WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bär & Karrer AG v. Baer Karrer

Case No. D2015-2322

1. The Parties

The Complainant is Bär & Karrer AG of Zürich, Switzerland, internally represented.

The Respondent is Baer Karrer of Paris, Israel.¹

2. The Domain Name and Registrar

The disputed domain name <baer-karrer.com> (the “Disputed Domain Name”) is registered with Ascio Technologies, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2015. On December 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 22, 2015, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2016.

The Center appointed Lynda M. Braun as the sole panelist in this matter on January 22, 2016. 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 is a leading Swiss law firm founded in 1969 with more than 140 lawyers in Zurich, Geneva, Lugano and Zug, Switzerland. The firm’s core business is advising clients on innovative and complex transactions and representing them in litigation, arbitration and regulatory proceedings. Clients range from multinational corporations to private individuals in Switzerland and around the world.

The Complainant owns trademarks for BÄR & KARRER in Switzerland and the European Union (“EU”) for services in the field of business consultancy and business management (International Class 35), training in the field of jurisprudence (International Class 41), and services in the fields of legal advice and legal representation; research in the field of jurisprudence (International Class 42) (the “BÄR & KARRER Mark”). The BAR & KARRER Swiss Mark, (Nr. 2P-417647), was registered on July 11, 1995; the BÄR & KARRER EU Mark (Community Trade Mark 889382) was registered on June 15, 2006.

The Complainant has registered numerous domain names, including, but not limited to, <baer-karrer.biz>, <baerkarrer.ch>, <baer-karrer.info>, <baer-karrer.li>, <baer-karrer.name>, <baer-karrer.net>, <baer-karrer.swiss>, <baerkarrer.org>, <baerkarrer.mobi>, <baerkarrer.info>,<barkarrer.biz>, <barkarrer.com>, <barkarrer.info>,<barkarrer.net> and <baerkarrer.biz>.

The Complainant registered the domain name <baerkarrer.com> in 1998 and has used it continuously since that time to promote its services through its official website at “www.baerkarrer.com”.

The Disputed Domain Name was created on December 2, 2015. The Disputed Domain Name resolves to a blank webhosting page provided by One.com.

The Panel has determined that the language of the proceeding is English. Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement […].”

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the BÄR & KARRER Mark based on its years of use as well as its trademark registrations for the BÄR & KARRER Mark in Switzerland and the EU. The Disputed Domain Name consists of the BÄR & KARRER Mark in its entirety, although the letters “ae” substitute for the umlaut, the ampersand is omitted and the two parts are separated by a hyphen, followed by the generic Top-Level Domain (“gTLD”) “.com”.

This Panel concludes that the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights. Although the Disputed Domain Name <baer-karrer.com> contains a hyphen between the words “baer” and “karrer”, this is typically irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Slew, WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).

Furthermore, since the domain name system does not allow the use of an ampersand (“&”) or an umlaut as part of a domain name, there is no distinction between the Disputed Domain Name and the Complainant’s BÄR & KARRER Mark.

Finally, the addition of a gTLD such as “.com” in a domain name is a technical requirement. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its BÄR & KARRER Mark. It appears unlikely that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Nor does the Complainant have any business relationship with the Respondent.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith.

First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to create a likelihood of confusion with the Complainant’s BÄR & KARRER Mark so as to disrupt its business.

Second, the Respondent knew or should have known of the Complainant’s rights in its BÄR & KARRER Mark when registering the Disputed Domain Name. The Complainant’s BÄR & KARRER Mark is widely known and used. It therefore strains credulity to believe that the Respondent did not know of the Complainant or its BÄR & KARRER Mark when registering the Disputed Domain Name and particularly when adopting the name Baer Karrer as the name of the registrant. In the instant proceeding, it appears that the Respondent did not register the Disputed Domain Name in its own name, but rather adopted the name “Baer Karrer”, the identity of the Complainant, as its own identity. The Respondent’s misappropriation of the Complainant’s identity is evidence of the Respondent’s registration and use of the Disputed Domain Name in bad faith. Since the Respondent has not provided any justification for its use of the Complainant’s identity in its registration of the Disputed Domain Name, the Panel determines that the Respondent registered the Disputed Domain Name in bad faith. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).

The email evidence submitted by the Complainant demonstrates that the Respondent solicited information from third party companies in France, the Netherlands, Belgium, Germany and Switzerland by phone or email, feigning to be an employee of the Complainant in an attempt to engage in business with such companies. Such conduct evidences that the Respondent used the Disputed Domain Name in bad faith. See Amazon.com Inc., Amazon Technologies, Inc. and Amazon Europe Holding Technologies SCS v. “U S / Amazon.com, Inc.”, WIPO Case No. D2013-2161.

Third, by holding the Disputed Domain Name passively and having no content on its web page, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.”); see also Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335; LACER, S.A. v. Constanti Gómez Marzo, WIPO Case No. D2001-0177.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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, <baer-karrer.com>, be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: January 26, 2016

¹ The Panel notes that the contact information as displayed in the Whois for the Disputed Domain Name shows the registrant as being located in “Paris, Israel”. In light of the circumstances of this case, explored in more detail under registration and use of the Disputed Domain Name in bad faith, the Panel determines that these contact details are most likely false.