WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pamp S.A. and MKS (Switzerland) S.A. v. Khatchik Sahakian/Domains By Proxy, LLC
Case No. D2012-2122
1. The Parties
The Complainant is Pamp S.A. of Castel San Pietro, Switzerland; MKS (Switzerland) S.A. of Geneva, Switzerland, represented by Cabinet Griffes Consulting SA - Intellectual Property Counsel, Switzerland.
The Respondent is Khatchik Sahakian of Glendale, California, United States of America; Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <pampsuisse.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on October 25, 2012. On October 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2012, 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 October 30, 2012 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 amended Complaint on October 31, 2012.
The Center verified that the Complaint together with the amended 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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on November 26, 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
Pamp S.A. (the Complainant No. 1) and MKS Switzerland S.A. (the Complainant No. 2) are affiliated companies in the PAMP group, a worldwide group involved in particular in the sale and distribution of bullion and precious metals and established since 1997 in Ticino Switzerland. The group trades under the PAMP trade mark which according to its website appears to be an acronym for the strapline description of its business, “Produits Artistiques Metaux Precieux”.
The Complainant No.1 owns various trade marks worldwide for, or incorporating, the PAMP mark including International Registration No. 510125 dating from 1987 for the word mark PAMP and also Swiss trade mark No. P443115 dating from 1987 for a combined word and logo mark incorporating the word mark PAMP SUISSE. The Complainant No.1 trades under the PAMP mark and the Complainant No. 2 owns the domain names <pamp.ch> and <pamp.com> from which the Complainant’s operate a website for their business.
The disputed domain name was registered on April 5, 2005.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is identical or confusingly similar to its PAMP or PAMP SUISSE registered trade marks as noted above.
The Complainant submits it has not permitted or authorized the Respondent’s use of its PAMP mark and that the Respondent has no rights in the mark and did not use it in the disputed domain name before the Complainant’s registration of its base trade marks for the PAMP mark. Accordingly the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.
As far as bad faith is concerned the Complainant says that the Respondent has intentionally sought to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant as the genuine owner of the PAMP trade marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights in the word mark PAMP under International Registration No. 510125 dating from 1987. Although this mark appears to be an acronym for the strapline description of its business, “Produits Artistiques Metaux Precieux”, it is not in and of itself descriptive of the Complainants’ business and enjoys a high level of distinctiveness.
In these circumstances the fact that the disputed domain name also incorporates the geographic term “suisse” which the Panel finds is a non-distinctive geographic term, adds no element of distinctiveness to the disputed domain name and therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s PAMP trade mark. As a result the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent is not known by and has not provided goods or services under or otherwise used the PAMP or PAMP SUISSE mark and has no rights or legitimate interests in the disputed domain name. In the absence of any response from the Respondent the Panel finds that the Respondent has not rebutted the Complainant’s prima facie case. Accordingly the Panel finds that the Respondent has no rights or legitimate rights in the disputed domain name and the Complainant has made out its case under the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s only submission concerning bad faith is that the Respondent has intentionally sought to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant as the genuine owner of the PAMP trade marks. However the disputed domain name does not appear to resolve to a website currently and the Complainant does not submit that it ever did so. Nor is there any evidence that the Respondent sought to sell the disputed domain name to the Complainant or to anyone else. In these circumstances it is a very tall order for the Complainant to assert that the Respondent has intentionally sought to attract Internet users to its website for commercial gain.
In the circumstances of a purely passive holding of a domain name previous panels have looked for relevant indicia of bad faith in the particular circumstances of the case. These have included the degree of repute attaching to a complainant’s mark, whether there is a response, whether contact details were provided correctly and whether a privacy service has been used to obscure the Respondent’s identity. For example the Panel notes the often cited decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org> and the numerous other decisions noted at paragraph 3.2 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition.
In the absence of any submissions from the Complainant in this regard, the Panel is left to consider whether the bare circumstances of this Complaint are sufficient to comprise a passive holding in bad faith under the Policy.
The PAMP mark is certainly distinctive and there is considerable evidence of the Complainant’s use of its mark and domain names as noted above and there is also evidence that the Complainant registered a combined logo and word mark containing the PAMP SUISSE mark in 1987. While the PAMP mark no doubt has a reputation in various countries in its industry sector it is not on the evidence before the Panel a very well-known mark.
Although the Respondent failed to respond to the Complaint, the Panel notes that the disputed domain name has been registered since 2005 and there is no evidence of the Respondent having used it since that time.
On the other hand it is not unreasonable to consider that a complainant who was concerned about the prospect of unauthorized use of its mark or cybersquatting might have written at some point during this period to the Respondent asserting its rights and requesting transfer of the domain name, at least in an effort to create an opportunity for a panel to infer from a response (or a lack of it) that the Respondent existed or not, or had acted in bad faith. However the Complainant or its representative has not done so in this case.
The Respondent identified upon verification by the Registrar does appear to be an individual who has given contact email and physical addresses. Communications by the Center to the email addresses for the Respondent appear to have been sent, although the physical address in California of the Respondent and fax number given by the Respondent proved to be incorrect or false.
On balance and considering the distinctive nature of the PAMP mark, the Complainant’s registration of a mark containing PAMP SUISSE, the degree of repute attaching to the mark, the lack of evidence of use or explanation for registration of the disputed domain name by the Respondent and its failure to respond to the Complaint and the considerable time that has elapsed since original registration without any sign of activity, the Panel is prepared to find that this is an example of a passive holding in bad faith for the purposes of the third element 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 <pampsuisse.com> be transferred to the Complainant MKS (Switzerland) S.A.
Date: December 4, 2012