances, it is not necessary to address the Respondent’s claim that this is a case similar to that in Brisbane City Council, supra, in which the panel held that it was appropriate to disregard the text element of a larger mark.
6.5 In any event, the Complainant also was the owner at the time of the Complaint of a Community Trade Mark for the word SWISSE alone. The fact that a mark relied upon in UDRP proceedings post dates the date of registration of a disputed domain name, may be relevant to an analysis of bad faith under the Policy (see paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions), but it is not relevant to the assessment under paragraph 4(a)(i) of the Policy.
6.6 The Domain Name comprises the entirety of the Complainant’s SWISSE marks combined with the “.com” TLD. Therefore, it is virtually identical to the Complainant’s registered word marks. In the circumstances, the Complainant has made out the requirements of paragraph 2(a)(i) of the Policy.
6.7 Further, the Complainant claims common law trade mark rights in the term “Swisse”. The Complainant does not expressly identify how and in which country those rights are said to arise, but it seems highly likely that the Complainant relies upon rights arising under the Australian law of passing off. Given the Panel’s findings so far as registered rights are concerned, it is not strictly necessary to reach a decision on this issue. But had it been necessary to do so, the Panel is likely to have held that the evidence before it is sufficient for it to conclude that the Domain Name was identical or confusingly similar to the Complainant’s Australian common law trade mark in the term “Swisse”.
B. Rights or Legitimate Interests
6.8 As the Complainant correctly contends, many UDRP panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the respondent carries the burden of showing such a right or interest. It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.9 It is clear that the Domain Name has been and continues to be used by the Respondent for use with a “domain name parking” or “pay-per-click” service. It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark, then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
6.10 There is a slight complication in that there appear to be at least two phases of pay-per-click use of the Domain Name. First, there is the use of the Domain Name by the Complainant up to January 2010, at which point the Complainant approached the Respondent. Second, there is the use of the Domain Name after this date. However, the legitimate interest if any that is claimed in such a case is of the type identified in paragraph 4(c)(i) of the Policy; i.e., use of the domain name in connection with a bona fide offering of goods or services. In such a case, the use in question must be “before any notice to [a respondent] of the dispute”.
6.11 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; was the Respondent in January 2010 using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.12 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel has reached the conclusion that the Domain Name was at that time being used with a view to taking unfair advantage of the reputation of the Complainant's trade marks. In the circumstances, the Panel finds that at the relevant time the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.13 The Panel has little doubt that there has been extensive bad faith use of the Domain Name by the Respondent. The Complainant has brought forward evidence in the form of Internet archive print outs that prima facie suggest that the Domain Name has been used at least since August 2005 through to January 2010 in a manner so as to display links to vitamin related goods and services. These links only make sense by reference to the Complainant’s trade mark use of the term “Swisse”, which has no obvious generic association with vitamin related goods and services. The only realistic conclusion in those circumstances is that the Domain Name was being used to take advantage of the reputation that the Complainant had built up in that term with a view to drawing Internet users to that page. Such use is use in bad faith (see the Express Scripts, Inc case supra).
6.14 The Respondent attempts to down play this use by claiming that these links appeared “[f]or a short period in 2008 or 2009”. But that statement is vague and unsupported by any further evidence. It also ignores the Complainant’s evidence to the effect that links of this sort were on display from a far earlier date.
6.15 Further, the Respondent’s explanation for the appearance of these links by reference to the alleged purchase of keywords by the Complainant is wholly inadequate. If a respondent could show that the links relied upon by a complainant in supporting an assertion of bad faith took the form of a one off temporary appearance of links to the complainant’s goods or services, then perhaps these links could be explained away in this fashion. But that is far from the case here. First, the Respondent’s assertion is uncorroborated by any evidence. Second, the links appear to have appeared for at least four and a half years. Third, the links took the form of sponsored listings that appear to link to persons or entities other than the Complainant the appearance of which is not explained.
6.16 Also, as the Complainant correctly contends, where a registrant uses a pay-per-click service it cannot wash its hands of responsibility of the way in which its domain name is used by claiming that the links are generated by a third party. The Complainant cites the decision of Grundfos A/S, supra. The Panel accepts that this is authority for this proposition, and there are many others that the Complainant could have chosen. See, for example, Aubert International SAS and Aubert France SA v. Tucows.com Co., WIPO Case No. D2008-1986, and in particular paragraphs 6.58 and 6.59 of that decision in which a majority of the panel stated that there is such a case an imputation of knowledge to the registrant of how the domain name is being used.
6.17 Therefore, in the opinion of the Panel bad faith use is clearly made out. The more difficult question (which in the opinion of the Panel has to be answered for the reasons identified in Camon S.p.A. v. Intelli-Pet, LLC, WIPO Case No. D2009-1716) is whether there has also been bad faith registration. The Panel has reached the conclusion that on the balance of probabilities the Complainant has shown this as well.
6.18 The difficulty for the Complainant is that the Domain Name was registered such a long time ago. A complainant who leaves the bringing of a complaint for such a long period of time makes life difficult for itself in any subsequent proceedings. It is, for example, likely to be hard to persuade a panel on the basis of a recent act of bad faith that this provides probative evidence of the respondent’s intentions at the time of registration. Nevertheless, as has already been explained, the bad faith use in the present case is not simply fleeting. It started in August 2005 and may extend back further in time. Such a longstanding use of the Domain Name so as to take advantage of the Complainant’s trade mark, and in the absence of any other credible reason for registration, suggests that the Domain Name was also registered with some similar advantage in mind.
6.19 So is there a credible reason for registration in this case? The Respondent puts forward various pieces of evidence which are said to suggest that the term “Swisse” is a common variant of “Suisse” or “Swiss”. However, what matters is not whether the Domain Name was capable of being used in a generic fashion, but whether it was with this use in mind that it was actually registered. On this occasion the Respondent does not contend that it was for any generic use that the Domain Name was registered, but for some other claimed purpose. Therefore, even if the Panel were to accept that there were possible generic uses of the Domain Name (and the Respondent’s evidence is far from compelling in this respect) this would be of limited relevance.
6.20 Instead, the reason given by the Respondent for registration is set out in a single paragraph in the Response. That paragraph has been set out in full in paragraph 5.17 of this decision. In particular, the Respondent claims that the registration has for the sale of “e-commerce” products developed by a Swiss German. But again the assertions are sparse and hard to follow. The “Swiss German” concerned is not even named. Further, no part of the Respondent’s contention (and from the Respondent’s perspective this contention is probably the most important aspect of its case) is supported by any corroborating evidence. In short, the claim appears vague, contrived and insofar as it is intelligible, improbable.
6.21 Further, there are other aspects of the Response that suggest that the Respondent’s has been less than honest in that document and the assertions that it contain should be treated sceptically. First, there is the assertion that vitamin related links appeared only for a short time in 2008 and 2009 when, as has already been explained, the evidence suggests otherwise. Second, there is the Respondent’s explanation as to why for a period of time the WhoIs details for the Domain Name recorded that the owner of the Domain Name was recorded as “BE SWISSE LLC”. The Complainant contends that the Respondent used this name in an attempt to disguise its identity. The Panel is not particularly persuaded by that claim. But what is more relevant for present purposes is the contrived nature of the explanation offered by the Respondent as to how this name appeared in the register. The Respondent claims that this was due to “character limitations in the ascii registration template” and “issues with the ‘last name first, first name last’ format”. Even leaving aside once again the fact that the assertions are vague and otherwise uncorroborated, the uncontested evidence of the Complainant was that in 2000 and 2001 the Respondent was identifying itself on a website operating from a Domain Name as “BE Swisse Continuity Group, LLC” and “BE Swisse Group, LLC”. So it therefore seems reasonably clear that the Respondent had for some reason following registration generally decided to use the term “Swisse” as part of its name. If so the claims as to how that the term was used in the registration details for the Domain Name, is simply untrue.
6.22 As a consequence the Panel is not prepared to give any weight to similar vague and uncorroborated statements in the Response as to the Respondent’s motives for registration. Notwithstanding the fact that there is no evidence before the Panel that the fame of the Complainant’s SWISSE mark extended significantly beyond Australia in 1999, the Panel prefers the Complainant’s claim that the Respondent had become aware of the Complainant at that time as a consequence of its use of the website operating from the <swisse.com.au> domain name.
6.23 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
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 <swisse.com> be transferred to the Complainant
Matthew S. Harris
Dated: November 19, 2010