WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swissquote Group Holding S.A. v. Uwe Gresser, Gresser Trading
Case No. D2016-0883
1. The Parties
The Complainant is Swissquote Group Holding S.A. of Gland, Switzerland, represented by Nameshield, France.
The Respondent is Uwe Gresser, Gresser Trading of Lindau, Germany, self-represented.
2. The Domain Names and Registrar
The disputed domain names <swissquote-magazin.com>, <swissquotemagazin.com>, <swissquote-magazine.com> and <swissquotemagazine.com> are registered with Variomedia AG dba puredomain.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2016. On May 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 13, 2016, 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 May 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2016. The Response was filed with the Center on June 12, 2016.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on June 17, 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 Claimant is the registered owner of the mark M SWISSQUOTE, No 742603 International - European Union registered on August 31, 2000 (including a device element) and SWISSQUOTE, No 1132411 International - European Union registered on August 20, 2012.
The disputed domain names were all registered on May 18, 2012.
5. Parties' Contentions
The Complainant is according to its own assertion Switzerland's leading provider of online financial and trading services. It was first listed on the Swiss stock exchange on May 29, 2000 as Swissquote Group Holding Ltd. It is headquartered in Switzerland with offices in Gland, Zürich and Bern and also has offices in Dubai, Malta, London and Hong Kong, China. It currently employs 507 staff. It also publishes the SWISSQUOTE magazine and has done so since March 2010, which concerns finance and technology, both in print and digital formats.
The Complainant owns a number of registered trademarks (see above), and also has registered domain names including <swissquote.com>, registered on February 14, 1997 and <swissquote.net> on March 21 1999.
When the Complainant accessed them on April 26, 2016 the disputed domain names were not in use, i.e. they did not connect to any active websites, as demonstrated by the screenshots included as Annexes to the present Complaint.
According to the Complainant the disputed domain names are confusingly similar to its trademark SWISSQUOTE. That term is incorporated in its entirity and the addition of the generic terms "magazine" or "magazin" (with or without a dash) is not sufficient to escape the conclusion that the disputed domain names are confusingly similar to, and do not change the overall impression that the disputed domain names are connected to the trademark SWISSQUOTE.
Rather than dispelling the inference of a legitimate connection with the Complainant, the inclusion of the term "magazin(e)" reinforces the confusion, because it refers directly to the official SWISSQUOTE magazine, edited and published by the Complainant since 2010.
The Complainant submits that in accordance with previous UDRP decisions it only needs to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Then the burden of production shifts to the Respondent. The Complainant asserts that the Respondent is not affiliated with nor authorized by it nor does the Respondent carry out any activity for, or have any business with the Respondent. The Complainant has not licensed or authorized the Respondent to use the Complainant's SWISSQUOTE trademark or apply for the registration of the disputed domain names.
According to the Complainant the disputed domain names point to inactive websites, and that from the time of their registration on May 18, 2012 and at least until April 26, 2016, the date of the screenshots included in the Complaint. This demonstrates a lack of legitimate interests in respect of the disputed domain names, and in any case the Respondent could not make any legitimate use of the disputed domain names given the Complainant's Swiss registration of the SWISSQUOTE trademark (with device) No. 742603 of August 31, 2000. The Respondent has no demonstrable plan, according to the Complainant, to use the disputed domain names.
Further, according to the Complainant the disputed domain names refer directly to the official SWISSQUOTE Magazine which it has published since 2010. The Complainant also contends that the Respondent, namely "Uwe Gresser, Gresser Trading", is a professional active in financial trading, and owner of the URL <http://www.gresser-trading.de/gid-dubai/english/> which resolves to pages where the Respondent explains and markets High Frequency Trading ("HFT").
According to the Complainant the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademarks and activities, and has not demonstrated any activity at all in respect of these.
Finally the Complainant asserts that the Respondent retains the disputed domain names in order to prevent the Complainant from registering its trademark as a domain name.
According to the Respondent, the Complainant provides online financial and trading services in Switzerland, and owns trademark registrations with the term SWISSQUOTE in the territory of the European Union, with the registration number No. 1132411 and date of August 20, 2012.
According to the Respondent the disputed domain names were registered by the Respondent at an earlier date than the trademarks the Complainant is relying on, and the Complainant has not demonstrated that it was using the indication SWISSQUOTE or/and MAGAZINE as an unregistered trademark before the registration of the disputed domain names. Further, according to the Respondent there is no evidence that the Respondent was aware that a right in the name SWISSQUOTE was about to arise and that he intended to abuse that right.
According to the Respondent, the disputed domain names "were used and are currently used in connection with an active website before the registration date of the trademark SWISSQUOTE on 20.08.2012".
Further according to the Respondent, at the date of registration the Complainant had no trademark rights and SWISSQUOTE was not a well-known mark. The additional element "magazine" is, according to the Respondent, sufficient to distinguish the disputed domain names. According to the Respondent the disputed domain names are used to offer a magazine of Swiss quotes or "Schweizer Zitate", and the Respondent did not choose the disputed domain names because they incorporate SWISSQUOTE but to indicate swiss quotes or "Schweizer Zitat". Thus the Respondent contends that it is making a legitimate noncommercial and fair use of the disputed domain names.
The addition of the terms "magazine" or "magazin" dispels confusion, according to the Respondent, because they refer directly to the meaning of a magazine of swiss quotes or "Schweizer Zitate". The inclusion of the geographical term Swiss is merely to indicate the geographical origin of the quotes concerned. This is thus not a misleading and deceptive to use of the disputed domain names. Therefore the Respondent asserts that it has legitimate interests in respect of the disputed domain names. The use of the term "Swiss" combined with "quote" is not misleading and is honest and fair and not in bad faith.
The Respondent asserts that the "Disputed Domain Names points are active websites, since their registration on 18.05.2012.[...] It finally means that the websites are operated and it also demonstrates that the Respondent did make use of disputed domain names since their registration, and it confirms that the Respondent has demonstrable plan to use the disputed domain names".
Further, according to the Respondent, the fact that he has no business relationship with the Complainant and that he has used the disputed domain names for his presentation of Swiss quotes on the associated websites are signs of good faith. Also, according to the Respondent, "he can not have had the Trademark in mind as the Trademark had not been registered by the Complaint. The Respondent must not have been aware of the future Complainant's trademark rights at the time of registration of the disputed domain names, the more since Respondent appears to have developed activities in the different field as Complainant".
Finally, the Respondent asserts that he is not using the disputed domain names to divert Internet users who are searching for the Complainant's website to the Respondent's own website by capitalizing on the trademark.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are not identical to the Complainant's trademarks. However, they do incorporate the SWISSQUOTE trademark used and registered by the Complainant in its entirety. The SWISSQUOTE trademark as such (i.e. as a word mark with no device element) was indeed, as the Respondent points out, registered soon afterthe registration of the disputed domain names, and not before that date. However, the Complainant has put evidence before the Panel that it used the unregistered mark SWISSQUOTE long before the registration date of the trademark SWISSQUOTE in connection with its financial trading business. It also published a SWISSQUOTE magazine from 2010 onwards, which concerned finance and technology. The Complainant also registered a trademark incorporating the term SWISSQUOTE and a small device element (a stylised M in a roundel) in 2000. The Panel finds that the term SWISSQUOTE is the most prominent part of this registered mark and at least some rights have vested in this term as such by the time of the registration of the disputed domain names. Swissquote Group Holding Ltd was quoted on the Swiss Stock Exchange from 2000 and given the size of the company its use appears to have been quite widespread in the financial services sector before the registration date of the disputed domain names. Thus the Panel is satisfied that the Complainant has sufficient rights in the mark SWISSQUOTE for the purpose of this proceeding, noting, in any event, that the timing of rights is not relevant for purpose of the first element but rather in establishing the second and third elements of the Policy. It follows that the mere addition of the terms "magazin(e)", certainly where the Complainant published a magazine associated with its activities and mark long before the registration date of the disputed domain names, does not dispel any finding of confusing similarity between the disputed domain names and the Complainant's marks;
Therefore the Panel holds that the disputed domain names are confusingly similar to the Complainant's SWISSQUOTE trademarks.
B. Rights or Legitimate Interests
The Respondent contends that it has rights or legitimate interests in the disputed domain names as he has and intends to use them in relation to websites providing quotes about Switzerland or Swiss topics. However, when the Complainant accessed the disputed domain names on April 26, 2016, and according to the Complainant's assertion from the date of registration of the disputed domain names up to that moment in time, the disputed domain names resolved to blank pages. The Respondent's contention that the domain names resolved to populated websites containing Swiss quotes from the time of their registration is therefore inaccurate on the basis of the evidence before the Panel. It is apparent that they were populated at some moment after initiation of these proceedings. Subsequent to the Notification of the Complaint, those pages did contain a list of some quotes concerning Switzerland by various authors, as well as a free registration box. The visible list is described as a "preview", the implication being that registration would provide an interested party access to further quotes. It is not apparent that registration does in fact have any meaningful effect.
The "preview" quotes, some 45 or so, are presented in no particular order and in very basic format, appear cobbled together and are presented without any further explanation or comment. The Respondent offers no explanation as to why the term "magazin(e)" is also included in the disputed domain names. The content of the websites does not have the usual hallmarks of a magazine. Further, it appears that the Respondent is in truth fully cognizant of financial services and in particular familiar with online and computerized trading, a sector in which the Complainant is active and prominent. Further it is not apparent why the Respondent required all four registered domain names for its purported purposes. Finally, it appears improbable given the currency of the Complainant's mark in the Swiss financial services market and the Respondent's familiarity with such services, that he was unaware of the Complainant's business and associated goodwill at the time of registration.
In the circumstances the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In the light of the Panel's previous findings this element has in essence been established. In the circumstances findings under this heading and the previous heading reinforce each other. The Respondent does appear to be active in the financial sector, as his website attests at <gresser-trading.de>. It is apparent that the Complainant had established a considerable level of activity and associated reputation in that sector by reference to the mark SWISSQUOTE long before the registration date of the disputed domain names. The Complainant, Swissquote Group Holding S. A., is a widely-known online financial trading house in Switzerland, and publishes an eponymous magazine. The Complainant is quoted on the Swiss stock exchange. Further, the contents of the websites to which the disputed domain names resolve was not available on the date the Complainant accessed it, and was thus not present for the period from registration of those domain names, as the Respondent inaccurately contends. The contents of those websites are paltry and not clearly organized, presented or formatted, and the websites do not have the character of magazines.
In the circumstances the Panel holds that the disputed domain names were registered and 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 disputed domain names, <swissquote-magazin.com>, <swissquotemagazin.com>, <swissquote-magazine.com> and <swissquotemagazine.com>, be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: July 1, 2016