WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schweizerische Radio- und Fernsehgesellschaft v. Jau Khan

Case No. D2020-1729

1. The Parties

The Complainant is Schweizerische Radio- und Fernsehgesellschaft, Switzerland, represented by Schneider Feldmann AG, Switzerland.

The Respondent is Jau Khan, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <playsuisse.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2020. On July 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2020, the Registrar transmitted by email to the Center its verification response:

(a) confirming it is the Registrar for the disputed domain name;

(b)confirming that the Respondent is listed as the registrant and the contact details are correct;

(c) indicating the Respondent registered the disputed domain name on June 4, 2020;

(d) indicating the language of the registration agreement is English;

(e) acknowledging that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2020. Due to an administrative oversight during the notification of the Complaint, on August 25, 2020 the Center granted the Respondent a further ten day period in which to submit its¹ response. The Respondent did not submit any response.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 21, 2020. 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 the largest media organization in Switzerland, providing radio and audio-visual broadcasting services in all cantons and all official languages. It has a turnover of CHF 1.65 billion. It generates 77 per cent of its funding from fees and the other 23 per cent from commercial offerings.

It has registered the trademark PLAY SUISSE in Switzerland, Registered Trademark No. 748811, for a range of goods and services in International Classes 9, 38, and 41. The trademark application was filed on June 3, 2020 and registered on June 25, 2020.

On June 5, 2020, the Complainant announced (in French) that it was planning to launch a new, national streaming platform under the name “Play Suisse” in November 2020. The planning for this new service, however, appears to have been in progress for some time. For example, the planning has included the Complainant registering a number of domain names based on “play Suisse” in August 2019.²

As noted above, the disputed domain name was registered on June 4, 2020.

The disputed domain name has not resolved to an active website. When a representative of the Complainant contacted the Respondent to inquire about the disputed domain name, the Respondent replied on June 16, 2020:

“Thank you for your interest in our domain.

Actually, we bought the domain www.playsuisse.com for our own business.

But we had a meeting now and decided to transfer it to you, if the price is satisfactory.

Our offer price is EUR 4,500.

If you accept this price, we can transfer the domain to you and we will change our business name.

Since our boss is leaving for vacation from 6/25, let me have your confirmation ASAP.”

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. These included transmission to the email address used by the Respondent in its email on June 16, 2020 referred to in Section 4 above.

Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

In accordance with paragraph 11 of the Rules, the language of the proceeding is English as that is the language of the registration agreement for the disputed domain name. The Panel also notes that the Respondent’s email on June 16, 2020 was expressed in clear and competent English. In the circumstances, there is no reason for the default rule under the Rules not to apply.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademark in Switzerland for PLAY SUISSE referred to in section 4 above.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.

Disregarding the “.com” gTLD, the disputed domain name consists solely of the Complainant’s registered trademark. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The disputed domain name is plainly not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.

So far, as the record in this case reveals, the Respondent has not made any use of the disputed domain name. The Respondent’s email on June 16, 2020 states that the disputed domain name was obtained for its own business. The nature of that business is not clear. Moreover, the Respondent has not submitted any evidence to support a claim that the Respondent had embarked on demonstrable preparations to use the disputed domain name in a way which would confer rights or legitimate interests. In the absence of such evidence, there can be no finding that there have been demonstrable preparations of use. See WIPO Overview 3.0, section 2.2.

On the contrary, the only evidence of use before the Panel is the Respondent’s offer to transfer the disputed domain name for a price well in excess of the ordinary costs of registering a domain name in the “.com” gTLD.

These matters, taken together, are sufficient to establish a prima facie case under the Policy in the Complainant’s favor. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Paragraph 4(b) identifies situations which my demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:

(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or

(ii) [the Respondent has] registered the [disputed] domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or location.”

In the present case, the Respondent registered the disputed domain name the day after the Complainant filed its trademark application and almost three weeks before the trademark became registered in Switzerland. The Respondent, however, registered the disputed domain name almost 10 months after the Complainant registered five domain names based on “Play Suisse” and several other domain names on the English variant, “Play Swiss”.

As the Complainant states, the Respondent appears to be based in Malaysia and has no apparent connection with Switzerland. In addition, the injunction to “play Suisse” has no obvious descriptive meaning unlike a phrase such as “play chess” or “play football”.

Further, the Complainant also points out that the Respondent has been found to have registered and used other domain names in bad faith under the Policy on at least five other occasions:

(1) Valvoline Licensing and Intellectual Property LLC v. jau Khan, WIPO Case No. D2018-1486;

(2) Tuo Liu v. Jau Khan, WIPO Case No. D2018-1361;

(3) DALKIA v Jau Khan, WIPO Case No. D2019-1556;

(4) LunaJests SA v. Jau Khan, WIPO Case No. D2019-2763; and

(5) SODEXO v Jau Khan WIPO Case No. D2019-2814.

The case LunaJests SA v. Jau Khan, WIPO Case No. D2019-2763 is particularly interesting. Like the Complainant, the complainant in that case was a Swiss corporation. It had a Swiss trademark registration for LUNAJETS dating from 2008. Importantly, however:

- on October 14, 2019 it applied in Switzerland to register the trademark LUNACARGO;

- on October 16, 2020, a mere two days later, the Respondent registered the domain name <lunacargo.com>; and

- on October 21, 2020, when contacted by the complainant, the Respondent replied:

“Actually we bought the domain www.lunacargo.com for our own business. So it is not for sale. But we had a meeting today and decided to transfer it to you, if the price is satisfactory. Our offer price is EUR 8,500”.

That is, the reply was in exactly the same terms as the reply in this case (apart from the price nominated).

The Respondent also registered the domain names in dispute in Tuo Liu v. Jau Khan, WIPO Case No. D2018-1361 and DALKIA v Jau Khan, WIPO Case No. D2019-1556 less than a week after the complainant in those cases filed a trademark application in the respective terms.

Given the registration of the Complainant’s domain names in August 2019, the Respondent’s apparent location in Malaysia and the Respondent’s registration of both the domain name in the <lunacargo.com> case and of the disputed domain name within a day or two of the applications for the respective trademarks being filed in Switzerland, the Panel is prepared to infer that the Respondent became aware of the Complainant’s plans to adopt the “Play Suisse” trademark and opportunistically sought its registration as a domain name.

On this evidence, therefore, the Respondent appears to have registered the disputed domain name to prevent the Complainant from reflecting its nascent trademark in a domain name. The Respondent appears to have engaged in a pattern of such conduct. See e.g., WIPO Overview 3.0, section 3.1.1 and 3.1.2. Accordingly, the Panel finds that the Respondent has engaged in conduct which paragraph 4(b)(iv) of the Policy exemplifies as registration and use in bad faith.

As discussed in section 5B above, there is no evidence to suggest that the Respondent was taking steps to use the disputed domain name in any good faith manner. Moreover, the offer to transfer the disputed domain name at a price in excess of the Respondent’s likely out of pocket costs reinforces the conclusion that the Respondent registered and has used the disputed domain name in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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, <playsuisse.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: October 5, 2020

¹ It is not clear from the record in this case whether the Respondent is some form of corporate entity or a natural person and, if the latter, what gender. Accordingly, the Panel will use the neutral pronoun.

² The domain names included <playsuisse.ch>, <playsuisse.tv>, <playsuisse.net> and <playsuisse.stream>. The Complainant also registered three domain names based on “Play Swiss” the same day.