World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com

Case No. D2011-2262

1. The Parties

The Complainant is bridport & cie S.A of Geneva, Switzerland, represented by LALIVE, Switzerland.

The Respondent is Privatewhois.net, Private Whois bridportadvisory.com of Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <bridportadvisory.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2011. On December 22, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On December 23, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2012.

The Center appointed Arne Ringnes as the sole panelist in this matter on February 1, 2012. 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 Complainant owns and operates the domain name <bridport.ch>. Further the Complainant is the holder of the Swiss BRIDPORT trademark, registered since 2004 for services of classes 35 and 36.

The disputed domain name was registered on March 11, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The name of the Complainant’s trademark originates from the family name “Bridport,” and has no meaning in relation to commercial and financial services. It is highly distinctive. The disputed domain name fully encompasses the Complainant’s trademark. The mere fact of adding the word “advisory”, which is descriptive, is not sufficient to avoid a confusing similarity with the Complainant’s trademark.

Further, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never authorized, licensed, or permitted the Respondent to register the disputed domain name or to use the BRIDPORT trademark.

The Complainant is of the view that the disputed domain name was registered and is being used in bad faith. The Complainant’s position is that the provision of online financial services without holding the required license is to be considered as bad faith use. Moreover and more importantly, using a domain name which is very similar to a trademark owned by a competitor with a view to offer services which are similar to the ones offered by the latter, amounts to bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

According to previous UDRP panels a registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has a registration for BRIDPORT that predates the registration of the disputed domain name.

The disputed domain name includes the Complainant’s trademark BRIDPORT in its entirety and as a dominant element. The disputed domain name differs from the registered BRIDPORT trademark by the additional “advisory” and “.com”. The Panel finds that the word “advisory” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. Previous UDRP panels have ruled that the mere addition of a non-significant element does not generally sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505).

Further and with respect to the addition of “.com”, the Panel refers to previous UDRP panels that have ruled that the mere addition of gTLDs is not sufficient to avoid confusing similarity, cf F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

On the basis of the above, this Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the Respondent has not replied to the Complainant’s contentions, the Panel concludes that it has failed to assert any rights or legitimate interests. Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. It is indicative of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Panel also finds that the Respondent uses the disputed domain name to attract for commercial gain Internet users by creating likehoood of confusion with the Complainant’s mark, as described in paragraph 4(b)(iv) of the Policy, as the Respondent offers services which are similar to the ones offered by the Complainant.

Under these circumstances, and taking into consideration the fact that the Respondent has not provided any evidence of any good faith use by the Respondent of the disputed domain name, the Panel considers on balance that the Respondent has registered and used the disputed domain name in bad faith. Thus, the Panel finds the third requirement of Paragraph 4(a) of the Policy is satisfied.

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 <bridportadvisory.com> be transferred to the Complainant.

Arne Ringnes
Sole Panelist
Dated: February 22, 2012

 

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