WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kuhn Rikon AG v. J. Klozen
Case No. D2013-1194
1. The Parties
The Complainant is Kuhn Rikon AG of Rikon, Switzerland, represented by Schiller Rechtsanwalte AG, Switzerland.
The Respondent is J. Klozen of The Hague, Netherlands.
2. The Domain Name and Registrar
The disputed domain name, <swiss-rikon.com> (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 17, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 6, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 14, 2013. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a Swiss company based in Rikon, Switzerland. It is a producer of high-end kitchenware and has been engaged in this field of activity for many decades. It is the registered proprietor of many trade mark registrations for its name and mark KUHN RIKON in one shape or form. For present purposes, it is sufficient simply to mention two of those registrations, namely:
1) International Registration No. 801627 for KUHN RIKON SWITZERLAND (figurative mark) in classes 8, 11 and 21 for various cooking and eating utensils, all being of Swiss origin. This registration has a priority date of January 10, 2003 based on the Complainant’s Swiss trade mark registration No. 508996; and
2) Swiss Registration No. 545120 dated April 20, 2006 for KUHN RIKON (words) in classes 8, 11 and 21 for similar goods covered by the above International Registration.
The Complainant has an operational website connected to its domain name <kuhnrikon.com>.
The fame of the Complainant’s brand is not open to question (at any rate by the Respondent) as the unchallenged evidence of the Complainant (supported by documentary evidence) is that representatives of the Respondent have been falsely representing themselves to be associated with the Complainant.
The Respondent appears to be a Dutch individual trading as “Swiss Rikon” and selling kitchenware and related products under the Swiss Rikon brand and making prominent use of the Swiss flag. The Respondent promotes his products through his website connected to the Domain Name.
The Complainant has received various communications from members of the public reporting on the Respondent’s direct selling activities. The first, a message from ‘Johan’ reads (in part) “Hi. Just wanted u to know that a so called sales person just approached me in the street trying to sell knives and other kitchen stuff to me…. He said he has been promoting your stuff here in Gothenburg and returning back to Switzerland”. The second from a lady in a town near Marseille is in French and appears to be a request to the Complainant for information enabling her to obtain a guarantee for some Swiss Rikon kitchen equipment that she had bought. The third is a message from a lady whose mother “got bothered by an account manager of Swiss Rikon selling Swiss Rikon ‘stuff’. The message goes on “..as I did not trust it I decided to write to you. Could you let me know what the difference is between Swiss Rikon and Kuhn Rikon?”. The fourth is a message from an English aristocrat, reading: “There is a young man going round the UK saying he is the son of the Owner of Rikon (sic) and selling the 12 piece kitchenware sets which he says are the last of an exhibition which he doesn’t want to take back with him. I would like to know if this could possibly be the case as this young man is now using my name as a reference – something that I certainly would not have allowed.”
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s KUHN RIKON SWITZERLAND and KUHN RIKON registered trade marks (see Section 4 above), that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(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 was registered and is being used in bad faith.
B. Identical or Confusingly Similar
Guidance as to how the Panel is to assess confusing similarity for the purpose of paragraph 4(a)(i) of the Policy is to be found in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which reads:
“1.2 What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?
The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [regarding the latter see further paragraph 1.3 below] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. While each case must be judged on its own merits, circumstances in which a trademark may not be recognizable as such within a domain name may include where the relied-upon mark corresponds to a common term or phrase, itself contained or subsumed within another common term or phrase in the domain name (e.g. trademark HEAT within domain name theatre.com).
However: Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant's trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the complainant's goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark.
The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark. The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).”
Absent the “.com” top-level suffix, which the above guidance states will “usually be disregarded”, the Domain Name comprises two geographic terms/indications, “Swiss” and “Rikon”, the latter being a Swiss place name. The Complainant’s name and principal trade mark is KUHN RIKON with or without the addition of “Switzerland”. “Kuhn” is the family name of the founder of the company and “Rikon” is the name of the town in Switzerland where the company is based.
If as paragraph 1.2 of the WIPO Overview 2.0 suggests is typically the case, the test is “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name” it is difficult to see how the Domain Name and the Complainant’s trade mark could be said to be confusingly similar, the only common denominator being one or more geographical terms. Whether one is comparing the Domain Name with KUHN RIKON SWITZERLAND or with KUHN RIKON, the striking difference is the absence in the Domain Name of the name “Kuhn”, a prominent part of the trade mark. The Panel’s first impression was that on “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”, the Domain Name, while similar to the trade mark, “Rikon” being common to both, is not confusingly similar to the Complainant’s trade mark.
If, however, one introduces into the mix the fact asserted by the Complainant and accepted as fact by the Panel that the Complainant is the only manufacturer of kitchenware in Rikon, Switzerland, it is not difficult to see that the Respondent’s choice of name was very probably intended to enable the Respondent to ride on the back of the only manufacturer of kitchenware in Rikon, the Complainant. This is reinforced by the behaviour of the Respondent’s salesmen. If the Respondent is satisfied that the name “Swiss Rikon” will serve that purpose, it would be somewhat absurd (in the view of the Panel) for the Panel to ignore that fact in making its assessment.
It would have made it much easier for the Panel if the Complainant had produced evidence to show that in the kitchenware context the Complainant had a reputation and goodwill in the name “Rikon” (solus), which could be said to give unregistered trade mark rights in that name. However, the Panel notes the message quoted in section 4 above, the English aristocrat referred to the Complainant simply as “Rikon” and clearly some of the others who contacted the Complainant having been accosted by the Respondent’s sales representative made the association (or wondered if there was an association) between “Swiss Rikon” and “Kuhn Rikon”.
Taking all the surrounding circumstances into account the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
C. Rights or Legitimate Interests
Ordinarily, if a respondent is trading in a bona fide manner under and by reference to the disputed domain name, that fact will give rise to a right or legitimate interest sufficient to defeat a complaint under the Policy (paragraph 4(c)(i) of the Policy).
Here, the Respondent is certainly conducting trade under and by reference to the Domain Name, but is it a bona fide trade?
The Complainant says not. The Complainant’s unchallenged evidence is that the Respondent’s use of the Domain Name and the brand SWISS RIKON accompanied by a prominent display of the Swiss flag is leading people to believe that the Respondent is the Complainant or is at least in some way associated with the Complainant. The Complainant asserts that not only is the Respondent’s kitchenware not made in Rikon, it is not made in Switzerland, yet the Respondent uses both the name “Rikon” and the Swiss flag in its marketing. Moreover the Complainant’s evidence (see section 4 above) includes unsolicited messages from the public who have been approached on the street by the Respondent’s salesmen and been led to believe that the Respondent is (or is in some way associated with) the Complainant. The Complainant further contends that the Respondent’s trade under and by reference to the name “Swiss Rikon”, far from being bona fide, is fraudulent.
The Respondent has not seen fit to challenge the Complainant’s evidence and the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Why did the Respondent select the name “Swiss Rikon” for his trading name and brand?
As indicated above, the Complainant contends that the Respondent did so with the intention of passing off his products as the Complainant’s products. The Complainant contends that the name is fraudulent on two fronts: (a) the Respondent’s products are neither made in Rikon nor Swiss, so the name “Swiss Rikon” is inherently deceptive; and (b) the name “Swiss Rikon” was deliberately selected to ride on the back of the fame of the Complainant, the only manufacturer of kitchenware in Rikon, Switzerland. The Complainant also relies on the Respondent’s salesmen’s behaviour and the reactions of those who wrote to the Complainant reporting upon that behaviour.
On the evidence before the Panel and in the absence of any explanation from the Respondent, the Panel believes the Complainant’s contentions to be well-founded.
The Panel finds that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <swiss-rikon.com> be transferred to the Complainant.
Date: August 28, 2013