WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schellenberg Wittmer Ltd. v. WhoisGuard, Inc. / John Peter
Case No. D2016-2378
1. The Parties
The Complainant is Schellenberg Wittmer Ltd. of Zurich, Switzerland, internally represented.
The Respondent is WhoisGuard, Inc. of Panama City, Panama / John Peter of Miglionico, Italy.
2. The Domain Name and Registrar
The disputed domain name <swlegalltd.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2016, 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 November 28, 2016 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 November 29, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 23, 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 one of the leading commercial law firms in Switzerland. The Complainant owns the national Swiss trademark SWLEGAL, which was filed on July 28, 2015 and registered on December 22, 2015 and whose details of registration have been provided to the Panel. The Complainant is the registrant of the domain name <swlegal.com>, dated January 31, 2000.
The Respondent is an individual person domiciled in Italy, whose contact information was disclosed by the Registrar after the filing of the Complaint.
The disputed domain name was registered by the Respondent on November 14, 2016.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is identical or at least confusingly similar to their SWLEGAL trademark as it incorporates said trademark in its entirety.
Secondly, the Complainant puts forward that the Respondent lacks rights or legitimate interests in the disputed domain name as the Complainant and the Respondent have no contractual or factual relationship nor are they connected in any way. The Complainant further claims that, to the best of their knowledge, the Respondent is not generally known by the disputed domain name and does not use the disputed domain name in connection with a bona fide offering of goods or services as the disputed domain name is being used to impersonate the Complainant to make contact with third parties under false pretences.
The Complainant finally alleges that the Respondent registered and is using the disputed domain name in bad faith on the grounds that the Respondent had actual or at least constructive knowledge of the Complainant’s trademark at the time of registration and is using the disputed domain name to impersonate the Complainant to defraud third parties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In the Panel’s opinion, the Complainant has demonstrated clear trademark rights in the SWLEGAL mark. The Panel, which finds that the disputed domain name incorporates the said trademark in its entirety, concurs with the opinion of prior UDRP panels which have held that it is sufficient for a domain name to wholly incorporate a complainant’s registered trademark in order to establish confusing similarity for the purposes of the Policy (see, e.g., Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903).
It is also well-established in prior decisions under the UDRP that the mere addition of descriptive and non-distinctive elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity (See, e.g., TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361). Indeed, the Panel finds that the mere addition of the term “ltd”, which is generally accepted to be an abbreviation for the corporate designation “Limited”, is non-distinctive, and that a significant number of Internet users may assume that the disputed domain name refers to the Complainant (see, e.g., Halfords Limited v. Frey Deans, WIPO Case No. D2014-1445).
Finally, for the purposes of the present comparison, the Panel agrees with the common view under the UDRP that generic Top-Level Domain (“gTLD”) extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (see, e.g., Boehringer Ingelheim International GMBH v. Ralf Zinc, WIPO Case No. D2016-1236) and considers the gTLD extension “.com” of the disputed domain name to be irrelevant.
The Panel consequently finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Prior UDRP panels have stated that it is sufficient for the Complainant to show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof to the Respondent (see, e.g., Crédit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
In the present case, the Complainant has made a prima facie showing that the Respondent does not benefit from a license nor has it been granted authorization by the Complainant to use the SWLEGAL trademark. Moreover, there is no business relationship between the Complainant and the Respondent and the Respondent is not commonly known under the name “SWLEGAL”.
Besides, the Complainant has indicated that the Respondent uses the disputed domain name in relation with a fraudulent email address in order to make contact with third parties under false pretences. Furthermore, the disputed domain name points toward a parking page displaying commercial links related to law, which is the Complainant’s field of activity. The Panel therefore finds no basis upon which to attribute any rights or legitimate interests to the Respondent in the disputed domain name in accordance with paragraph 4(c) of the Policy (See, e.g., Spigen Korea Co. Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145).
Finally, the Respondent has not filed a response to the Complainant’s contentions to attempt to demonstrate a possible right or legitimate interest in the disputed domain name and has not provided evidence of the circumstances set in paragraph 4(c) of the Policy.
Consequently, the Panel considers that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Bad faith in registering a domain name can be found when the Respondent “knew or, at least should have known” of the Complainant’s trademark rights and nevertheless registered a domain name in which it has no right or legitimate interest (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). The Panel notes that, at one point, the disputed domain name was used (i) as a parking page containing commercial links related to the field of law and (ii) through email addresses in order to impersonate the Complainant, the Panel finds that it is highly implausible that the Respondent did not have the Complainant in mind when registering the disputed domain name.
Additionally, a quick trademark search on “SWLEGAL” would have revealed the existence of the Complainant and its trademark to the Respondent. Thus, the Respondent’s failure to do so is a contributory factor to its bad faith (see, e.g., Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).
Furthermore, the Panel agrees with the opinion of previous UDRP panels which have held that registration of a domain name through a privacy shield service to hide one’s identity and contact details constitutes additional evidence of registration in bad faith (see, e.g., Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729).
Previous panels have also held that use of a domain name in order to mislead Internet users to believe that the corresponding website is related to the Complainant and directing them to a webpage providing revenue to the Respondent through clicks is evidence of use in bad faith (see, e.g., F Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956). In the present case, the disputed domain name pointed towards a parking page displaying commercial links related to the field of law, which according to the Panel aims at intentionally creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the links contained in the parking page.
The use of a domain name through an email address for fraudulent purposes amounts to use in bad faith (see, e.g., Desko GmbH v. Mustafa Mashari, WIPO Case No. D2015-0817). In view of the evidence presented by the Complainant, the Panel notes that the Respondent uses the disputed domain name in order to send fraudulent emails to third parties, through a “[…]@swlegalltd.com” email address. Therefore, it seems that the Respondent has intentionally attempted to impersonate the Complainant and to deceive consumers into providing personal information, believing that the Respondent was associated with the bona fide services offered by the Complainant (see, e.g., Accor v. Shangheo Heo / Contact Privacy Inc., WIPO Case No. D2014-1471).
In light of the above, it is therefore more likely than not that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of initial likelihood of confusion.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and, therefore, the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, <swlegalltd.com>, be transferred to the Complainant.
Date: January 6, 2017